The Complainant is GEA Group Aktiengesellschaft of Dusseldorf, Germany, represented by Patent Attorneys Kutzenberger & Wolff, Germany.
The Respondent is G.E.A. Design of Lakewood, California, United States of America. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2011. On May 27, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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 June 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2011. The Response (filed by Glenn Edward Adams) was received by the Center on July 6, 2011.
The Center appointed Alistair Payne as the sole panelist in this matter on July 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 Complainant is a publicly listed technology group founded in Germany in the 1920s and which now has a network of more than 250 companies in 50 countries and employs more than 20,000 people worldwide. It is one of the largest system providers for food and energy processes with about EUR 4.4 billion revenue in 2010. The Complainant owns various registered trademarks for GEA including service marks 2,028,058 (registered on January 7, 1997, with an indicated first use in 1922) and 772,104 (registered on June 30, 1964) in the United States Patent and Trademark Office (USPTO).
The Respondent registered the Disputed Domain Name on August 19, 1995. 5. Parties’ Contentions A. Complainant
The Complainant submits that it has traded worldwide but in particular in Europe and in the United States of America for many decades under the GEA mark to the extent that at least in these two regions the mark has become a well-known service mark. The Complainant says that amongst other areas it operates in the services data processing area for a variety of industrial fields and also provides services to the computer and network security industries, and that these sectors are identical to those in which the Respondent operates. In addition the Complainant says that it owns over 540 registered trademarks throughout the world for or including the GEA mark and that the Disputed Domain Name is identical to this mark.
The Complainant further submits that it has not authorized the Respondent’s use of the Disputed Domain Name, that to its knowledge the Respondent does not own any registered trade mark rights for the Disputed Domain Name and is not generally known in commerce under the GEA mark. It says that the Disputed Domain Name was registered long after the Complainant first used the GEA mark as early as the 1920s and that the Respondent appears to use the Disputed Domain Name both for non-commercial and for commercial services in relation to its G. E. A. Design services business.
As far as bad faith is concerned the Complainant says that the Respondent registered and holds the Disputed Domain Name in order to prevent the Complainant from using it and submits that the fact that the Respondent registered the Disputed Domain Name many years after the Complainant commenced using it is evidence of the Respondent’s bad faith. The Complainant says that the Respondent’s intention in this regard is only reinforced by the Respondent’s failure to operate an active website at the Disputed Domain Name since 2007. As no content is retrievable at the Disputed Domain Name and because of the identicality of the Complainant’s mark, the Complainant says that it is inevitable that consumers will associate the Disputed Domain Name with the Complainant and will tend to think that the Complainant has no web presence or that the server is down or will otherwise be confused into associating the Disputed Domain Name with the Complainant and this will reflect badly on the Complainant because of the lack of content on the associated website.
The Complainant submits further that the position is only reinforced by the Respondent’s refusal to accept the Complainant’s various offers to purchase the Disputed Domain Name and the impression that the Respondent gave the Complainant that it could buy the Disputed Domain Name for considerably more than the USD 20,000 – 40,000 offers that it had turned down from other parties. As a consequence the Complainant says that the remaining impression is that the Respondent registered and used the Disputed Domain Name in bad faith. B. Respondent
The Respondent is quite emphatic in submitting that the Disputed Domain Name stands for his initials (his name being Glenn Edward Adams) and that when he registered it in 1995 he had never heard of the Complainant and was unaware of the Complainant’s existence until it offered to purchase the Disputed Domain Name. He says that he started a business concerning database entry and design and computer services many years ago and as a consequence of this business and his developing interest in computers he applied for the Disputed Domain Name with the intention of using it to display personal information and as a site from which files could be downloaded. The Respondent says that he subsequently did use the site to display personal information, photos and plans and to communicate with his family, friends and clients, however due to problems with his webhosting company and his own business and financial difficulties; he ended up having no website but merely using the Disputed Domain Name to host his email address. The Respondent says that he has a new website almost ready to go in 2011 and that his email address at [ ]@gea. com already receives almost one thousand emails per week on average.
