The Complainant is SMA Solar Technology AG, Niestetal, Germany, represented by Carroll, Burdick & McDonough LLP, United States of America.
The Respondents are Specialized Micro Architects and Michael A. Platko of Warrenton, Virginia, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2012. On April 30, 2012, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On April 30, 2012, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent Specialized Micro Architects 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 Respondents of the Complaint, and the proceedings commenced on May 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 23, 2012.
The Center appointed Christopher J. Pibus, Kimberley Chen Nobles and Maxim H. Waldbaum as panelists in this matter on June 8, 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 designer and manufacturer of solar power inverters, which are used in residential, commercial and utility scale applications. The Complainant’s headquarters are located in Germany, and it has offices in 17 different countries around the world. The Complainant’s products are sold in over 40 countries, and the Complainant is an active exhibitor at 80 international energy sector trade shows in Europe, Asia and North America. The Complainant’s products are sold under the trademark SMA. The Complainant owns 350 trademark registrations worldwide, of which 152 of the registrations are for the word mark SMA alone. In 2010, the Complainant’s revenues for SMA branded products were USD 2.6 billion.
The Respondent Specialized Micro Architects lists an address in Warrenton, Virginia. A corporation under the name Specialized Micro Architects Corp., was registered with the Virginia State Corporation Commission in the late 1980’s, but the corporation ceased to exist on June 1, 1990, and the corporate records were purged as December 31, 1995. No other business license or registration under this name has been filed in the State of Virginia, or the United States. The Respondent, Michael A. Platko, also resides in Warrenton, Virginia, United States. From the record provided to the Panel, the Respondent Michael A. Platko who was indicated as an administrative contact in a previous WhoIs database appears to have operated Specialized Micro Architects under a sole proprietorship and to have actual or apparent control over the disputed domain name. Accordingly, the Respondents Specialized Micro Architects and Michael A. Platko will be treated as a single entity.
The disputed domain name was created on February 23, 1995, and at the time the Complaint was filed, the disputed domain name reverted to a parking page, with the message: “Your requested host “www.” could not be resolved by DNS”. This parking page did not contain any links to other websites or click-throughs, and it had no content except for the message stated above. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant owns many trademark registrations for the trademark SMA around the world including: United States Trademark Registration Nos. 3747043 and 3728531; Community Trade Mark (CTM) Registration Nos. 7116544, 7116461, 6994578, and 2422859; German Trademark Registration Nos. 30565011 and 39506586, which date back to as early as August 14, 1995. The Respondents have registered the disputed domain name which is identical to the Complainant’s registered trademark, except for the addition of a URL designation, which does not distinguish the disputed domain name from the Complainant’s trademark. Rights or Legitimate Interests
The Respondents are not publicly known by the SMA name, and the Complainant submits that the Respondents do not appear to conduct any kind of business under the SMA or Specialized Micro Architects names. The Respondents have no past or current business relationship with the Complainant, and the Respondents were never licensed or otherwise authorized to use the Complainant’s trademark. Further, the Respondents are not making a bona fide use of the disputed domain name, and have never used the disputed domain name in connection with an active website. Accordingly, the Complainant contends that the Respondents cannot have any rights or legitimate interests in the disputed domain name. Registration and Use in Bad Faith
The Complainant contends that the Respondents have registered and are using the disputed domain name in bad faith for the following reasons: (1) the Complainant’s trademark rights in the mark SMA are well-known, and the Respondents had to be aware of the Complainant’s trademark rights when it renewed the disputed domain name in 2009; (2) the Respondents have never used the disputed domain name in association with an active website; (3) the Respondents have renewed the disputed domain name for a significant period of years, with no apparent intention to use the disputed domain name in association with an active website; and (4) the Respondents have registered and are using the confusingly similar disputed domain name in association with an inactive website which interferes with the Complainant’s business by misleading Internet users into believing the Complainant is no longer in business. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have trademark rights in the mark SMA by virtue of United States Trademark Registration Nos. 3747043 and 3728531; CTM Registration Nos. 7116544, 7116461, 6994578, and 2422859; and German Trademark Registration Nos. 30565011 and 39506586, which date back to as early as August 14, 1995.
The Panel finds that SMA is a well-known mark that has been widely used in many countries, and that the disputed domain name is confusingly similar to the Complainant’s registered trademark SMA. The Panel finds that the addition of the generic Top-Level Domain (gTLD), “.com” does not serve to distinguish the disputed domain name from the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel notes that the Respondents did not file any response to the Complaint and accordingly did not contest any of the facts stated in the Complaint. The Panel is therefore prepared to accept the Complainant’s contention that its SMA trademark and its solar power inverters have developed a reputation worldwide.
