The Complainant is Konstantin Graf Lambsdorff of Berlin, Germany, self-represented.
The Respondent is Eighty Business Names, Domain Administrator of Grand Cayman, Cayman Islands, Overseas. Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2012. On October 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2012, 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 November 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2012.
The Center appointed Mark Partridge as the sole panelist in this matter on November 30, 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
Konstantin Graf Lambsdorff (“Lambsdorff” or “Complainant”), an individual resident of Berlin, Germany, is an attorney practicing law since 1992. Currently, he is practicing out of his Berlin-based law firm under the name Lambsdorff Rechtsanwalte Partnerschaftsgesellschaft which was registered on September 24, 2012. Further, the “Lambsdorff” surname is a commonly known German noble lineage originating from the 15th century.
The Complainant owns a German trademark registration No. 30 2012 043 704 for the word mark LAMBSDORFF used in connection with International Class 45 legal services, which was registered on September 6, 2012.
The domain name at issue in this proceeding was registered on June 24, 2004.
While the domain name was used to redirect/reroute internet users to third party websites offering commercial goods and services unrelated to the Respondent at the time of the filing of the Complaint, it currently resolves to an inactive website. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical with the word mark registered by the Complainant, the name of the Complainant’s family’s noble lineage, and his surname which is well known and distinguished in the legal market in Germany as well as confusingly similar to the name of Complainant’s law firm. Complainant further alleges that Respondent does not have any rights or legitimate interest in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith by Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules states that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark 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.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith. A. Effect of the Default
The consensus view is that a respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contac. WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; RX America, LLC v. Matthew Smith,WIPO Case No. D2005-0540. The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements. B. Identical or Confusingly Similar
There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.
The second element is straightforward since, in common with the facts of Louis de Bernieres v Old Barn Studios Limited,WIPO Case No. D2001-0122 (March 26, 2000), the alleged mark is the Complainant’s name with the addition of the generic ".com" suffix. On the same basis, the Panel finds that for the purposes of paragraph 4(a)(i) of the Policy, the domain name is identical to the Complainant’s surname.
The remaining element of paragraph 4(a)(i) that the Complainant must prove, is whether LAMBSDORFF is a "trademark or service mark in which the Complainant has rights."
The Complainant relies upon a German trademark registration for LAMSBSDORFF (No. 30 2012 043 704) used in connection with International Class 45 legal services. The priority date for this mark is September 6, 2012, which post-dates the date of the registration of the Domain Name.
Complainant also relies upon common law rights in the name "Lambsdorff". Under the Policy, common law rights suffice for the purposes of establishing the relevant trademark rights of the Complainant pursuant to paragraph 4(a)(i) of the Policy. See, e.g. Louis de Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122; Sibyl Avery Jackson v. Jan Teluch,WIPO Case No. D2002-1180; and Joe Cole v. Dave Skipper,WIPO Case No. D2003-0843. However, there is insufficient evidence in the record to determine when Complainant’s common law rights were established and whether they pre-date the domain name.
However, Paragraph 4.a.(i) does not require that the common law rights pre-date, or the trademark be registered prior to, the domain name; though it may be relevant to the assessment of bad faith pursuant to Paragraph 4.a.(iii), which is considered below.
Complainant has therefore satisfied the first requirement of Paragraph 4.a.(i) by demonstrating it has rights in the LAMBSDORFF service mark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights and that Complainant has met the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
In the light of the Panel's finding regarding “Registration and Use in Bad Faith” (subsection D. below), it is not necessary for the Panel to cast a decision in this regard. D. Registered and Used in Bad Faith
The final issue is that of bad faith registration and use by the Respondent. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.
Even in the absence of a Response, the Complainant has not made out its case. Although there is some evidence of bad faith use and a pattern of bad faith conduct, there is no evidence of bad faith registration. The domain name was registered in June 2004, and while the Complainant practiced law for many years, the Complainant only began its own business under the trade name LAMBSDORFF in September 2012. Similarly, the Complainant did not register its mark until September 2012, eight years after the domain name registration. While the Lambsdorff surname is alleged to be “high profile,” the likelihood of confusion with a noble lineage in the abstract is insufficient basis to render the Registrant’s registration in bad faith with respect to the Complainant. The lack of evidence presented to show the creation of the alleged common law rights prior to registration of the domain name is a significant weakness in Complainant’s claim.
As a result it is difficult to conceive of how the Respondent could have known of the Complainant at the time of domain name registration, and therefore to have registered the domain name in bad faith. The panel concludes that the Respondent did not register the domain name in bad faith. Therefore, the Complainant has not satisfied paragraph 4.a.(iii) of the UDRP. 7. Decision
For the foregoing reasons, the Complaint is denied.
Mark Partridge
Sole Panelist
Date: December 21, 2012
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