The Complainant is Roxin Rechtsanwälte LLP of Munich, Germany, represented by Heisse Kursawe Eversheds, Munich, Germany.
The Respondent is Whois Watchdog of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2012. On September 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar 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 September 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2012.
The Center appointed Michael A.R. Bernasconi as the sole panelist in this matter on October 15, 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 a German law firm with offices, according to the information published on the Complainant’s website, in Germany (Munich, Hamburg and Düsseldorf) and Switzerland (Zurich) as well as a representative office in New York, United States.
The Complainant applied for both a national German word trademark and a Community word trademark ROXIN on May 18, 2012. The German trademark (No. 302012030757) was registered on August 7, 2012, and the Community trademark (No. 010893782) on October 16, 2012 (status November 19, 2012). Both trademarks are registered for the Nice classes 35, 42 and 45.
The Complainant, respectively its employees, is the holder of several domain names, such as (holder: Dr. Oliver Sahan, partner of the Complainant), (holder: Mr. Alexander Schemmel, partner of the Complainant) or (holder: Mr. Schemmel).
The Domain Name was created on February 22, 2009 (expiration date: February 22, 2013). 5. Parties’ Contentions A. Complainant
The Complainant argues that the Domain Name is identical to the trademarks ROXIN, which are protected on behalf of the Complainant, as well as to the Complainant’s company name and the domain name .
Further, the Complainant contends that the Respondent cannot rely on any of the circumstances set out in the Policy, paragraph 4(c)(i-iii), in order to demonstrate any right or legitimate interest in respect of the Domain Name. In this context, the Complainant holds that there is no connection between the Respondent’s name and company and the Domain Name. The Domain Name rather creates the likelihood of confusion with the Complainant’s trademarks ROXIN. In addition, the Complainant alleges that it did not grant a license or another permission to the Respondent to use the trademarks ROXIN and that the Respondent is not registered as the holder of a trademark “roxin” and also did not file for such registration. Moreover, the Complainant states that the Domain Name is not connected with a bona fide offering of goods or services, as the website was inaccessible and empty until the end of June 2012 and now hosts a made-up blog with mock activities. The Complainant calls this website a “parking side” with the aim to sell the Domain Name to the trademarks owner. Additionally, the Complainant argues that the Respondent is not commonly known by the Domain Name.
Finally, the Complainant alleges that the Respondent registered and used the Domain Name in bad faith. The Complainant holds that the website which is linked to the Domain Name does not offer any content, but rather a mock blog, and was registered in order to sell the Domain Name subsequently to the Complainant. The Complainant claims that this intention is among others shown by the fact that the Respondent registered the Domain Name shortly after the Complainant’s registration of the domain name (registered on January 23, 2009), which means that the Respondent observes the registration of dotcom-domain names, and that the Respondent has been stockpiling domain names. The Complainant supports its remarks by the assertion that the Respondent was already a party in different WIPO UDRP cases which all lead to a transfer of the domain names to the complaining parties. The Complainant sees the acting in bad faith on the part of the Respondent also in the fact that the latter deliberately stated useless contact information. B. Respondent
The Respondent did not reply to the Complainant’s contentions. Accordingly, and based on paragraph 14(b) of the Rules, the Panel shall draw such inferences from this default of the Respondent as it considers appropriate. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is undisputed that the Complainant is the owner of different registered word trademarks ROXIN. This means that the Domain Name registered by the Respondent is identical to the trademarks of the Complainant within the meaning of paragraph 4(a)(i) of the Policy. Thereby, it is legally irrelevant that the Domain Name contains the generic top-level domain (gTLD) “.com”, since (i) the use of a gTLD is required of domain name registrants, (ii) “.com” is only one of several such gTLDs and (iii) “.com” does not serve to identify a specific enterprise as a source of goods or services (see Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico,WIPO Case No. D2000-0477).
As a consequence, the Panel finds that the Domain Name is identical to the Complainant’s registered trademarks ROXIN pursuant to paragraph 4(a)(i) of the Policy.
But the Complainant does not only hold registered trademarks, it also possesses unregistered trademark rights with regards to the expression “Roxin”:
In order to successfully assert unregistered trademark rights, the Complainant must show, according to paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)
“that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.”
The Complainant states in its Complaint that “[T]he Complainant has been using its trademarks not only since its registration in 2012 but since its foundation in 2004 (…).” The Complainant supports this statement with Annex 7, which consists of an online-article dated September 30, 2004. The said article holds that Dr. Imme Roxin left the law firm “Heussen” together with the two associates Dr. Petra Wittig and Mr. Michael Reinhart in order to found the law firm “Roxin Rechtsanwälte”. The Complainant therefore proves that it is doing business under the name “Roxin Rechtsanwälte” since over eight years.
