The Complainant is Leica Geosystems AG of Heerbrugg of St. Gallen, Switzerland represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
The Respondent is Altair D'Arcangelo of Chieti, Italy.
2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , , , , and are registered with Tucows Inc.
The disputed domain name is registered with Ascio Technologies Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2011. On the same day, the Center transmitted by email to Tucows Inc. and Ascio Technologies Inc. a request for registrar verification in connection with the disputed domain names. On November 4 and November 17, 2011 Tucows Inc. and Ascio Technologies Inc., respectively, transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On November 8, 2011, the Center received an email communication from the Complainant indicating that one of the disputed domain names, , was not registered with Tuscow (as indicated in the original Complaint) but with Ascio Technologies Inc..
On November 9, 2011, the Center received an email communication from the Complainant attaching Annex No. 9, indicating that it had been forgotten in the original Complaint.
On November 17, 2011, the Center informed the Complainant that the confirmed registrar of the disputed domain name was Ascio Technologies Inc., and inviting it to amend the Complaint. The Complainant filed such amended Complaint on November 22, 2011.
On December 12, 2011, the Center informed the Complainant that the Amended Complaint did not correctly identify the Mutual Jurisdiction, and the Complainant clarified this matter on December 7, 2011.
The Center verified that the Complaint together with the amended 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 December 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2012.
The Center appointed James Bridgeman, Eduardo Machado and Angelica Lodigiani as panelists in this matter on January 31, 2012. The Panel finds that it was properly constituted. 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 the Rules, paragraph 7. 4. Factual Background
The Complainant is a manufacturer of GPS (Global Positioning System) and laser-guided devices with operations based in Heerbrugg, Switzerland. The Complainant is a global company with tens of thousands of customers supported by more than 3,500 employees in 28 countries, and has hundreds of partners located in more than 120 countries around the world. The Complainant also maintains a strong Internet presence, with its primary website available at "". The Complainant avers that it has achieved a turnover of EUR 35 million with the sale of its Leica Geosystems electronic distance apparatus, which are marketed under the DISTO trademark.
The Complainant is the registered owner of the trademark DISTO, including inter alia International Registration No. 616500, which is registered with effect from June 3, 1994 and grants protection to the trademark in, among other jurisdictions, Italy, where the Respondent is located. A copy of this registration has been furnished in an annex to the Complaint.
The LEICA trademark is owned by the licensor, Leica Microsystems IR GmbH (herein “Leica Microsystems”). The Complainant has the authority, pursuant to its license agreement with Leica Microsystems, to file this UDRP Complaint. There are two license agreements in effect, the first of which grants the Complainant the right to use the LEICA trademarks, and the second grants the Complainant the right to use the “Leica” trade name. Pursuant to the trademark license agreement, the Complainant has the right to take legal action against third parties who infringe the LEICA trademark if the licensor has given its consent or if the licensee has agreed to bear all the costs of the proceeding. Leica Microsystems have confirmed the content of the license agreements in a signed declaration, attached to the Complaint. Leica Microsystems has expressly consented to the Complainant's filing of this Complaint, and agreed to the remedy requested by the Complainant (namely, transfer of the disputed domain names to the Complainant's control). An executed copy of this consent agreement has been annexed to the Complaint. Copies of some of the LEICA trademark registrations worldwide, which date back to 1958, are also furnished in an Annex to the Complaint.
The GEOMAX trade mark is owned by GeoMax AG, a subsidiary of the Complainant and is used in connection with surveying and GPS products and has been registered since at least November 2008.
The Complainant’s parent company Hexagon AB registered the domain name on February 14, 2011.
The 19 disputed domain names were registered on the following dates:
- December 12, 2008
- June 23, 2010
- July, 13, 2010
- September 1, 2010
- March 27, 2011
- March 27, 2011
- March 27, 2011
- February 22, 2011
- March 27, 2011
- March 27, 2011
- April 6, 2011
- April 12, 2011
- April 12, 2011
- April 12, 2011
- April 12, 2011
- April 12, 2011 5. Parties’ Contentions A. Complainant Complainant’s Rights
The Complainant relies on its rights as registered owner of the trade mark DISTO, as licensee of the trademark LEICA, as the parent company of the registered owner of the trademark GEOMAX.
