The Complainant is Wintershall Holding GmbH of Kassel, Germany, represented by Hogan Lovells International LLP, Germany.
The Respondent is Tracey Morgan of California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2011. On August 30, 2011, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On August 31, 2011, Melbourne IT Ltd 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 September 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2011.
The Center appointed Lana Habash as the sole panelist in this matter on October 6, 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 an International company specialized in energy and conducts exploration activities and production of crude oil and natural gas in various regions of the world including Europe, North Africa, South America, Russian Federation and the Caspian Sea and the Middle East. The Complainant headquarters is in Kassel, Germany, and is considered the largest producer of crude oil and natural gas in Germany.
The Complainant has trademark rights in the word mark WINTERSHALL and holds a number of international registrations and Community Trademark registrations, the oldest of which dates back to 1982. The Complainant, together with the parent company registered the domain names and , under which the official website of the Complainant can be found.
The disputed domain name was created in February 2011 and resolves to a website that appears to be a website of a private limited liability company operating under the name Wintershall-De Merchants. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
The disputed domain name fully incorporates the Complainant’s trademark WINTERSHALL, which makes it confusingly similar to the Complainant’s trademark;
The addition of the suffix “-de” is not sufficient to prevent this confusing similarity as it is a descriptive term lacking distinctiveness; to the contrary, considering that it is the designation for the ccTLD of Germany, the country of the Complainant’s head office, it may increase the likelihood of confusion;
The Complainant’s trademark is known on an international level as shown in the selection of recent international press articles provided by the Complainant;
The registration of the disputed domain name is a misrepresentation, implying that the disputed domain name and the content of the website it resolves to, is somehow connected with, associated with or authorized by the Complainant, which is not the case;
The Respondent has no legitimate rights or interests in the disputed domain name, as it is not using the disputed domain name for a bona fide offering of goods or services, and is not making noncommercial or fair use of it;
The Respondent was not commonly known by the name “Wintershall” prior to the registration of the disputed domain name;
The Respondent has registered the disputed domain name with the knowledge of the Complainant’s rights in the word mark WINTERSHALL;
The Respondent is not and has never been a representative or licensee of the Complainant, nor is the Respondent authorized in any manner to use the WINTERSHALL trademark;
The Respondent has registered and is using the disputed domain name in bad faith, considering that at the time of registration, the Respondent must have been aware of the Complainant’s trademark, which has been in use by the Complainant for several years;
The Respondent also has had knowledge of the Complainant’s other domain names and websites, which is evident from the fact that most of the Respondent’s website content is copied from the Complainant’s website, which also constitutes an infringement on the Complainant’s copyrights;
By using the term “Merchant” on its website, the Respondent further attempts to create the impression that it is an official reseller of WINTERSHALL products, and leading to the confusion of Internet users;
The use of the disputed domain name for the “dubious” website of the Respondent may cause serious harm to the Complainant’s reputation, which is known for its technical excellence and leading knowhow, particularly because the Respondent includes the names and CVs of some of the team members of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name transferred to it, the Complainant must prove the following under the Policy, paragraph 4(a)(i-iii):
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated its rights to the trademark WINTERSHALL. The Panel is also satisfied that the Complainant has established itself as a known player in the industry.
The disputed domain name contains the Complainant’s trademark WINTERSHALL in its entirety and adding the suffix “-de” to the trademark can be perceived to indicate the German nationality of the Complainant, which supports the finding of confusing similarity between the Complainant’s trademark and the disputed domain name. This view was adopted by a number of UDRP Panels: see Deutsche Telekom AG v. Domain Admin,WIPO Case No. D2008-0625 and Nordiska Foreningen for Falun Dafa and Easter US Buddha’s Study Association v. Ted Smathers/Webforce, Inc.,WIPO Case No. DNU2004-0001 and Sony Kabushiki Kaisha v. Inja, Kil,WIPO Case No. D2000-1409.
Paragraph 4(a)(i) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.
The initial view of the website to which the disputed domain name resolves (the “Respondent’s Website”) may suggest that the disputed domain name is being used in connection with a legitimate business; however, a closer examination of the content of the Respondent’s Website reveals, as indicated by the Complainant, that the Respondent has copied a significant amount from the Complainant’s website, at times in a verbatim manner. The similar content might be expected had the Respondent been an authorized agent/reseller or representative of the Complainant, which is not the case as asserted by the Complainant.
Moreover, the Respondent’s failure to respond to the Complaint supports an inference of the lack of rights or legitimate interests with respect to the disputed domain name. Accordingly, the Complainant has succeeded in making a prima facie case that the Respondent lacks any rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted, and as such has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
As discussed under the first element, the Panel is satisfied that the Complainant’s trademark is well-known in the industry; therefore, the Panel is convinced that the Respondent must have had knowledge of the Complainant’s rights in the trademark at the time of registration, particularly noting that the Respondent has added the suffix “-de” to the Complainant’s trademark, which supports a finding of registration in bad faith.
Furthermore, and considering the fact that the Respondent has copied the content of the Complainant’s website, and used the names and CVs of some of the key members of the Complainant’s team, the Panel concludes that the Respondent is using the disputed domain name in bad faith, possibly to disrupt the Complainant’s business and/or to tarnish the Complainant’s trademark, by providing inappropriate information in some sections of the Respondent’s website, such as suggesting that part of the products that are being offered include cooking oil and sugar cane. While assessing copyright infringement is beyond the scope of the Policy, some UDRP Panels have found that copyright infringement considerations can in appropriate cases support a finding of use in bad faith. See: TPI Holdings, Inc. v. JB Designs,WIPO Case No. D2000-0216 and Compiere Inc. v. Access, Denied,WIPO Case No. D2007-0131.
Therefore, on the balance of probabilities, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith, and as such paragraph 4(a)(iii) is satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Lana Habash
Sole Panelist
Dated: October 20, 2011
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