The Complainant is Polcon NV of Schoten, Belgium, represented by GSJ Advocaten CVOA, Belgium.
The Respondent is B, Businessventure Domains, Mark Segal of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2011. On October 17, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On the same date, eNom 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 October 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2011. In reply to the Center’s notification regarding the expiry of the disputed domain name, eNom sent an email communication dated on October 19, 2011 confirming that “The domain will remain LOCKED until the UDRP proceedings are concluded or terminated […]. Prior to expiration, no action is necessary to maintain the lock on the domain. Should the domain expire prior to completion of the UDRP process, the complainant has the option to renew the domain to prevent deletion should they wish to do so […]”. The Respondent replied to such communication stating that “Actually the respondent is able to renew the domain as well. I am working to resolve this issue with the complainant outside of UDRP. I have added 5 years to the domain in order that the Complainant need not have any further concerns with the expiry date. The new expiry date is December 2016”. No formal Response was filed by the Respondent. Therefore the Center notified the parties on November 11, 2011, that it will proceed to appoint the administrative panel.
The Center appointed Christian Schalk as the sole panelist in this matter on November 18, 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.
The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) of the Rules. The language of the proceedings is English. 4. Factual Background
The Complainant is a Belgian company active in the field of project planning in the area of renewable energy. In this context it has carried out numerous projects for solar, wind, and bio-energy initiatives and provides consultancy services for alternative energy opportunities and solutions in several European countries, such as Germany, Greece, France, Italy, Spain, Slovakia, Turkey and in the United Kingdom.
The Complainant owns the Benelux trademark registration No. 0880428 ENPOWER covering goods and services in the Int. classes 11, 37 and 42, which has been filed on April 21, 2010.
The Respondent registered the disputed domain name on December 28, 2002.
The disputed domain name resolves to a domain parking site where it is written in big letters: “this domain may be for sale”.
Below, under the headlines “Search suggestions” and “Try searching these categories”, there are lists of terms sorted by categories such as “Finance”, “Moving”, “Internet”, “Gardening” or “Weigth Loss” in German and English language, which apparently allow Internet users to search for further information on these topics.
After the Complainant found out that the disputed domain name had been registered by the Respondent, the Complainant contacted the Respondent in April 2011 in order to find out at what price the Respondent would be willing to sell the disputed domain name to the Respondent. The Respondent proposed a price of US 6,500.00
On June 20, 2011, the Complainant’s attorney sent a letter to the Respondent. In this letter, the Respondent was made aware of the Complainant’s trademark rights and was asked “to formulate a new and reasonable proposal for transfer of the [disputed] domain name” and that “as part of an amicable settlement an amount slightly higher than the out-of pocket costs can be considered”. In accordance with the material brought before the Panel, the Respondent did not reply to this letter. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is identical to the Complainant’s Benelux trademark. The Complainant outlines further that it is not required that the trademark is registered in the country in which the Respondent operates and that it is sufficient that the Complainant can demonstrate a trademark in some jurisdiction. The Complainant believes also that the fact that the registration of a domain name took place before the Complainant acquired trademark rights in a name does not prevent from finding identity or confusing similarity under the Policy. In this context, the Complainant cites among others Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598; Esquire Innovations, Inc. v. I c/o Whois Identity Shield; and Vertical Axis, Inc., Domain Administrator,WIPO Case No. D2007-0856 to support its arguments.
The Complainant alleges also that the Respondent has no rights or legitimate interests in the respect of the disputed domain name since the Respondent is not commonly known by this domain name, does not use it as part of its legal name or corporate name and is also not commonly known under this name. The Complainant argues also that it has neither licensed nor otherwise permitted to the Respondent to apply for or use the disputed domain name and it has also no relation with the Respondent. The Complainant believes also that the fact that the disputed domain name is linked with a parking website where it is offered for sale, shows that the Respondent has neither proper rights nor any interest in it and that the Respondent is not making a legitimate non-commercial or fair use of it.
