The Complainant is Carsten Beyreuther of Berlin, Germany, represented by Schertz Bergmann Rechtsanwälte, Germany.
The Respondent is Contact Privacy Inc. Customer 0132585751 / Online Rep. Inc of Toronto, Ontario, Canada and Miami, Florida, United States of America, respectively. 2. The Domain Name and Registrar
The disputed 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 January 8, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 8, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 14, 2013 providing the registrant and contact information disclosed by the Registrar as well as informing that the Complaint was administratively deficient, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 16, 2013.
The Center verified that the Complaint together with the amendment to 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 January 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2013.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on February 19, 2013. 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 facts relevant to the findings and Decision in this case are that:
1. the Complainant provides educational and training services by reference to the personal name and trade mark, CARSTEN BEYREUTHER (the “Trade Mark”).
2. the Trade Mark is the subject of German trade mark registration No. 302012009616 for the plain word mark CARSTEN BEYREUTHER filed on January 17, 2012 and registered on April 23, 2012;
3. the disputed domain name was registered on October 26, 2012;
4. at the time the Complaint was filed, the disputed domain name appeared not to be in use;
5. there has been no commercial or other relationship between the parties. 5. Parties’ Contentions A. Complainant
The Complainant asserts trade mark rights and alleges that the disputed domain name is identical to the Trade Mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith.
In particular, the Complainant alleges that “the aim of the Respondent is to defame the Complainant on the internet website .” B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a reply. According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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.
Having considered the Complaint and the available evidence, the Panel finds the following: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy1. The Complainant provides evidence of registration of the Trade Mark and so the Panel accepts that the Complainant has trade mark rights for the purpose of the Policy.
The remaining question is whether the disputed domain name is identical or confusingly similar to the Complainant’s Trade Mark. For the purposes of testing confusing similarity, the generic top-level domain “.com” can be ignored.2 The terms then only differ by the insertion of a hyphen, an additional integer of no distinctive value and one which has no effect on the overall impression of the terms which might avoid confusion.
Arguably the terms are identical but in any event the Panel finds that the disputed domain name is confusingly similar to the Complainant’s Trade Mark.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant needs only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests.
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The publicly available WhoIs database shows that the identity of the disputed domain name registrant is masked by a privacy shield. In the course of these Administrative Proceedings, the Registrar identified the underlying owner of the disputed domain name as Online Rep. Inc. None of this information supports any conclusion that the Respondent might be commonly known by the disputed domain name.
Moreover, there is no evidence that the Respondent has trade mark rights in the disputed domain name, registered or not. As explained in greater detail under section “C” of this Decision, there is no evidence before the Panel that the disputed domain name is either in use or has ever been in use and so, for the purposes of paragraph 4(c) of the Policy, the Panel finds that there is no indication of the use of the disputed domain name in connection with a bona fide offering of goods or services.
Nevertheless, for reasons which follow below, the Panel makes no findings on the question of the Respondent’s rights or legitimate interests in the disputed domain name and finds it unnecessary to reach a final determination on paragraph 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“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 Complaint does not specifically claim to rely on any one of those four scenarios however it does to some degree repeat the language of paragraph 4(b)(iv) of the Policy. In particular, the Complainant submits that:
“By registering the disputed domain names (sic) and posting insults about the Complainant on the websites, the Respondent has intentionally attempted to attract users to its website. … By using the Complainant’s full legal name as the domains (sic) here in dispute, the Respondent unmistakably gives and wants to give the impression that the Respondent’s services are authorized if not endorsed by the Complainant. In so doing, the Respondent creates a likelihood of confusion with the Complainant’s service mark.”
Other places in the Complaint also suggest that the disputed domain name has been put to use in connection with a protest website but there is no evidence of that claim. The Complaint has various annexures but none showing a website corresponding with the disputed domain name or any domain name which might be connected with the Respondent. The compliance review made by the Center as part of these Administrative Proceedings did not show such (or any) use of the disputed domain name and the Panel itself was unable to locate any obvious use of the disputed domain name. There is no other evidence of any relationship or dealings between the parties, acrimonious or otherwise, and so the Panel is left to conclude that either the Complainant’s evidence is poorly lacking in detail, or else the Complainant has rather overstated its apprehension about how the disputed domain name might come to be used in the future.
In terms of the Policy, the Panel finds that the evidence in the present record does not support the Complainant’s claim that the disputed domain name was registered and used in bad faith. The evidence submitted by the Complainant in this case is insufficient to lead the Panel to find, on the balance of probability, that it was more likely than not that the disputed domain name was registered and used in bad faith.
Noting that the purpose of the Policy was to establish an expeditious procedure, and given the fact that the Complainant could have reasonably established the existence and relevance of the evidence submitted at the time of the filing of the complaint, the Panel has decided not to issue a Panel Procedural Order in this case pursuant to paragraph 10 and 12 of the Rules.
While noting that a domain name being used in bad faith is not limited to positive action, the Panel finds in this case that the requirements of passive holding are not met to make a finding of bad faith registration and use. (See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Panel finds that the Complainant has failed absolutely to satisfy the third and final limb of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Debrett G. Lyons
Sole Panelist
Date: March 5, 2013
1 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
2 See Gardline Surveys Ltd v. Domain Finance Ltd. , NAF Claim No. 153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
3 See, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.
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