Furthermore, the Complainant claims common law rights in the trademark LEICA VIVA through established use. The Complainant submits that since September 22, 2009 the trademark LEICA VIVA has been used in connection with several varieties of hand-held laser surveying devices, including the “Leica Viva GNSS”, “Leica Viva TPS”, the “Leica Viva CS10” and “CS15 Field Controllers”, the “Leica Viva Zeno” and the “Leica SmartWorx Viva” software product. The Complainant submits that due to the Complainant's extensive advertising and the commercial success of the “Leica Viva” product line, the “Leica vica” name has attained unregistered trademark status. The Complainant submits that LEICA VIVA trademark is inherently distinctive, as the term has no dictionary meaning and it has been used exclusively to designate the Complainant's goods since the branding and launch of the “Leica Viva” product line. The Complainant has furnished a copy of the main page of the Complainant's “Leica Viva” website.
With respect to the disputed domain names containing the LEICA trademark, the Complainant submits that not only is it allowed to file this Complaint but it is obliged to do so pursuant to the terms of its license agreement with Leica Microsystems, the owner of the LEICA trademark.
Further, it has obtained the express permission of both its licensor and its subsidiary to request the remedy of transfer of the disputed domain names to the Complainant. Identity or Similarity
The Complainant alleges that the disputed domain names are identical or confusingly similar to the above indicated trademarks.
The Complainant submits that the disputed domain names , , , , , , , , , , contain the Complainant's DISTO trademark in combination with the LEICA trademark.
The Complainant submits that the name of one of its most competitive products, the “Leica 3D Disto”, contains both the DISTO and LEICA trademarks, with the product designation "3D" (meaning 3-dimensional, because the device is used to measure enclosed spaces).
The Complainant further submits that the trade mark LEICA is a distinctive element in the disputed domain names , , , , , , , , , , , , , ,
Additionally, the Complainant submits that the disputed domain name is identical to the trademark LEICA VIVA in which the Complainant claims to have established rights at common law by the use of the mark since September 22, 2009 in connection with hand-held laser surveying devices.
Finally, the Complainant submits that the disputed domain name is identical to the GEOMAX trademark which is owned by the Complainant's subsidiary GeoMax AG.
The Complainant submits that the test for confusing similarity under the Policy is confined to a comparison of the disputed domain names and the trademarks alone, independent of the products or services for which the disputed domain names are used or other marketing and use factors. See F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323.
The Complainant further submits that is well established that the specific top level of the domain name extensions ".com", ".org" or ".net" should not be taken into consideration when comparing the trademark in which the Complainant claims rights and the disputed domain names. See Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. The distinctive part of the disputed domain names is thus the textual string to the left of the gTLD designator. In this case, the textual strings comprise one or more of Complainant's well-known trademarks, in some cases combined with the terms "3d" or "24", which correspond to product codes used on the Complainant's goods.
Three of the disputed domain names contain the LEICA trademark, in conjunction with the combination "3d", which corresponds to one of the Complainant's products. It has been well-established that the addition of dictionary words or phrases to a complainant's trademark is generally insufficient to avoid confusing similarity for purposes of the Policy. See Nokia Corporation v. Huafeng Lu aka lu hua feng,WIPO Case No. D2010-1409; Revlon Consumer Products Corporation v. Vladimir Sangco,WIPO Case No. D2010-1774; and Viacom International Inc. v. Transure Enterprise Ltd.,WIPO Case No. D2009-1616.
One of the disputed domain names, , contains the entirety of the Complainant's unregistered LEICA VIVA trademark which has been used in commerce since September 22, 2009. In this regard, the Complainant further submits that unregistered trademark rights may properly form the basis of a UDRP Complaint where, as here, the Complainant has used the trademark in commerce prior to the Respondent's registration of the disputed domain name, and other factors present in the case make it inconceivable that the Respondent registered the disputed domain name without having the Complainant in mind. See Rocket Publishing Co., Inc. v. Isaac Goldstein,WIPO Case No. D2011-0578 and Primedia Specialty Group Inc. v. Vernon Pursley,WIPO Case No. D2007-0791.