Furthermore, the Complainant alleges that the disputed domain name has been registered and is being used by the Respondent in bad faith. The Complaint argues in this context that the Respondent’s intention is to sell, to rent or otherwise transfer the disputed domain name and that such a behavior requires bad faith registration. In order to support its arguments, the Complainant cites the following decisions of previous panels: Ets Leobert SARL v. Jeonggon Seo,WIPO Case No. D2009-0004; Microsoft Corporation v. Amit Mehrotra,WIPO Case No. D2000-0053 and adidas-Salomon AG v. Vincent Stipo,WIPO Case No. D2001-0372.
The Complainant reports further that the Respondent owns over 18,360 domain names, which are also offered for sale. In this context, the Complainant provides website printouts where the Respondent offers for sale the domain names and . The Complainant states that these domain names relate to a German and/or Dutch speaking territory while the Respondent does not seem to have any actual activity in Europe because in the Whois data of the disputed domain name, an U.S. telephone number is mentioned and that the U.S. company behind this phone number apparently consists of only two persons and has only a limited annual revenue. The Complainant concludes therefore, that the Respondent does not use the disputed domain name for any business purposes but registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration.
In addition to this, the Complainant believes that the conditions of paragraph 4(b) of the Policy are also met in this case because the amount of US 6,500.00 which the Respondent asked the Complainant for transferring the disputed domain name is above the out of pocket costs directly related to the domain name and also because the Respondent did not reply to the Complainant’s registered letter of June 2011. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the complainant has proven that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to a trademark 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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in the term ENPOWER and that the disputed domain name is identical with this trademark right since it incorporates completely the term ENPOWER.
In addition, the “.net” suffix in the disputed domain names does not affect the determination that the disputed domain name is identical with the term ENPOWER in which the Complainant has trademark rights (see also: Compagnie Générale des Etablissements Michelin v. Trendimg,WIPO Case No. D2010-0484; Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936 and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,WIPO Case No. D2001-0615 and cases cited therein).
For all these reasons the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”) states at Paragraph 2.1 that the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and that once such a prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. In cases where the disputed domain name comprises terms identical to the Complainant’s trademark owned at the time of the registration of the disputed domain name, panels have consistently taken the view that the Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy.
In this case, the Respondent has not rebutted the Complainant’s allegations on the Respondent’s lack of rights and legitimate interests and has not provided the Panel with any explanations as to whether this is the case or not or whether there are indeed legitimate reasons for the choice of the disputed domain name. This means that the Respondent failed to come forward with such appropriate allegations or evidence of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Especially, there is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent is also neither affiliated with the Complainant nor has the Complainant granted the Respondent a license to use its trademark.
In this case, the Complainant did apply for a trademark more than seven years after the Respondent registered the disputed domain name and started to take action against the Respondent only a further year later. Thus, there can be no prima facie case absent the Complainant’s proof that the Respondent knew or should have known of the Complainant, and of Complainant’s possible rights and interest in the ENPOWER term (for which Complainant did ultimately indeed acquire trade mark rights).
However, whether the Respondent for its part has any rights or legitimate interests in the disputed domain name for purposes of the second element of the Policy depends on whether the Respondent, prior to having notice of this dispute, had used or made preparations to use the disputed domain name and whether such use constitutes a bona fide offering of goods and services. In accordance to the material brought before the Panel, the disputed domain name has been linked to a domain parking site where it is offered for sale. Due to the fact that this website provides a list of links apparently to other websites, it cannot be excluded that the disputed domain name has been used by the Respondent also for the purpose to earn revenue by selling click throughs to advertisers. Previous panels (see e.g. Trade Me Limited v. Vertical Axis, Inc., WIPO Case No. D2009-0093) have decided that none of these activities constitute an offering of goods and services by the Respondent as such for purposes of accessing a safe harbor defense under the second element of the Policy. Even if it would be regarded as use by the Respondent, it cannot be regarded as a bona fide offering of goods and services by the Respondent given the fact that domain names are a public good. Trading in domain names which includes assigning them is not itself a bona fide use of them by the Respondent. Bona fide use requires, that the disputed domain name resolves to a website under the control of the registrant, or point to name servers on which such a website is imminently to be located, or to an e-mail gate server with which the domain name to be used, under the control of the registrant or through the registrant’s goods or services offered or otherwise available for use (see e.g. Trade Me Limited v. Vertical Axis, Inc., WIPO Case No. D2009-0093). This is all not the case here since the website to which the disputed domain name resolves offers nothing that could be characterized as goods and services of the Respondent. The use of the disputed domain name to resolve it to a parking site where it is offered for sale does not constitute a bona fide use under paragraph 4(c)(i) of the Policy.
