The Complainant is Univ.-Prof. Dr. Markus Hohenwarter, President, GeoGebra, Inc. of Linz, Austria, represented by Joel Duffin, United States of America.
The Respondent is Speedy Web of New Orleans, Louisiana, United States of America. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Intercosmos Media Group d/b/a directNIC.com (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2010. On August 5, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 5, 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 August 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2010.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 1, 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
The Complainant is the President of Geogebra, Inc., a United States federal registered charity, which was incorporated in Florida in 2008.
GeoGebra is the name given by the Complainant to what he describes as “an open source interactive math software used in teaching and learning”. It is the title of his thesis on the topic, which he completed in 2002.
The Complainant is the owner of the domain name , which he registered on January 9, 2006.
The Domain Name was registered on July 28, 2004 and is connected to a site featuring links to other sites offering goods and services relating to education. At some stage in 2005 it appears to have been used to connect to a directNIC parking page devoted to advertising links for brassieres and the like. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to his GEOGEBRA trade mark, the Geogebra, Inc. corporate name of his business and his domain name.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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 Complainant contends (and the Panel accepts) that the Domain Name is identical or confusingly similar to the name “GeoGebra”. The issue is whether or not “GeoGebra” is a trade mark in which the Complainant has rights.
The Complainant does not claim any registered rights, so the Panel is left to consider what may be his unregistered trade mark rights.
When assessing unregistered trade mark rights it is helpful to consider what is said in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, which is to be found on the Center’s website. Paragraph 1.7 reads as follows:
What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.
The section of the Complaint dealing with this aspect (Section VI.A) is short and can be reproduced verbatim:
GeoGebra is the trademark of the non-profit GeoGebra, Inc. on which the Complaint is based. GeoGebra was invented in 2002 when Markus Hohenwarter, current President of the non-profit GeoGebra, Inc, completed his master’s thesis titled “GeoGebra”, as included in Annex 4. GeoGebra is an open source interactive math software used in teaching and learning.
GeoGebra Inc, was incorporated and received 501(3c) status in 2008 as documented in Annexes 5 and 6. GeoGebra, Inc has owned and operated since January 2006 as documented in Annex 7 and . Markus Hohenwarter, also owned from the period December 2002 to September 20041 when directNIC picked up the domain when Markus let it expire, as documented on the internet archive: */
Clearly the domain can be confused with GeoGebra the software, GeoGebra, Inc, the non-profit corporation and , the primary GeoGebra website as there are no other uses of the word GeoGebra.
There is nothing in that passage to assist the Panel. There is nothing in that passage to indicate the extent to which (if at all) the Complainant has used and promoted his brand. The Annexes referred to are of no relevance. Annex 4, which comprises 236 of the 274 pages of the annexes to the Complaint, is the Complainant’s thesis in German2, which presumably describes the Complainant’s system. Annexes 5 and 6 simply confirm that the Complainant’s charity was incorporated in 2008 and has been certified a public charity under the relevant Internal Revenue Code. Annex 7 (and the first of the above-referenced URLs identified) does no more than confirm that the domain name, , was registered in the name of the Complainant on January 9, 2006. The second of the URLs shows that from 2002 to a date in mid-2004 the site was a site associated with Salzburg University. For the purposes of this decision the Panel is ready to accept that the site was used in some way in connection with the Complainant’s GeoGebra system. The second of the URLs also shows that for a period in 2005 the Domain Name was being used to connect to a directNIC parking page featuring advertising links to sites concerned with ladies underwear and principally brassieres.
It is of course possible that the Complainant (and/or his charity) does indeed own unregistered trade mark rights in respect of the “GeoGebra” name, but there is nothing in the Complaint to enable the Panel to make that finding.
The Panel is not persuaded that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
In light of the Panel’s finding under B above, the Complaint has failed and it is unnecessary for the Panel to address this issue. D. Registered and Used in Bad Faith
In light of the Panel’s finding under B above, the Complaint has failed and it is unnecessary for the Panel to address this issue. However, the Panel observes that for the Complainant to have succeeded under this head, the Complainant would have had to establish not only that the Complainant had trade mark rights, but also that those rights were in existence when the Respondent registered the Domain Name in 2004. For a domain name to constitute an abusive registration under the Policy, the Complainant must ordinarily establish that the registration was applied for with the Complainant’s trade mark in mind.
While it appears that the Complainant (with Salzburg University) was in some way associated with the Domain Name from 2002 to 2004, there is nothing in the Complaint clearly identifying what use was made of it during that period, by whom and to what effect. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Dated: September 15, 2010
1 This claim contrasts with the Complainant’s evidence that the current registration of the Domain Name is dated July 28, 2004, but nothing turns on the possible discrepancy.
2 The language of this administrative proceeding is English.
Full & Egal Universal Law Academy