In addition, the Panel refers to paragraph 1.6 of the WIPO Overview 2.0 which holds:
“While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person’s name as a distinctive identifier of goods or services offered under that name would normally be required (…).”
This means that not only due to the fact that the Complainant acts already since 2004 as a law firm, but also based on the fact that the Complainant uses the last name of one of its founders for its business, the Panel finds that “Roxin” has become a distinctive identifier associated with the Complainant and its legal services. Hence, the Complainant is not only the holder of registered trademarks ROXIN, but also of unregistered trademark rights in the said expression, which is identical or – when considering the entire Complainant’s business name “Roxin Rechtsanwälte LLP” – at least confusingly similar in the sense of paragraph 4(a)(i) of the Policy to the Domain Name registered by the Respondent.
Based on the above, the Panel is satisfied that paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c)(i-iii) of the Policy defines circumstances which, if proved, establish the rights of a respondent and the legitimate interests in respect of a disputed domain name. The non-exhaustive list of such circumstances includes: (1) using the domain name in connection with a bona fide offering of goods or services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue.
In this regard, paragraph 2.1 of the WIPO Overview 2.0 states:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such 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 domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP (…)”.
The Complainant has provided a prima facie case showing that it has not granted the Respondent any right to register or use the ROXIN trademarks and that the Respondent does not have any rights or legitimate interests in the Domain Name. Therefore, in line with prior UDRP decisions, the burden of production shifts to the Respondent to demonstrate its rights or legitimate interests in the Domain Name (see for example Swarovski Aktiengesellschaft v. blue crystal,WIPO Case No. D2012-0630).
In the present procedure, the Respondent did not submit a response. In view of the Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding “on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.” (see Friedman & Feiger, LLP v. Whois Watchdog, NAF Claim No. 1319476; see also Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). Besides, it has to be noted that the lack of Response makes it difficult for the Panel to reasonably make findings differently from those convincingly argued in the Complaint (see Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493).
For the above mentioned reasons, the Panel concludes that paragraph 4(a)(ii) of the Policy is established. C. Registered and Used in Bad Faith
It has to be noted that the Respondent registered the Domain Name already in 2009, i.e. over three years before the Complainant registered its trademarks. This means that the Respondent could not know about the Complainant’s registered trademarks at the moment of its registration of the Domain Name.
However, as stated above under section 6.A, the Complainant does not only hold registered trademarks, but also unregistered trademark rights in the expression “Roxin”. The Panel finds on the current record that the Respondent, on balance of probabilities, must have been aware of such unregistered trademark rights latest at the moment of its registration of the Domain Name, i.e. in February 2009, which indicates its bad faith in registering and using the Domain Name.
Moreover, the Respondent registered the Domain Name shortly after the registration of some of the domain names of the Complainant which contained the word “roxin” and were registered in January 2009. Thus, the Panel is satisfied that the Complainant’s allegation that the fact that the Respondent registered the Domain Name shortly after the Complainant’s registration of, inter alia, also indicates the Respondent’s bad faith in registering and using the Domain Name.
Further, there is no evidence at hand which would indicate that the Respondent registered the Domain Name in good faith and for legitimate purposes. Rather, the use of the Domain Name (see under section 5.A) confirms bad faith in registering and using the Domain Name.
As a result, paragraph 4(a)(iii) of the Policy is satisfied.
In view of the above and for the foregoing reasons, and in consideration of the Complainant’s compliance with the formal requirements for this domain name dispute proceeding, of the Respondent’s default in submitting a response1, of the factual evidence and legal contentions that were submitted, of the confirmation of the presence of each of the elements contemplated in paragraph 4(a)(i), (ii) and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by the paragraphs 14(a) and (b) and 15(a) of the Rules, it is found:
(1) that the Domain Name is confusingly similar to the Complainant’s registered trademarks and unregistered trademark rights;
(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) that the Domain Name has been registered and is being used in bad faith by the Respondent. 7. Decision
For all the foregoing reasons, in accordance with the paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name shall be transferred to the Complainant.
Michael A.R. Bernasconi
Sole Panelist
Date: November 19, 2012
1 The Panel notes that notification of these proceedings appears to have been successful via email, however, it would appear that written notice to the Respondent, by courier to the address provided by the Respondent to the Registrar’s WhoIs database, was not successful. In this regard, the Panel notes that it is incumbent to a domain name holder to submit relevant, up-to-date contact information to a registrar for Policy purposes.
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