The Panel finds no evidence that the Respondents are commonly known by the name SMA, or that the Respondents were licensed or authorized by the Complainant to use the trademark SMA, or have any other form of right or legitimate interest in the SMA mark. The Complainant’s own evidence reveals that there was once a Virginia corporation with the name Specialized Micro Architects Corp., but it ceased to exist more than 20 years ago, and it is unclear whether the Respondents have or had any connection with that business. In the circumstances, the Panel finds that the evidence in the case file cannot lead to the conclusion that the Respondents have used the disputed domain name in association with a bona fide offering of goods and/or services. In light of this evidence, the burden shifts to the Respondents’ to provide an explanation or foundation for their putative rights (see Defever Yachts International LLC v. Yachts West,WIPO Case No. D2009-0624):
“The Panel is therefore satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interest in the disputed domain name. Once a complainant has made this prima facie showing, the Respondent must come forward with evidence that rebuts this presumption (Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270).”
In the absence of any response, the Respondents have failed to satisfy the Panel that there are in fact any rights or legitimate interests in the disputed domain name.
The Complainant has therefore satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant faces a number of challenges in establishing bad faith in the particular circumstances of this case, including the length of time the registration has existed (17 years) and the fact that the disputed domain name itself has not been used in connection with any sort of active website for many years, if ever. The Complainant has expressed its high level of frustration in attempting (and failing) to acquire the disputed domain name through negotiations with the Respondents, beginning in 2005. The Panel understands this frustration but notes that this alone is not particularly probative in connection with the requirements to establish bad faith pursuant to the Policy.
The Complainant argues that the Respondents must have known about its trademark rights in 2009, when the disputed domain name was renewed, because there had been prior contact in 2005 with the Respondent Mr. Pltako about purchasing the disputed domain name. However, in the Panel’s view, the evidence relating to this first contact and the subsequent discussion about transferring the disputed domain name do not clearly support a finding of bad faith registration and use of the disputed domain name.
The Complainant provided a detailed account of its two contacts with the Respondent Mr. Platko. The first conversation occurred in August 2005 (prior to the renewal). At that time, the Complainant’s representative A. Vossing (“AV”) told Mr. Platko that she wanted to discuss the purchase of the disputed domain name , and Mr. Platko (“MP”) responded:
(MP) “How much are you willing to pay?”
(AV) “What would your expectation be in terms of an amount?”
(MP) “100 Million Dollars! Send a letter!”
(AV) “ Well, I am not willing to pay 100 million dollars, but I would like to make you a serious offer. Could we discuss that?”
(MP) “Senda a letter!”
(AV) “To which address? Is Specialized Micro Architects still active at the listed address or to the Auburn Road address…”
(MP) had already hung up the phone.
The Complainant then made several attempts to negotiate a purchase price, through certified offers through the concerned Registrar Network Solutions, LLC, and by way of a letter but no response was ever received from Mr. Platko.
In 2011, an investigator located Mr. Platko through contact with his mother, and had a telephone conversation with him about purchasing the disputed domain name. The investigator recorded that Mr. Platko “stated that he does not understand why people continue calling him in an attempt to buy the [disputed domain name]. He was curt and emphatic that he did not want to talk to the [investigator] and then stated that the [disputed domain name] is not for sale.”
The Complainant characterizes the Respondents’ conduct as showing a bad faith intention to obtain disproportionately high compensation for the disputed domain name from its rightful owner. However, the Panel is not convinced that this is an accurate characterization of the exchanges with Mr. Plakto on this issue. The Panel’s view is that Mr. Platko’s conduct reflects a consistent intention simply to retain the long-term ownership of the disputed domain name, rather than disposing of it for any amount. The evidence shows that Mr. Platko is treating the disputed domain name as “not for sale.” From the Panel’s perspective, on the limited evidentiary record available at this time, it is difficult to conclude that the Respondents have engaged in bad faith either when the disputed domain name was registered in or about February 1995 (that is before the Complainant’s registration of its SMA trademark in or about August 1995) or when it was renewed in 2009, or has otherwise created or maintained an abusive domain registration. The Respondents’ reasons for maintaining the registration - without using it for any website - remain obscure but in the circumstances as disclosed on the evidentiary record, the Panel finds that it is not abusive for the disputed domain name to remain under the Respondents’ control. In the event that circumstances change, or additional evidence is uncovered, the Complainant may be at liberty to seek remedies based on a different record, as it sees fit.
As the record now stands, the Panel finds that the Complainant has failed to satisfy the requirement under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Presiding Panelist
Kimberley Chen Nobles
Panelist
Maxim H. Waldbaum
Panelist
Dated: June 22, 2012
Full & Egal Universal Law Academy