The Complainant submits that moreover, the textual string of the disputed domain name comprises the entirety of the Complainant's registered LEICA trademark, in addition to the word "viva". As mentioned above, the addition of a generic word to the Complainant's registered trademark, particularly where the additional term is suggestive or descriptive of the Complainant's products, serves to heighten rather than to dispel the risk of confusing similarity. See Future Publishing Limited v. AK Karato, John Wong,WIPO Case No. D2009-1349.
Additionally, the Complainant submits that the disputed domain name is a near-copy of one of the Complainant's own domain names, namely . The domain name is registered by the Complainant's parent group and redirects to the Complainant's main website at "". The Complainant submits that it is therefore highly probable that the Respondent selected the disputed domain name to trade not only on the Complainant's well-known LEICA and LEICA VIVA trademarks, but also to profit from Internet user error when the Complainant's customers incorrectly enter the gTLD extension.
The disputed domain name is identical to the Complainant’s GEOMAX trademark as it contains the exact GEOMAX trademark with no alterations or additions, combined with the top-level identifier ".org". This disputed domain name is identical to the GEOMAX mark, and as such is likely to lead to confusion on the part of Internet users. See STL Group B. V. v. B, Inc.,WIPO Case No. D2011-0415 and Cellular One Group v. Card Resources Corp.,WIPO Case No. D2000-1180.
The remaining disputed domain names subject to this Complaint are composed of both the LEICA and DISTO trademarks, in some cases also containing the expression "3d" or "24" which are product codes or dash markings. As discussed above, the addition of dictionary terms, such as product identifiers, is insufficient to distinguish the disputed domain names from the Complainant’s trademarks. Additionally, as these disputed domain names contain two of the Complainant's well-known registered trademarks, they are to be considered confusingly similar to both of the Complainant's trademarks, and may instead serve to heighten the risk of Internet user confusion. See Freelife International Holdings, LLC v. Lim Gunawan Santoso, NAF Claim No. 1322096 and Microsoft Corporation v. nairf; NAF Claim No. 1364857.
Furthermore, in 1993, fifteen years before the registration of the first disputed domain name, the Complainant began offering the world's first hand-held laser meter under the trademark LEICA DISTO. Thus, the Respondent is clearly attempting to confuse Internet users and the Complainant's potential customers by selecting these composite disputed domain names. Rights or Legitimate Interest
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant asserts that the Respondent is not affiliated or associated with the Complainant in any way, and is not an authorized reseller of the Complainant's goods. Likewise, Leica Microsystems (the Complainant's licensor with regard to the LEICA marks) and GeoMax AG (the Complainant's subsidiary and holder of the GEOMAX trademark registrations) have confirmed that they have no relationship to the Respondent and have not authorized him to resell their branded goods.
The Complainant, nor its licensor Leica Microsystems or subsidiary GeoMax AG, have licensed or otherwise permitted the Respondent to use the LEICA, LEICA VIVA, GEOMAX or DISTO trademarks, and have not permitted the Respondent to register or use any domain name incorporating said trademarks.
The LEICA, LEICA VIVA, GEOMAX and DISTO trademarks are neither dictionary words nor generic terms.
The Complainant submits that there is no evidence that the Respondent has ever used the disputed domain names, or made any demonstrable preparations to use the disputed domain names (or a name corresponding to any of the domain names) in connection with a bona fide offering of goods or services.
The Complainant submits that the Respondent uses the disputed domain names for two different purposes.
The first group of disputed domain names is being passively held, whereby the Respondent has merely established a landing page and has provided no substantive content. The landing page displayed at most of passively-held domain names consists of a white background, the textual string of the disputed domain name in blue lettering, and the statement "This Domain is Reserved" written in several languages. The disputed domain name is the only passively held domain name that does not display this message, instead displaying a "403 Forbidden" error when the domain name is entered into a browser. No relevant content to the disputed domain names, or any identifying or contact information, is displayed on the websites to which these passively-held website resolve.
