Complainant is MCP Holding Ltd. of Belize, represented by Stopp & Stopp, Germany.
Respondent is Linh Wang of Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with Alantron BLTD. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2010. On November 22, 2010, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot a request for registrar verification in connection with the disputed domain name. On November 23, 2010, PSI-USA, Inc. dba Domain Robot confirmed that the disputed domain name was not registered with it. On November 26, 2010, December 1, and 2, 2010, the Center transmitted by email to Alantron BLTD the same request and reminders. On December 5, 2010, Alantron BLTD transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 7, 2010, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed four amendments to the Complaint on November 23, 2010, December 15, 20, and 21, 2010.
The Center verified that the Complaint together with the amendments to 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 Respondent of the Complaint, and the proceedings commenced on December 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 12, 2011.
The Center appointed Dr. Bernhard Meyer as the sole panelist in this matter on January 21, 2011. 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 following facts and statements appear from the Complaint and its annexes and have not been contested by Respondent:
Complainant, MCP Holding Ltd., a company organised and registered under the laws of Belize, is publishing the online business directory “Gelbes Branchenbuch”. For this purpose, Complainant created a first domain and registered it on November 1, 2007. Its second domain name , which is linked to the first domain name, was registered on December 9, 2008. Both have been used ever since to provide an Internet search function regarding business address data, serving Germany, Austria and Switzerland. Complainant claims to have common law trademark rights in the mark GELBES BRANCHENBUCH.
According the information provided by the registrar, Alantron BLTD, the current holder of the disputed domain name, and appropriate Respondent in the present case, is Linh Wang. The Panel has no knowledge whether Linh Wang is a natural or legal person. The disputed domain name was created on September 1, 2010 and is hosted in Turkey. According to its Internet presence, Respondent provides an online business directory in German but the Panel does not know if Respondent holds a corresponding trademark. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to the common law trademark held by it. Complainant alleges that it has long established common law trademark rights in the mark GELBES BRANCHENBUCH. Complainant has been using the term “Gelbes Branchenbuch” as a business name since 2007. On its Internet website, Complainant reportedly is displaying 5.185.632 data sets from customers in Germany, Austria and Switzerland. Commercial premium-customers have been billed regularly for its services. Besides, Complainant has been mentioned in the press as a major provider of Internet address data. According to Complainant, the relevant sector of the general public of Germany, Austria and Switzerland knows and recognizes the name “Gelbes Branchenbuch” and relates it to Complainant’s services.
The disputed domain name is said to be identical to Complainant’s common law trademark GELBES BRANCHENBUCH and Complainant’s domain names and . The only differences are the hyphen between the generic term and the top-level-domain-suffix “.info” instead of “.com”. There is a risk that customers have the incorrect impression that Complainant’s services are connected to Respondent’s.
Complainant alleges that Respondent has no rights or legitimate interests whatsoever in respect of the disputed domain name. This is established by the fact that Complainant does neither have any relationship with Respondent, nor has Complainant granted a licence or any other right or permission to Respondent with regard to the disputed domain name.
Complainant contends that the disputed domain name has been registered and is being used in bad faith. Respondent’s market activities started in early October 2010. Ever since, Complainant has received several emails and phone calls of confused (potential) clients and other parties. Complainant maintains that Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a very strong likelihood of confusion with Complainant’s mark and domain names and the services provided that are identical to Complainant’s business directories. Hence, Respondent is disrupting the business of Complainant.
Consequently, Complainant requires the transfer of the disputed domain name to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed with its claim, Complainant must prove that each of the three following elements is present:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the dispute domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The very first and indispensible requirement under the Policy is that Complainant proves a valid trademark or service mark in which it has rights. In Germany, Austria and Switzerland, where Complainant says to be active with its business, trademarks are established by registration. Complainant does not allege having registered a trademark GELBES BRANCHENBUCH or similar in any of these countries and, in fact, does not allege owning a registered trademark anywhere in the world. Complainant, however, asserts being the owner of “common law trademark rights”. Germany, Austria and Switzerland, where Complainant is active, are civil law jurisdictions where no “common law trademarks” per se exist or may be acquired. However, under highly specific circumstances, unregistered trademarks based in civil law jurisdictions may yet be protected under the Policy if narrowly defined requirements are fulfilled. In order to qualify for such protection, Complainant would have to show successfully that its name for example has become a distinctive identifier associated with its business or services.1
In the present case, there does not appear to be sufficiently alleged grounds to base a finding of unregistered trademark rights. Complainant has not sufficiently shown that its alleged trademark GELBES BRANCHENBUCH, in the general public or in the business world, is mainly associated with Complainant’s business or company. “Gelbes Branchenbuch” (yellow business directory) is a descriptive term and although German speaking persons likely know what is meant by that term, there is no evidence whatsoever that the general public, even the business public, associates primarily or exclusively Complainant’s company or business with such term. Yellow business directories are edited in the German speaking area by almost every political or business community (villages and trade associations) and a Google search with the combined terms “Gelbes Branchenbuch” delivers immediately 16,600 returns (many of them very critical to Complainant’s business). There is no evidence whatsoever that Complainant could have prevailed in, for example, a passing off action. See S.N.C. Jesta Fontainebleau, supra. Hence, the Panel concludes that Complainant has failed to establish an unregistered trademark and thus failed to prove the first element of the Policy.
Since all three elements of the UDRP must be proven by Complainant in order to succeed with a request for the transfer of a disputed domain name, it is not necessary to make further findings with regard to the second and third elements required under the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Bernhard Meyer
Sole Panelist
Dated: February 4, 2011
1 See S.N.C. Jesta Fontainebleau v. Po Ser,WIPO Case No. D2009-1394. See also, the World Intellectual Property Organization’s report entitled “Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks” (hereafter “WIPO Report”) which stipulates the following factors to be considered when determining whether a mark is well-known: The degree of knowledge or recognition of the mark in the relevant sector of the public; media recognition; the duration, extent and geographical area of any use or promotion of the mark; the value of the mark; and a record of successful enforcement of the mark.
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