The Complainant is Tellus B.V. of Rotterdam, Netherlands, represented by SOLV Advocaten, Netherlands.
The Respondent is Mr. Oren Nehoray of Tel Aviv, Israel. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2010. On July 6, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 9, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 12, 2010. The original due date for the Response was August 1, 2010, but on July 29, 2010 the Center received by email a request from the Respondent asking for an extension of time for the filing of the Response. On August 2, 2010 the Center received by email the Complainant’s consent to a one week extension. The Center granted the extension of one week and in accordance with the Rules, paragraph 5(a), the new due date for Response was August 9, 2010. The Response was filed with the Center on August 9, 2010.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 16, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Since August 2003 the Complainant has provided intermediary services online for those concerned with international moving and relocation. These services have been and still are provided via the Complainant’s website connected to its domain name, (registered August 3, 2003). Visitors to the Complainant’s website can compare service providers and their prices and make contact with the companies featured.
The Domain Name was registered by the Respondent on June 23, 2006 and is used by the Respondent to connect to his website providing information to Internet users seeking information on international moving services.
The Complainant is the registered proprietor of Benelux trade mark registration of its INTLMOVERS trade mark, number 0824311 dated June 7, 2007, and is the registered proprietor of an international registration of the mark (based on the Benelux registration) number 977911 dated August 27, 2008.
On June 11, 2010 the Complainant’s representative wrote to the Respondent drawing the Respondent’s attention to the Complainant’s rights and demanding inter alia transfer of the Domain Name. No reply having been received, a ‘chaser’ was sent on June 21, 2010. The Complainant’s representative received no reply to either letter. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical to the Complainant’s INTLMOVERS trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. B. Respondent
The Respondent denies the Complainant’s allegations and contends that he is making fair commercial use of what is a descriptive term apt to describe his activity. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s INTLMOVERS trade mark and the generic ‘.org’ domain suffix. For the purposes of assessing identity and confusing similarity it is permissible for the Panel to ignore the domain suffix.
The Panel finds that the Domain Name is identical to the Complainant’s trade mark. C. Rights or Legitimate Interests
In light of the Panel’s finding under the next head, it is unnecessary for the Panel to address this issue. D. Registered and Used in Bad Faith
In this case the Domain Name is identical to both the Complainant’s registered trade mark and domain name () and has been in use to connect to a site, which provides broadly identical services to those provided by the Complainant, i.e. information relating to international moves and movers.
For a complaint to succeed under the Policy, the complainant must ordinarily satisfy the panel that when the respondent registered the domain name in issue the respondent was aware of the complainant’s trade mark rights and intended, by adopting the domain name in issue, to exploit the complainant’s trade mark to his own advantage and/or in some way cause damage to the complainant. A non-exhaustive list of examples of what shall constitute bad faith registration and use for this purpose is set out in paragraph 4(b) of the Policy.
Here, the Domain Name was registered on June 23, 2006 and the Complainant’s earliest trade mark registration dates back to June 7, 2007. However, the Complainant had been trading through its website connected to its domain name since 2003 and claims unregistered trade mark rights in respect of the name.
The Complainant focuses on paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. The Complainant contends that the Respondent, a competitor of the Complainant, registered the Domain Name with a view to disrupting the Complainant’s business and also registered it with a view to attracting visitors to his site for commercial gain relying upon the Domain Name, which replicates the Complainant’s trade mark, to induce Internet users to visit the site.
The Respondent does not deny that he was aware of the existence of the Complainant and its website when he registered the Domain Name. He is silent on the point. All he says is that he was proposing to create a website devoted to information relating to international movers and was delighted to be told by his registrar that the Domain Name was available for registration, it being apt to describe his business.
However, the Panel agrees with the Complainant that it would be quite extraordinary if the Respondent had not checked at the time to see who held the ‘.com’ version of the Domain Name and what use was being made of it. The Panel finds that when the Respondent registered the Domain Name he must have been aware of the Complainant and the Complainant’s website.
However, in the view of the Panel, knowingly registering as a domain name an identical name to that used by a competitor for substantially identical services is not necessarily an abuse apt to be dealt with under the Policy, even if resultant confusion of Internet users is inevitable. The Policy was designed to protect trade mark owners against cybersquatters. If the name in issue is merely a description common to a particular trade and is being used by the Respondent in relation to that trade, the registration and use of the Domain Name may well fall outside the scope of the Policy. Were it otherwise, domain name registrants could effectively monopolise descriptive terms. The owner of , for example, could monopolise “fish” in all domains even against sellers of fish.
Would the Respondent (or should the Respondent) have seen the Complainant’s domain name, and/or the name “intlmovers” as trade marks when he registered the Domain Name?
The Respondent says that he regards the name as purely descriptive. He contends that the term “international movers” is a well-known descriptive term and that “intl” is a well-known abbreviation for “international”. He produces evidence in support of those contentions in the form of dictionary definitions and details of other users of the term, “international movers”. He produces evidence that the Complainant abandoned a trade mark application in the United States of America in the face of inter alia a preliminary refusal of the application on the ground that the mark was descriptive.
As can be seen from section 4 above, the Complainant had no registered trade marks when the Domain Name was registered in 2006. What evidence is there before the Panel to make it likely that the Complainant was so well-known in its field in 2006 that the name “intlmovers” had acquired a secondary meaning sufficient to displace its primary descriptive meaning?
The Complainant produces in Annex 6 to the Complaint what it describes as “A list of Complainant’s marketing investments from 2003 to 2010”. For present purposes, the Panel is only concerned with the years 2003 to 2006 (i.e. up to the date of registration of the Domain Name).
The list features three columns, headed “Year”, “Region” and “Costs”. In the case of each of those 4 years the identified region is “International” and the costs figures are “23.021” (2003), “162.137” (2004), “328.993” (2005) and “408.182” (2006). No description is given of the ‘marketing investments’ concerned, nor is the Panel given any information as to the currency.
In short, the Panel has no information upon which he can say with any degree of confidence that the Respondent’s motives at time of registration of the Domain Name were mala fide and actuated by a desire to exploit the Complainant’s trade mark rights to his own advantage and/or thereby cause damage to the Complainant. The Panel regards it as quite possible on the evidence before him that the Respondent reasonably regarded the Domain Name to be a fair description of the subject matter for his website, which he was free to use.
It is possible, of course, to establish trade mark rights in descriptive terms, but where (as here) the rights relied upon (at date of registration of the Domain Name) are unregistered rights, it is incumbent upon the Complainant to produce good solid evidence to support the claim to those rights, the objective at this point being to demonstrate a likelihood that the Respondent would have appreciated that the name was more than a mere description. This is particularly important when dealing with overtly descriptive domain names, many of which although in commercial use give rise to no trade mark rights. If the Complainant’s name, , was more than a merely descriptive name in 2006, appropriate evidence should have been put before the Panel to demonstrate that fact.
In the absence of that evidence it is not possible for the Panel to conclude that when registering the Domain Name the Respondent had any bad faith motive directed at the Complainant’s trade mark rights. The Policy does not seek to regulate registration and use of purely descriptive terms.
The Panel is not persuaded on the evidence before him that the Domain Name was registered and is being used in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Dated: August 24, 2010
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