It has been well-established under the Policy that passively holding a domain name which contains a complainant's trademark, while making no demonstrable preparation to use such domain name in connection with either a non-commercial, fair use or a bona fide offering of goods and services, does not confer a right or legitimate interest in the domain name under the Policy. See SADD, Inc. v. Steven Weber, et al.,WIPO Case No. D2000-0170; U.S. News & World Report, Inc. v. Lai Zhongqi, NAF Claim 917070; and Spectrum Plastics Inc. v. RAINBOW BAG COMPANY, NAF Claim No. 1226144. Mere registration of a domain name does not generate rights or legitimate interests in and of itself. See LEGO Juris A/S v. Zhijun Guo,WIPO Case No. D2009-0184.
The disputed domain names in the second group are connected to Internet shops, operated either at websites corresponding to the disputed domain names or, via redirection, at external websites. The Complainant submits that it is clear the Respondent is commercially benefitting from the improper use of the Complaint's trademarks both through the unauthorized sale of what appear to be the Complaint's branded products, and the sale of the Respondent's "3DRoom" and "AccuBank" software products. The Complainant submits that the Respondent's "3DRoom" software is directly competitive with software packages the Complainant offers to compliment its products. The Respondent's "AccuBank" software, while not apparently competitive with the Complainant's products, is being offered on a website connected to the disputed domain name which contains the Complainant's trademarks. Thus, it is clear the Respondent is using the Complainant's trademarks to attract Internet consumers, hoping to secure sales of its own merchandise.
The Complainant submits that free-riding on the rights of another does not constitute a bona fide use of the disputed domain names, and thus the Respondent cannot claim any rights or legitimate interests in the disputed domain names. See Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946 and Abbott Laboratories v. United Worldwide Express Co., Ltd.,WIPO Case No. D2004-0088.
Regarding the Respondent's apparent sale of the Complainant's goods, the Complainant (as well as it subsidiary and licensor) has confirmed that the Respondent has not been authorized as a reseller of LEICA, GEOMAX or DISTO products. Nevertheless, the Respondent has falsely identified himself on the websites as an "Authorised Distributor" of such products. In this regard, the Complainant refers to a copy of a web page in an annex to the Complaint and Intervet International B. V. v. WEB SA,WIPO Case No. D2010-0702 and Houghton Mil: fin Co. v. The Weathermen, Inc.,WIPO Case No. D2001-0211.
The Complainant submits that the test for reseller rights, articulated in Old Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, and widely-known as the "Oki Data test", is the consistent benchmark for distributors under the Policy. While originally intended to cover only authorized reseller arrangements, some UDRP panels have elected to extend its analysis to unauthorized situations as well. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), Paragraph 2.3.
Regardless of whether a panel prefers to limit the Oki Data test only to situations in which an authorized reseller relationship exists, or instead prefers to broaden the interpretation of this case to include less formal arrangements, the four elements of the test must be satisfied before a respondent may attempt to claim this "safe harbor". In this case, the Panel finds that the Respondent cannot satisfy the Oki Data test requirements.
The Oki Data test requires a reseller to meet all of the following requirements: 1) the re-seller must use its web site to offer the goods or services at issue, 2) the web site must sell only the trademarked goods, and not those of any third party, 3) the site must clearly and accurately disclose the relationship between the owner of the website and the trademark holder, and 4) the Respondent may not attempt to "corner the market" by registering multiple domain names containing the Complainant's trademark. Old Data Americas, supra, and Experian Information Solutions, Inc. v. Credit Research, Inc.,WIPO Case No. D2002-0095.
In this case, the Respondent clearly fails to meet the Oki Data test. Although it appears the Respondent uses his Internet shops to sell the Complainant's products without authorization, he is also offering his own software products for sale (for example, the "3DRoom" software is offered at a price of EUR 279). The Respondent not only fails to properly indentify his relationship to the trademark owner, but instead affirmatively falsifies this information by declaring himself to be an "Authorised Distributor" of the products. Finally, the Respondent has clearly attempted to corner the market by registering sixteen gTLD domain names containing the Complainant's trademark, in addition to the previously-discussed ccTLD domain names.
