The Complainant is Marco Aurich of Dresden, Germany, represented by Horak Attorneys-At-Law, Germany.
The Respondent is Johannes Kuehrer, World4You Webservice of Neuhofen, Austria, appearing pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with PSI-USA, Inc. dba Domain Robot. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2012. On June 5, 2012, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot. a request for registrar verification in connection with the disputed domain name. On June 11, 2012, PSI-USA, Inc. dba Domain Robot transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint and an amended Complaint on June 14, 2012.
The Center verified that the Complaint together with the amendment to the Complaint and 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 June 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2012. An informal response was filed with the Center on June 15, 2012.
The Center appointed Andrew D.S. Lothian as the sole panelist in this matter on July 11, 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 Complainant is an individual based in Dresden, Germany. The Complainant is the owner of European Community trademark no. 10092666 for the figurative mark DOMAINHOSTER, filed on July 1, 2011 and registered on November 10, 2011 in respect of international classes 38, 42 and 45. The said trademark consists of the word “DOMAIN” on the first line and the word “HOSTER” on the second line. The two letter “o“s in the words “DOMAIN” and “HOSTER” are linked by a neon-green ring.
The disputed domain name was created on September 21, 2001. 5. Parties’ Contentions A. Complainant
The Complainant provides full details of the Nice use classifications in respect of its DOMAINHOSTER trademark and submits that the disputed domain name is identical to the trademark in which the Complainant has rights.
The Complainant submits that the Respondent does not use the disputed domain name and that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name. The Complainant asserts that the Respondent (as an individual, business, or other organization) has not been known by the disputed domain name. The Complainant states that it considers the Respondent as having no rights in respect of the disputed domain name because the Respondent has no corresponding German or European Community registered trademark.
The Complainant states that it considers the disputed domain name as having been registered and being used in bad faith because there is no content and that the disputed domain name is parked. The Complainant notes that it is unable to register the disputed domain name because of this notwithstanding the Complainant’s registration of its DOMAINHOSTER trademark. The Complainant notes that it contacted the Respondent, however, the Respondent did not reply. B. Respondent
In its informal emailed response of June 15, 2012, the Respondent states that it has been using the disputed domain name since 2001 for services such as WhoIs and to host many email users. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has 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 Complainant asserts that the disputed domain name is identical to the Complainant’s DOMAINHOSTER trademark. This mark contains several figurative elements besides the words DOMAINHOSTER as outlined in the Factual Background section above. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) deals with the question of figurative trademarks at paragraph 1.11 under the heading “Are disclaimed or design elements of a trademark considered in assessing identity or confusing similarity?”, where it is stated:
“Textual content which has been expressly disclaimed in a complainant's relevant trademark registration is generally disregarded by panels when assessing a domain name's identity or confusing similarity under the first element of the UDRP. Also, as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. However, design elements in a trademark may be relevant to the decision in certain circumstances - such as where, for example, they form an especially prominent or distinctive part of the trademark overall. Some panels have found it to be a matter of impression in the circumstances of each case. Where the entire textual component of a complainant's relevant trademark has been disclaimed, or the only protectable component of such mark is comprised of design elements which generally cannot be represented in the alpha-numeric string of a domain name, then (absent a showing of acquired distinctiveness through use of the relevant mark) the complainant may lack any relevant rights under the UDRP on the basis of such mark, rendering moot any assessment of the disputed domain name's identity or confusing similarity with it.”
The Panel respectfully adopts the consensus view. In the present case, there is no disclaimer of any textual content in the Complainant’s trademark registration. The textual elements DOMAIN and HOSTER are in the Panel’s assessment clearly and unambiguously represented in uppercase letters in a stylized typeface, and act as the dominant elements of the figurative representation. The non-textual elements of the trademark, being an oval border, a dividing line and the neon green linking ring do not, in the Panel’s opinion, detract in any way from the prominence of the word elements of the mark. As these non-textual elements are incapable of representation in a domain name, they may be disregarded for the purpose of assessing identity or confusing similarity. As such, and also disregarding the white space in the mark and the top level domain “.info” in the disputed domain name as outlined above, the Panel finds that the Complainant’s trademark is identical to the disputed domain name and thus that the first element under the Policy has been established. B. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy, including that the disputed domain name has been registered and is being used in bad faith, will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding under the next head, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
The Complainant has provided extremely scant submissions on this topic which do not extend beyond the brief contentions outlined in section 5A above. The essence of the Complainant’s case is that the disputed domain name must have been registered in bad faith because it displays no content, is parked, and thus that the Complainant is unable to register it. Additionally, the Complainant notes that the Respondent did not reply to its communication. For its part, the Respondent notes in its informal response that it uses the disputed domain name in connection with an email service for various customers. The Respondent also notes that the creation date of the disputed domain name pre-dates the registration date of the Complainant’s registered trademark by just over a decade.
The question of a domain name pre-dating a trademark relied upon by a complainant has been addressed by the WIPO Overview 2.0 at paragraph 3.1 which states:
“Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?
Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [...], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.
[...]
However:> In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.)”
The Panel respectfully adopts the consensus view. In the present case, there is no evidence before the Panel that the Complainant had any rights in a name corresponding to the disputed domain name as at the date of the latter’s creation. Furthermore, there is no evidence before the Panel of any circumstances corresponding to the qualification to the consensus view noted above, such as the existence of any potential Complainant rights or media interest in the Complainant as at the date when the disputed domain name was registered. As such, the Respondent could not have registered the disputed domain name with the Complainant, or its rights, in mind.
The Panel finds that there are no circumstances in the present case that are indicative of registration and use in bad faith on the part of the Respondent and, on the contrary, that the Respondent’s contentions as to the purpose for which the disputed domain name was registered are entirely consistent with good faith on the Respondent’s part. In all of these circumstances, the Panel finds that the Complainant has failed to prove on the balance of probabilities that the disputed domain name has been registered and is being used in bad faith and thus that the third element under the Policy has not been established. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Sole Panelist
Date: July 24, 2012
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