According to the material brought before the Panel, the Panel finds that the Respondent also cannot show evidence that it is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue which would be required to obtain benefit of paragraph 4(c)(iii) of the Policy.
The Respondent has offered the disputed domain name to the Complainant for an amount that exceeds considerably the expenditures for registration and maintenance for a domain name. Such a behavior cannot constitute a legitimate non-commercial or fair use of the disputed domain name.
In addition, the Panel believes that the Respondent is engaged in the monetization exercise with the intent for commercial gain to misleadingly divert customers. The Respondent has registered the term “enpower” as domain name, which is a slight alteration of the generic term “empower”. By using a slight alteration of a generic term, the Respondent apparently tries to take advantage of typical typing errors which occur easily to Internet users when they type in a domain name in a browser. Such a misleading diversion of consumers to a target different from what they are searching for is the case by the majority of parked domain monetization sites. The Panel believes that it is highly unlikely that any consumer would type into their browsers the disputed domain name and expect what it sees on the website to which this domain name resolves. If Internet users look for the Complainant’s goods and services they get mislead and it is the same if they look for the Respondent since no product can be acquired from the Respondent website to which the disputed domain name resolves (Trade Me Limited v. Vertical Axis, Inc., WIPO Case No. D2009-0093).
Therefore, the Panel believes that the Respondent cannot take the benefit of paragraph 4(c) of the Policy. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which are evidence of bad faith registration and use of domain names:
(1) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(3) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.
According to the material brought before the Panel, the Panel finds that the disputed domain name has not been registered in bad faith.
At the time of the registration, the Complainant had neither a pending trademark application nor registered trademark rights in the term “enpower”. Therefore, even if the Respondent would have been obliged to carry out availability searches at least in online trademark registries, it would have been unable to find the Complainant’s trademarks. In absence of any evidence to be provided by the Complainant, the Panel believes also that the Complainant’s mark was not a well known or even famous mark at the time of registration of the disputed domain name or thereafter on which the Respondent should have been aware of. Therefore, there is enough reason for the Panel to believe it more likely than not that the Respondent had indeed the common term “empower”, or perhaps some other term or mark, but in any event not the Complainant’s specific mark (which was only registered some seven years later) in mind when it registered the disputed domain name. The visual appearance of the disputed domain name is nearly identical to the word “empower” (empower / enpower only one letter difference), phonetically, both terms are identical. And even if the Respondent did have the term “enpower" in mind, it is unlikely to be in connection with the Complainant, which the evidence of record in these proceedings shows only established trademark rights in ENPOWER some seven years after Respondent registered the disputed domain name. In the absence of clear evidence that the Respondent was aware of the Complainant at that time and was targeting the likelihood or at least possibility that Complainant would thereafter obtain trademark rights in ENPOWER, showing Respondent registration in bad faith of this domain name is problematic. As a consequence, the Panel believes that the Respondent did not register the disputed domain name with the aim of profiting from and exploiting the Complainant’s rights in the ENPOWER trademark. This is in line with the finding of previous Panelists who have decided that if a respondent registers a domain name consisting of a dictionary term because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities rather than its specific trademark value, the use of such a domain consistent with such good faith belief may establish [under certain circumstances !] even a legitimate interest in such a name (see Media General Communications, Inc. v. Rarenames WebReg,WIPO Case No. D2006-0964; Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304).
Given all facts and circumstances of this case, the Panel finds therefore, that the Complainant has failed to satisfy the burden of showing bad faith registration of the disputed domain name by the Respondent.
Since the paragraph 4(a)(iii) of the Policy requires that the Complainant establishes that the domain name “has been registered and is being used in bad faith” the third element under paragraph 4(a) of the Policy has not been fulfilled. The consensus view since the Policy was implemented in 1999 has been that the conjunctive “and” indicates that there must be bad faith both at the time of registration and subsequently. Apart from unusual cases of a respondent’s advance knowledge of a trademark, it is not logically possible for a respondent to register a domain name in bad faith contemplation of a mark that does not yet exist or of which the respondent is not aware (Eastman Sporto Group LLC v. Jim and Kenny,WIPO Case No. D2009-1688; see also paragraph 3.1 of the WIPO Overview 2.0, and cases cited therein “Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.”).