For these reasons, the Respondent cannot be a legitimate reseller under the Oki Data test principles, as he has failed to meet three of the four mandatory criteria.
Finally, there is no evidence that the Respondent trades under or is commonly known by any name corresponding to the disputed domain names. The Whols records instead indicate that the Respondent is an individual named "Altair D'Arcangelo", and there is no information available on the Respondent's websites to suggest otherwise. Neither the passive holding, nor the infringing commercial use of the disputed domain names subject to this Complaint can be deemed noncommercial or fair use.
Therefore, the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names and the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. Bad Faith
The Complainant submits that the disputed domain names were registered and are being used in bad faith. The Complainant argues that this is a blatant case of cybersquatting. Each disputed domain name clearly reproduces one or more of the Complainant's trademarks. The Respondent obviously wants to benefit from misdirected traffic through sales of its own software, as well as retail sales of what appear to be the Complainant's goods. It is likely, given the facts and circumstances present in this case, that the Respondent intends to use the remaining (currently passively-held) disputed domain names to display Internet-based shops in the future. Such actions do not constitute a legitimate noncommercial or fair use of the disputed domain names, and are certainly not indicative of a bona fide offering.
The Complainant submits that despite the Complainant's long-standing use of the DISTO, LEICA, LEICA VIVA and GEOMAX trademarks, the Respondent has intentionally and deliberately chosen to register numerous domain names containing these protected trademarks. All of the disputed domain names were registered between December 12, 2008 and April 12, 2011, with the majority of the registrations created in the early months of 2011. As previously stated, the LEICA trademark has been registered since 1958 and the DISTO trademark since 1994, and as such it is inconceivable that the Respondent was unaware of the Complainant at the time he registered this large group of disputed domain names. Given the volume of domain names seized by the Respondent, and the fact that the Respondent is apparently selling both the Complainant's branded goods and its own supplemental software, it is clear the Respondent is intentionally targeting the Complainant and the goodwill inherent in its trademarks.
In addition to the gTLD domain names included in this Complaint, the Respondent has also registered numerous ccTLD domain names in the ".eu" and ".it" spaces, which target the Complainant's trademarks. These registrations include (to which the disputed domain name also redirects), , , and . These registrations serve as additional evidence of the Respondent's bad faith actions, his awareness of the Complainant and its trademarks, and his attempt to take unfair advantage of the Complainant's goodwill.
Eleven of the disputed domain names combine two of the Complainant's trademarks, making it inconceivable that the Respondent registered the disputed domain names without knowledge of, and intent to capitalize on, said trademarks. See Stanworth Development Limited v. Xander Jeduyu, Algebralive,WIPO Case No. D2009-1259.
Thus, it is apparent that the Respondent was aware of the Complainant and the Complainant's trademarks at the time he registered each of the disputed domain names, and accordingly, these registrations were undertaken in bad faith. See Merck KGaA v. Registrant [3644982]: Chen Yan Hua,WIPO Case No. D2011-1010; Mazda Motor Corporation v Zone Mp3,WIPO Case No. D2007-0730; and Eveready Battery Company, Inc. v. Web Master,WIPO Case No. D2006-1483.
LEICA VIVA has been used in commerce by the Complainant since the launch of its corresponding product line on September 22, 2009. The disputed domain name , which contains the both the LEICA and LEICA VIVA trademarks, was registered on July 13, 2010, and thus it is clear the Respondent registered this disputed domain name with the Complainant's products and trademarks in mind. The Respondent's intent is even more obvious when viewed in conjunction with his numerous other registrations that were designed to profit from the Complainant's trademarks.
While some of the disputed domain names are currently "parked" (that is, passively held with only a landing page displayed on the relevant web-site), several are used either to display or redirect to Internet store fronts. It is likely that the Respondent intends to use the passively-held websites to display Internet store fronts in the future.
The Respondent's Internet shops appear to offer the Complainant's branded goods, and clearly display both copyrighted pictures of the Complainant's products and the LEICA trademark without permission.
