The Complainant is Comservice SA of Geneva, Switzerland, represented internally.
The Respondent is MDNH Inc.\Brendhan Height of Las Vegas, Nevada, United States of America (“USA”), represented by John Berryhill, USA. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Moniker Online Services, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2010. The Center transmitted its request for registrar verification to the Registrar the same day. The Registrar replied on September 22, 2010, confirming that it had received a copy of the Complaint, that the Domain Name was registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name, that the Domain Name had been locked, and that the registration agreement was in English. The Registrar also provided the full contact details held on its WhoIs database in respect of the Domain Name, together with the date of creation of the record and the expiry date. The Registrar did not dispute that the registration agreement contained a jurisdiction clause complying with ICANN’s Registrar Accreditation Agreement.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 30, 2010. In accordance with paragraph 5(a) of the Rules, the due date for the Response was October 20, 2010. The Response was filed with the Center on October 20, 2010. In the Response the Respondent elected to have the dispute determined by a three-member Panel having submitted the appropriate payment.
The Center appointed Jonathan Turner, Fabrizio La Spada and David H. Bernstein as panelists in this matter on November 5, 2010. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel finds that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules. 4. Factual Background
The Complainant, a fiduciary company, is the proprietor of a device mark containing the words “COMSERVICE SA” registered in Switzerland in class 35 for “tenue de comptabilités, conseils en organisation, conseils en gestion, administration commerciale, travaux de bureau, établissement de déclarations fiscales”; in class 36 for “courtage en assurances, gestion de fortune, conseil financier, audit de comptabilités, conseil fiscal”; and in class 42 for “conseil juridique, mise à disposition de temps d'accès à de l'information au public par le biais de réseaux informatiques (Internet)”.
The Complainant also owns and uses the domain names and .
The Domain Name is used by the Respondent to display web pages setting out links to other websites, the links being automatically generated depending on the existence and keyword search purchases of entities in the geographical market where the page is viewed. The Respondent’s web page, as displayed in Switzerland at the time of the Response, set out links to computer communication and general commercial services. 5. Parties’ Contentions A. Complainant
The Complainant submits that the Domain Name is identical to its protected mark and thus confusing.
The Complainant contends that the Respondent should be considered as having no rights or legitimate interests in respect of the Domain Name. It says that there is no evidence of the Respondent’s use of the Domain Name in connection with a bona fide offering of goods or services, or that the Respondent has been commonly known by the Domain Name, or that the Respondent is making legitimate non-commercial or fair use of the Domain Name without intent for commercial gain misleadingly to divert consumers or to tarnish its mark.
The Complainant alleges that, on the contrary, the Domain Name was registered and is being used in bad faith. According to the Complainant, circumstances indicate that the Domain Name was registered or acquired primarily for the purpose of selling, renting or other transfer to itself or a competitor for valuable consideration in excess of the Respondent’s costs. The Complainant adds that it contacted the Respondent to find an arrangement regarding the Domain Name but the Respondent did not reply.
The Complainant requests a decision that the Domain Name be transferred to it. B. Respondent
The Respondent submits that the dispute relates to a non-distinctive term of longstanding use in the communications, computer and commercial service industries. It considers that the Complainant’s registered device mark does not confer rights in the word “COMSERVICE”. It draws attention to the use of this word by various other entities in domain names and business names.
The Respondent states that it has an extensive business of registering and monetising generic domain names through web pages containing automatically generated sponsored links to other websites. The Respondent draws attention to a number of decisions under the UDRP finding that its well-established practice is legitimate or bona fide and rejecting complaints made against it.
The Respondent denies that it registered and is using the Domain Name in bad faith. It characterizes the section of the Complaint on this point as “a work of minimalist art”, in that it simply reproduces paragraph 4(b)(i) of the UDRP. The Respondent suggests that there is an inconsistency between this allegation and the Complainant’s objection that the Respondent failed to respond to the Complainant’s attempt to acquire the Domain Name. The Respondent denies any knowledge of the Complainant or its mark prior to this Complaint.
