The Complainant is Stabilus GmbH of Koblenz, Germany, internally represented.
The Respondent is Tsoi Pochung of Hong Kong, China, represented by Emma Nee, China. 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 March 16, 2012. On March 16, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On March 16, 2012, 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 March 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2012. The Response was filed with the Center on March 28, 2012.
The Center appointed Luca Barbero as the sole panelist in this matter on April 19, 2012. 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 trademark POWERISE has been used since 2008 to identify the electric tailgate openers for vehicles produced by the Complainant and has been registered in several countries in the world. Amongst others, the Complainant has provided evidence of ownership of the German Trademark Registration No. 302008032857 for POWERISE (word mark), filed on May 9, 2008, in classes 7, 12 and 20, and of the International Trademark Registration No. 987019 for POWERISE (word mark), registered on October 7, 2008, in classes 7, 12 and 20.
The disputed domain name was registered on January 21, 2002 and, at the time of the drafting of the decision, is not pointed to an active web site. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to its trademark POWERISE and that the Respondent has no rights or legitimate interests in respect of it, since the Respondent is not using the name “Powerise” and is not actively using the disputed domain name in connection with an active web site. The Complainant points out that the Respondent is not commonly known by the disputed domain name and concludes that the Respondent has no rights or legitimate interests in it.
A cease and desist letter was addressed by the Complainant to the Respondent on February 7, 2012, requesting the Respondent to release the disputed domain name and providing the deadline of February 15, 2012 to comply. Further attempts to contact the Respondent were made by the Complainant, by email, fax, and courier in March 2012. A draft of the Complaint was also attached to one of the Complainant’s communications, but again the Complainant did not receive any reply from the Respondent.
With reference to the bad faith requirement, the Complainant states that the Powerise product is sold worldwide and that the trademark POWERISE is well-known, in particular in the automotive industry by car manufacturers who are using electric tailgate openers.
The Complainant also indicates that other companies are using “Powerise” as name and trademark, such as the company Babcock Borsig (owning the trademark POWERISE POWERPLANT), and Powerise Consult, which, according to the Complainant’s verifications, would have been using the mark since 1998/99 and 2001, respectively. The Complainant contends that, therefore, the Respondent must have applied the disputed domain name on January 21, 2002 with knowledge of third parties’ rights in the name. The Complainant also states that the Respondent’s bad faith when it registered the disputed domain name must lead to a right for the transfer of it to the Complainant, even though the Complainant’s trademark registrations are more recent than the Respondent’s registration of the disputed domain name.
The Complainant contends that the Respondent’s failure to make use of the disputed domain name in connection with an active web site is an additional proof that the disputed domain name was registered by the Respondent in bad faith.
As an further circumstance on bad faith, the Complainant points out that the Respondent is selling domain names via Internet and it “was sentenced by the National Arbitration Forum to transfer a domain name which the Respondent did grab illegitimately” (Boehringer Ingelheim Chemicals, Inc. v. Tsoi Pochung, NAF Claim No. 190513, regarding the domain name ). B. Respondent
A Response was submitted by an agent of the Respondent, who stated that the disputed domain name was registered on January 21, 2002 with a Chinese registrar and was used by a Chinese owner for many years. The agent also stated that “for some reason, the website finished”, but the domain owner retained the disputed domain name and transferred it to the current Registrar eNom. The Respondent’s agent underlined that the holder has owned the disputed domain name for ten years and the Complainant registered the trademark POWERISE only in 2008, concluding that … “these is no reason to adjudge the domain name to the Complainant”. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of valid trademark registrations for POWERISE in various countries of the world.
In comparing the Complainant’s trademark POWERISE to the disputed domain name, it should be taken into account the well-established principle that the generic top level domain may be excluded from consideration as being a merely functional component of a domain name. See i.e. Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 “the specific top level of the domain name such as ‘.net’ or ‘.com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo,WIPO Case No. D2000-1770 “the accused domain name is legally identical to Complainant’s trade name CHEVY CHASE BANK”.
The Panel finds that the disputed domain name is therefore identical to the trademark owned by the Complainant. B. Rights or Legitimate Interests
In light of the Panel's finding under the next paragraph, it is unnecessary for the Panel to address this issue. C. Registered and Used in Bad Faith
As mentioned in the paragraphs above, the Complainant has provided evidence of ownership of registered trademark rights on POWERISE dating as of 2008. The Panel thus finds that the Complainant has not established rights on the trademark POWERISE predating the registration of the disputed domain name and has, indeed, expressly stated that the Complainant’s trademark was registered only some years after the registration of the disputed domain name by the Respondent.
The Complainant has anyway stated that the Respondent’s registration of the disputed domain name was made in bad faith since, at that time, other two companies were already using “Powerise” as a name and/or trademark.
According to paragraph 4(b)(iii) of the Policy, a registrant is required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts that a domain name has been registered and is being used in bad faith. As stated, inter alia, in Meeza QSTP-LLC v. Torsten Frank / medisite Systemhaus GmbH,WIPO Case No. D2009-0943, “[f]or many panels, including the members of this Panel, in proceedings under the Policy a complaint cannot succeed unless the complainant can prove, on balance, that the domain name in issue was both registered in bad faith and is being used in bad faith, as provided in paragraph 4(a)(iii) of the Policy. Moreover, for a domain name to have been registered in bad faith, the respondent must have had the complainant in mind at time of registration (or acquisition) of the domain name”.
The Panel concurs with the view expressed in the above-referenced decision and with the consensus view of the other UDRP panelists on this issue, summarized in paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and finds that, since the disputed domain name was registered by the Respondent before the Complainant's relied-upon trademark rights are shown to have been first established (whether on a registered or unregistered basis), the disputed domain name was not registered in bad faith because the registrant could not have contemplated the Complainant's then non-existent right. Along the same lines, see also e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies, WIPO Case No. D2000-1369 and MediaSpan Group, Inc. v. Raghavan Rajagopalan,WIPO Case No. D2005-1282.
Therefore, the Panel finds, that the Complainant has not succeeded in the present proceeding in proving that the disputed domain name was registered in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Luca Barbero
Sole Panelist
Dated: May 3, 2012
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