The Respondent, in a manifest behave of his bad faith, has clearly indicated on a number of his websites an affirmation that he is an "Authorised Distributor" of the Complainant's goods. This statement, while patently false, is likely to cause Internet user confusion, to result in a loss of business for the Complainant, and ultimately to cause significant damage to the Complainant's reputation.
Furthermore, in addition to engaging in the unauthorized resale of the Complainant's goods for his own commercial gain, the Respondent is further taking advantage of the Complainant's goodwill by offering his own software for sale on these store-front websites, which is competitive with the Complainant's official software offerings. The Complainant believes this software to be the Respondent's own because the advertisements for the so-called "3DRoom" application contain a small orange design trademark composed of the words "Analist Group". The Complainant notes in this regard that an entity calling itself Analist Group S.R.L. is the listed registrant of record for the website at "", to which the disputed domain name currently redirected. Therefore, the Complainant additionally alleges that the Respondent is trading on the goodwill of the LEICA, LEICA VIVA, GEOMAX and DISTO trademarks for commercial gain via the selling of his own software products.
Additionally, the "" website (to which the disputed domain name redirects) offers a second software product entitled "AccuBank". This software appears to be designed solely for budgetary and banking needs, and thus bears no relationship whatsoever to the LEICA, GEOMAX or DISTO trademarks, nor to the Complainant's products. This offering provides further evidence of the Respondent's blatant attempts to use the Complainant's name and trademarks for his own commercial gain.
The disputed domain names subject to this proceeding break into two groups in terms of the way in which they are being used. The first group, composed of the , , , , , , and domain names, are being passively held. Nothing more than a landing page with the text "This Domain is Reserved" presented in several languages, or in one case a "403 Forbidden" error, is displayed at the web sites. As previously mentioned, given the Respondent's use of the other domain names in this case, it is plausible that the Respondent intends to use some or all of these passively-held disputed domain names to open Internet shops in the future.
Passive holding has long been held to constitute evidence of bad faith use when combined with certain facts and circumstances which are present in this matter. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Additional elements which contribute to the finding that the Respondent's passive holding constitutes bad faith use in the present case include the well-known nature of the Complainant's trademarks (particularly as the Respondent is engaged in the same industry), and the fact that it is impossible to conceive of a good-faith use the Respondent could make of the disputed domain names (as they contain the Complainants trademarks and the Respondent has no rights or legitimate interests with regard to them). See Primedia Specialty Group, Inc. v. SuperS,WIPO Case No. D2007-0729 and Worldwide Pants Inc. v. VisionLink Communications Group, Inc.,WIPO Case No. D2008-1796.
The second group of disputed domain names are those which link to active Internet shops, either displayed at websites corresponding to the domain names which are the subject of this Complaint or via redirection to external websites. This group includes the , , , , , , and domain names.
The Respondent has deliberately targeted the Complainant and its well-known trademarks for his own commercial gain. Pursuant to paragraph 4(b)(vi) of the Policy, such actions constitute bad faith registration and use. See Toyota Motor Sales, U.S.A., Inc. v. Pick Pro Parts Inc.,WIPO Case No. D2005-0562.
Moreover, by registering a large number of disputed domain names containing the Complainant's trademarks (including several domain names located in ccTLD spaces which, although not the subject of the present Complaint, serve as further evidence of the Respondent's bad actions), the Respondent has clearly attempted to prevent the Complainant from representing its trademarks in a domain name under paragraph 4(b)(ii) of the Policy. It has been held that the registration of a large number of domain names brought together in the same complaint can constitute evidence of a "pattern of conduct" for purposes of the Policy. See AB Electrolux v. Unleaded,WIPO Case No. D2008-1431 and Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046.
It is thus clear that the Respondent has intentionally and deliberately targeted the Complainant's trademarks, and the goodwill associated therewith, for commercial gain. The Respondent has affirmatively misled visitors to his site as to his lack of relationship with the Complainant, is intentionally riding on the fame of the Complainant's trademarks and products in order to sell his own software, and has generated revenue as a direct result of Internet user confusion. Such actions are clearly indicative of bad faith.