The Respondent submits that the Complaint should be denied. The Respondent does not request a finding of reverse domain name hijacking. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is clear that these are cumulative requirements and it is therefore appropriate to consider each of them in turn. A. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainant has rights in a device mark which includes the word “COMSERVICE”.
The Panel is also satisfied that the Domain Name is confusingly similar to this mark. The word “COMSERVICE” is a prominent part of the mark and the Panel considers that those familiar with the mark would be likely to assume that the Domain Name locates a website of its proprietor.
Where a device mark incorporates a wholly generic term, a domain name whose SLD consists of that generic term may well not be confusingly similar to that mark, as was found (for example) in Meat & Livestock Commission v David Pearce aka OTC / The Recipe for BSE,WIPO Case No. D2003-0645, and cases cited there. However, in the present case, the Panel does not regard the word “COMSERVICE” as wholly generic. Although it has descriptive elements, the Panel considers that it is sufficiently distinctive to give rise to a real likelihood of confusion between the Domain Name in which it is the SLD and a logo incorporating it as a prominent element.
The first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests
The second requirement of the UDRP requires a complainant to prove a negative. Panels have held that it suffices for a complainant to make out a prima facie case that the respondent has no rights or legitimate interests in respect of the disputed domain name and that, if the complainant does so, the burden shifts to the respondent to show that it has such a right or legitimate interest: see section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
In this case, the Complainant’s allegations on this point are so conclusory and lacking in specificity that the Panel does not consider that they amount to a prima facie case. On the other hand, the Panel is not satisfied by the Respondent’s evidence that it has acquired a right or legitimate interest in the Domain Name. The Panel considers that something more than merely directing a domain name to a web page displaying automatically generated links is normally required to confer a right or legitimate interest for the purpose of this element of the UDRP. See generally No Zebra Network Ltda v. B, Inc., WIPO Case No. D2009-1071.
On the record the Panel is not able to say whether or not the Respondent has a right or legitimate interest in respect of the Domain Name. Since the overall burden of proof rests on the Complainant, it follows that this requirement of the UDRP has not been satisfied. The point is, in any event, academic in view of the Panel’s finding below on bad faith. C. Registered and Used in Bad Faith
The Complainant’s allegation of bad faith, that the Respondent registered the Domain Name primarily for the purpose of sale at a profit to the Complainant or a competitor of the Complainant, is wholly conclusory and lacking in any factual or evidential foundation.
On the record in this case, the Panel sees no evidence that the Domain Name was registered for any purpose other than the use to which it has been put, namely to resolve to a web page containing automatically generated links with a view to gaining income from click-through commissions.
The use of a domain name in this way, and its registration with the intention of such use, can be regarded as in bad faith where the registrant knew or should have known that the domain name contained a distinctive mark which has been used on a substantial scale, and hence that such use would be liable to divert Internet users seeking a website of the owner of the mark, as in (for example) Grisoft, s.r.o. v. Original Web Ventures Inc.,WIPO Case No. D2006-1381 and Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg,WIPO Case No. D2008-1849.
Conversely, such registration and use are not normally regarded as in bad faith where the SLD of the domain name is descriptive and it is not shown that the respondent knew or should have known at the relevant time that it corresponded to the mark of another party: see (for example) Archipel, Inc v. individual kim@ / Kim Yunsik,WIPO Case No. D2008-0553; Intersections Inc. v. Jasper Developments Pty Ltd,WIPO Case No. D2009-0795; Classic Media Inc. v. Satoshi Shimoshita,WIPO Case No. D2007-0086; eDreams, Inc. v. CK Ventures Inc.,WIPO Case No. D2009-1508.
In this case, the evidence does not show that the Respondent knew or should have known that the Domain Name reflected part of the Complainant’s mark. In these circumstances, the Complainant has not proved registration or use in bad faith. The third requirement of the UDRP has not been satisfied and the Complaint must therefore be rejected. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Jonathan Turner
Presiding Panelist
Fabrizio La Spada
Panelist
David H. Bernstein
Panelist
Dated: November 11, 2010
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