The Complainant is Deutsche Thomson OHG of Hanover, France represented by Bernard Soyer Conseil, France.
The Respondents are Whois Privacy Service Pty Ltd of Fortitude Valley, Queensland, Australia and Domain Support of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2013. On October 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 4, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information which differed from the named the Respondent and contact information in the Complaint. The Center sent an email to the Complainant on October 7, 2013 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 10, 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”). The Registrar confirmed that the Policy applied to the registration agreement. The Panel investigated this further and finds that, although the Domain Name was registered in 1998 prior to the adoption of the UDRP, the Respondent agreed to be bound by the registrar’s current registration agreement (which requires that the registrant comply with the UDRP and its arbitration provisions) when it executed the Whois Privacy Services Agreement in April 2013. See 1.2 and 1.3 of Annex 2.
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on October 11, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 31, 2013. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 1, 2013.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on November 11, 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 paragraph 7 of the Rules. 4. Factual Background
The trademark NORDMENDE was first used in Germany in the late 1940s and became well known in the 1950s for manufacturing radios, televisions, tape recorders and record players. In 1977-78, the French company Thomson Brandt acquired the company and its NORMENDE brand. The Complainant attached to its Complaint and quoted (and thereby adopted and ratified) a Wikipedia article about the company’s history, which observed: “In the 1980s, the factories in Bremen were closed, Nordmende became purely a Thomson trademark. In the 1990s, the name Nordmende was used with decreasing frequency, and it eventually disappeared in favor of the Thomson name. In 2005, Videocon Group acquired all cathode ray tube activities from Thomson. This led to the creation of VDC Technologies, which manufactures TV sets using the Nordmende brand under license from Thomson. The Nordmende brand name was relaunched in Ireland in 2008 by KAL Group.” Annex 3. 5. Parties’ Contentions A. the Complainant
The Complainant alleges that, as evidenced by numerous trademark registrations, it has rights in marks that are confusingly similar to the Domain Name, that the Respondents have no rights or legitimate interests in the Domain Name and that the Domain Name is being used in bad faith. Specifically, the underlying Respondent uses the Domain Name “for a parking page with links to goods sold by the Complainant and its Licensees.” The Complainant also alleges that the underlying Respondent populates the Domain Name with links to electronic products similar to the products it offers under the mark. The Complainant also alleges that the Respondent has listed the Domain Name with a broker and invited offers to buy the domain name. Moreover, when the Complainant sent the underlying Respondent a cease and desist letter at the Respondent’s email on March 15, 2013, the Respondent did not respond to the letter, but it did enlist a privacy protection service to obscure its identity. B. The Respondents
The Respondents did not respond to the Complaint. 6. Discussion and Findings
Assuming that the Complainant satisfies the first two factors of the Policy, paragraphs 4(a)(1) and 4(a)(ii), it has nonetheless failed to prove by a preponderance of the evidence that the Respondents registered the Domain Name in bad faith. All of the Complainant’s bad faith allegations relate to use only. Complaint VI.C, p. 9. The Complainant has not alleged bad faith registration or attempted to support an inference of bad faith registration by pointing to any evidence of record. Moreover, the factual evidence it does submit undermines the inference of bad faith registration. Specifically, the Wikipedia article that the Complainant relies upon observes that “In the 1990s, the name Nordeman was used with decreasing frequency, and it eventually disappeared in favor of the Thomson name. In 2005 Videocon Group acquired all cathode ray tube activities from Thomson. The Nordmende brand was relaunched in Ireland in 2008.” Annex 3. This evidence prevents the Panel from finding that the Respondent likely knew of the Complainant’s rights at the time of the Domain Name was registered in 1998. On the contrary, the evidence suggests that the Domain Name was registered during a prolonged hiatus in the use of the asserted mark. Consequently, this case may be considered to raise issues analogous to those where trademark rights arise after a domain name is registered. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.1.
This is not to say that the Complainant abandoned its trademark rights, but it is not enough under the Policy’s third factor to merely prove that the Complainant has trademark rights. The Complainant must prove bad faith registration, which, at a minimum requires evidence sufficient to support an inference that the Respondent more likely than not was aware of the Complainant’s rights. WIPO Overview 2.0, paragraph 3.4. The evidence here does not support that inference. 7. Decision
For the foregoing reasons, the Complaint is denied.
Lawrence K. Nodine
Sole Panelist
Date: November 27, 2013
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