For completeness the Complainant requests that the disputed domain names be transferred to the Complainant. The Complainant submits that this is an appropriate order notwithstanding its status as a mere licensee of the trademarks cited above because it has obtained an express statement of permission from both its licensor and its subsidiary, Leica Microsystems and Geomax AG, indicating their consent to this request. Licensee rights have previously been recognized under the Policy in similar circumstances. See, inter alia, Komatsu Deutschland GmbH v. Ali Osman / ANS,WIPO Case No. D2009-0107; Teva Pharmaceutical USA, Inc. v. US Online Pharmacies,WIPO Case No. D2007-0368; and Telcel, C.A. v. jerm and Jhonattan Ramirez,WIPO Case No. D2002-0309.
See Yahoo! Inc. v. M & A Enterprises,WIPO Case No. D2000-0748 and Hoffmann-La Roche Inc. v. Kathryn Jones,WIPO Case No. D2010-0783.
As the parent organization, the Complainant has the authority to bring the Complaint with regard to this disputed domain name , which GeoMax AG has confirmed in a signed agreement. Furthermore, the Complainant’s subsidiary GeoMax AG has consented to the transfer remedy requested by the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in respect of each disputed domain name to obtain an order that the domain name should be cancelled or transferred:
(1) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(3) that the disputed domain names has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has satisfied this Panel that it has rights in the trademarks DISTO, LEICA and GEOMAX, either as owner, licensee or parent company of the registered owner sufficient to satisfy the requirements of the Policy.
Because each of the disputed domain names are identical or confusingly similar to the registered trademarks on which the Complainant relies, it is not necessary for this Panel to determine whether the Complainant has such rights in respect of LEICA VIVA trademark as it claims.
This Panel accepts the Complainant’s submission that the TLD extension may be ignored when comparing the respective trademarks and disputed domain names. Taking each of the disputed domain names in turn and comparing them with the trademarks, this Panel finds that each of the trademarks are identical or confusing similar with one or other or both of the trademarks in which the Complainant has rights as follows:
- consists in its entirety of a combination of the trademarks LEICA and DISTO;
- is identical to the trademark GEOMAX;
- consists of the dominant element LEICA in combination with the word “viva”;
- consists of the trademarks LEICA and DISTO in combination with the numeral 24;
- , and consist of the trademark LEICA in combination with the numeral and letter “3d”;
- consists in its entirety of a combination of the trademarks LEICA and DISTO;
- and consist of the trademarks LEICA and DISTO in combination with the numeral and letter “3d”;
- consists of the trademarks DISTO and LEICA in combination with the numeral and letter “3d”;
- , and consist of the trademarks LEICA and DISTO in combination with the numeral and letter “3d” with hyphens separating the elements in a non-distinctive fashion;
- and consists of the trademarks LEICA and DISTO in combination with the numeral and letter “3d”;
With regard to the disputed domain name , the word “viva” is not particularly descriptive. The trademark LEICA is the dominant element since the word “viva” is used in Italian and many other languages to express acclaim or support and does not contribute a distinguishing element to the disputed domain name. This Panel finds that it is therefore confusingly similar to the LEICA trademark on which the Complainant relies.
Each of the disputed domain names are therefore composed in their entirety of the trademarks in which the Complainant claims rights and in some instances include the letters and numerals “3d” and “24”.
The additional numerals and letters "3d" or "24" do not act to distinguish any of the disputed domain names from the trademarks with which they are combined and on the evidence before this Panel it appears that they are in fact more likely to add to the confusion because the “3d” and “24” are also used by the Complainant in combination with the trademarks in some of the Respondent’s products.
This Panel finds therefore that the each of the disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights and the Complainant is entitled to succeed in the first element of the paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain names. The Respondent has not been authorized by the Complainant or by its licensor who is the owner of the LEICA trademark or by the Respondent’s subsidiary company to use any of the trademarks on which the Complainant relies in bringing this Complaint. Furthermore, the Respondent has not been authorized by any of the three mentioned companies to register the disputed domain names.