This view has been challenged in some more recent UDRP decisions where the above mentioned requirement of paragraph 4(a)(iii) of the Policy was interpreted in the way that the requirement “registered and used the domain name in bad faith” has to be treated as an “unified concept”. Under this method of analysis a panel may determine that registration in bad faith under paragraph 4(a)(iii) may be established “retroactively” by subsequent bad faith use (City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE,WIPO Case No. D2009-0643 (“Mummygold”) and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions,WIPO Case No. D2009-0786 (“Octogen”); see also Ville de Paris v. Jeff Walter,WIPO Case No. D2009-1278; Jappy GmbH v. Satoshi Shimoshita,WIPO Case No. D2010-1001). These decisions based their finding on the Respondent’s representation and warranty in the registration agreement that in registering a domain name the registrant undertakes, that it “will not knowingly use the domain name in violation of any applicable laws or regulations” and it is its responsibility “to determine whether [the] domain name infringes or violates someone else's rights” and that such a warranty could be breached by post registration abuses. However, the clear language of paragraph 4(a)(iii) of the Policy requiring a conclusion that the domain name has been registered and used in bad faith should not be overlooked (this has been the position in many Panel decisions since then, see among others Torus Insurance Holdings Limited v. Torus Computer Resources, WIPO Case No. D2009-1455; Camon S.p.A. v. Intelli-Pet, LLC,WIPO Case No. D2009-1716; Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) v. Portmedia Inc. / TRUEROOTS.COM c/o Nameview Inc. Whois,WIPO Case No. D2010-0217 (majority opinion); Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470 and A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc.,WIPO Case No. D2010-0800 (majority opinion). Furthermore, reading “registered” as a continuous act that can be abused at any time would appear to make it essentially synonymous with “use” and deprive the conjunctive phrase of its full meaning (see Eastman Sporto Group LLC v. Jim and Kenny,WIPO Case No. D2009-1688).
Even if this Panel would follow the above mentioned “Mummygold / Octogen analysis” of the requirement of “registered and used the domain name in bad faith”, the Panel believes that (given the clear wording of paragraph 4(a)(iii) of the Policy) it could be applied only under very limited conditions which are not met in this case already for the following reasons. There has been quite a long period of time between the registration of the disputed domain name in December 2002 and the registration of the Complainant’s trademark in April 2010. Furthermore, as far as the fact is concerned that the disputed domain name resolves to a domain parking site which contains links by which the Respondent apparently earns revenue by selling click throughs to advertisers, there is only evidence for such behavior in the year 2011. Therefore, in absence of further evidence which the Complainant should have provided and given the long distance of time, the Panel concludes that such bad faith use cannot have an impact on the initial registration which the Panels finds that it was in good faith.
Also paragraph 4(b) of the Policy does not allow the Panel to come to another conclusion. This paragraph provides a mechanism by certain types of non bona fide use can constitute evidence of both registration and use in bad faith (Trade Me Limited v. Vertical Axis, Inc., WIPO Case No. D2009-0093). The examples given in there are for good reason not meant to be exhaustive of all circumstances from which such bad faith may be found since the overriding objective of the Policy is to curb the abusive registration of domain names in cases where the registrant is seeking to profit and exploit the trademark of another (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230). However, what is required in all circumstances is to show evidence that it was or that it must have been the Respondent’s intent to take somehow advantage of the Complainant’s trademark rights. As outlined above, the Complainant’s trademark ENPOWER has been registered only more than seven years after the disputed domain name has been registered. Furthermore, no evidence has been brought before the Panel that the Respondent had knowledge or should have had knowledge of the Complainant’s trademark rights at the time of registration of the disputed domain name.
Therefore, the Panel concludes that the Complainant has failed to satisfy its burden of showing bad faith registration of the disputed domain name and hence, has not fulfilled the third element under paragraph 4(a) of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Christian Schalk
Sole Panelist
Dated: December 5, 2011
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