The Respondent submits that since 2001 he has been made various offers for the Disputed Domain Name by a number of individuals and organizations including the Complainant and others such as General Electric Appliances and Girls Erotic Adventures. These offers have been made on numerous occasions but the Respondent says that he has repeatedly rejected these offers on the basis that the Disputed Domain Name supported his e-mail address which he uses to remain in contact with friends, family and colleagues. The Respondent says that contrary to the Complainant’s allegations that his business was in competition with the Complainant’s, the website content that he did have could not have been confused with the Complainant as the first thing that Internet users would have seen was a picture of the Respondent sitting in his living room and some random pictures of a fish. He says that it contained no pricing or selling information and that he never advertised the site to internet users. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has demonstrated that it owns trade mark rights for the purposes of the Policy. In particular the Panel notes the Complainant owns various word mark registrations worldwide for its GEA mark, including service mark 2,028,058 in the USPTO. Further the Panel notes that the key element of the Disputed Domain Name is identical to the Complainant’s GEA mark. As a result the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
In the Panel’s view the Complainant has not demonstrated that the Respondent has no rights or legitimate interests in the Disputed Domain Name as it is required to do under the Policy. In this regard the Panel notes that GEA reflects the Respondent’s initials and that he historically and currently uses the Disputed Domain Name for his personal email address. Although it appears that the Respondent initially used the website for his database entry and design business under the “G.E.A.” Design name which would also explain his choice of registering a domain name in the “. com” domain space, it also appears that he has not used the website for this purpose for many years and that he has not used the Disputed Domain Name for any ulterior or illegitimate purpose.
As set out below the Panel also does not accept that the Respondent registered the Disputed Domain Name with the intention of trading off the Complainant’s reputation or otherwise in bad faith. Accordingly the Complainant has not demonstrated that the Respondent had no legitimate interest in the Disputed Domain Name and the Complaint does not succeed under the second element of the Policy. C. Registered and Used in Bad Faith
Although the Complainant has used its GEA mark for many years and well prior to the date of registration of the Disputed Domain Name in 1995, in the Panel’s view the Complainant has not demonstrated that the Disputed Domain Name was registered in bad faith. The Respondent has a legitimate explanation for its use of GEA in the Disputed Domain Name based on the use of initials and the Respondent’s original business name and the Panel accepts the Respondent’s explanation that he was not aware of the Complainant’s mark at the date of registration of the Disputed Domain Name.
The Panel notes that at the time of registration and while the Respondent’s business was still operational, it is highly unlikely that the Respondent sought to trade off the Complainant’s reputation by attracting Internet users seeking the Complainant’s services. There is nothing before the Panel to contradict the Respondent’s explanation that he was operating a largely personal site even while providing files off the site which clients could download. Further considering the respective business sizes it seems unlikely to the Panel that the Respondent was ever in real competition with the Complainant.
The Complainant’s suggestion that the Respondent’s failure to display content on the website since 2007 would somehow confuse Internet users is not in the Panel’s view credible. In addition the Panel notes that the Respondent has apparently refused numerous offers for sale of the Disputed Domain Name from various organizations, including from the Complainant, on the legitimate basis that it has used its email address from this website for many years and that to sell it and to have to change email addresses would cause the Respondent considerable disruption and inconvenience. In these circumstances the suggestion by the Complainant of its impression, based on its lawyers’ communications with the Respondent in 2009, that the Respondent would be prepared to sell the Disputed Domain Name for a substantial multiple of the USD 2,000 sum offered by the Complainant, carries little weight.
Overall, the Panel’s view that the Disputed Domain Name has not been registered or used by the Respondent in bad faith is only reinforced by the delay of the Complainant in acting to obtain the Disputed Domain Name. Had the Complainant really been concerned about the Respondent’s illegitimate motives or about damage to its reputation it would not have waited so long after the initial registration in 1995 of the Disputed Domain Name to first communicate with the Respondent (the first communication with the Respondent by the Complainant’s lawyers appears to have occurred in 2009) and a total of 16 years to bring this Complaint.
As a result the Panel finds that the Disputed Domain Name was not registered or used in bad faith and that the Complaint fails under the third element of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Alistair Payne
Sole Panelist
Dated: July 30, 2011
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