With regard to the disputed domain names that resolve to the Internet shop, on the evidence the Respondent is using the trademarks DISTO, LEICA and GEOMAX without authority to attract customers to its website. This Panel finds that such use cannot be categorized as a bona fide use in connection with a bona fide offering of goods or services. On the evidence on file the Respondent is not known by the domain names and as he is clearly not putting the disputed domain names to a noncommercial use.
Anticipating an argument that the Respondent has rights as a re-seller of the trademarked goods, the Complainant has argued that the Respondent does not meet the criteria for legitimate interest and bona fide use under the OKI Data test: 1) the re-seller must use its site to offer the goods or services at issue, 2) the site must sell only the trademarked goods, and not those of any third party, 3) the site must clearly and accurately disclose the relationship between the owner of the website and the trademark holder, and 4) the Respondent may not attempt to "corner the market" by registering multiple domain names containing the Complainant's trademark. In particular, it is clear that the Respondent is not restricting his commercial activity to the sale of the trademarked goods.
In the event, no Response was filed and the argument was not made by the Respondent. On the evidence this Panel accepts the Complainant’s reasoning on this point.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain names.
It is well established under the Policy that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interest in the disputed domain name, the burden of proof shifts to the respondent to prove the second element of the test in paragraph 4(a) of the Policy.
In the present case, in the absence of a Response or any explanation from the Respondent, this Panel must rely primarily on the evidence adduced in the Complaint and find that the Respondent has no rights or legitimate interests in any of the disputed domain names.
This Panel finds that the Complainant has therefore succeeded in the second element of the test in paragraph 4(a) of the Policy also in respect of each of the disputed domain names. C. Registered and Used in Bad Faith
On the evidence, this Panel finds there has been a substantive use of each of the trademarks LEICA, DISTO and GEOMAX by the Complainant and its subsidiary company prior to the dates on which the disputed domain names were registered.
In the absence of a Response or any other explanation on the file, this Panel finds that is improbable that the Respondent was unaware of the LEICA, DISTO and GEOMAX trademarks when he chose and registered the disputed domain names and in fact on the balance of probabilities each of the disputed domain names were probably chosen because they were identical or confusingly similar to the trademarks owned and used by the Complainant and/or its subsidiary company. The fact that the trademarks were used in combination with the numbers and letters “3d” and “24”, which are used by the Complainant as part of its product names, supports this finding.
This Panel therefore finds that each of the disputed domain names were registered in bad faith in order to take predatory advantage of the reputation and goodwill in the trademarks LEICA, DISTO and GEOMAX respectively.
The Complainant submits that the disputed domain names , , , , , , and resolve to active Internet shops, either displayed at websites corresponding to the domain names which are the subject of this Complaint or via redirection to external websites. The Complainant has however only adduced evidence of such alleged use in respect of the disputed domain names , , , , , and a number of other domain names that are not the subject of this Complaint.
Notwithstanding the absence of evidence of such use of the disputed domain names and as alleged, the fact that these domain names consist entirely of the combination of the two trademarks on which the Complainant relies and the numerals “24” this Panel finds that, in the circumstances of this case, it is most probable that they were registered and are being used in bad faith to take predatory advantage of the Complainant’s goodwill in the subject trademarks.
On the evidence before this Panel, the Respondent is using the disputed domain names that are put to an active use in order to divert Internet traffic intended for the Complainant. This Panel finds therefore that the Respondent is engaged in an intentional attempt to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the trademarks in which the Complainant has rights as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location.
The Complainant submits that the other disputed domain names in dispute are held passively by the Respondent.
It is well established that the passive holding of a domain name that is confusingly similar to a trademark in which a complainant has rights can amount to bad faith use. In the present case it is apparent that the disputed domain names were chosen and registered because they were confusingly similar to the trademarks on which the Complainant relies. It follows therefore that the passive holding is most probably for a bad faith purpose.
The Complainant has therefore satisfied the third element of paragraph 4(a) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, , , , , , , , , , , , , , , and be transferred to the Complainant.
James Bridgeman
Presiding Panelist
Eduardo Machado
Panelist
Angelica Lodigiani
Panelist
Dated: February 17, 2012
Full & Egal Universal Law Academy