The Complainant is Brennercom s.p.a. of Bolzano, Italy, represented by Studio Legale Frei Tarfusser Lutterotti, Italy.
The Respondent is Brennercom Limited of Wilmington, Delaware, United States of America (“USA”), represented by BPM Legal, Germany. 2. The Domain Name and Registrar
The disputed domain name (“the Disputed Domain Name”) is registered with Brennercom Limited (formally known as webhosting24, Inc.) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2014. On July 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 20, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.
From July 29, 2014 to August 14, 2014, the proceeding was suspended at the Complainant’s request. The Case was reinstituted on August 15, 2014. The Complainant filed an amendment to the Complaint on September 8, 2014.
The Center verified that the Complaint with the amendment 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 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2014. The Response was filed with the Center on September 30, 2014.
The Center appointed Gabriela Kennedy, Nicoletta Colombo and Brigitte Joppich as panelists in this matter on October 24, 2014. The Panel finds that it was properly constituted. Each member of 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.
Following the appointment of the Panel, the Center received a Supplemental Filing from the Complainant and the Respondent on October 28, 2014 and October 29, 2014, respectively, which were subsequently forwarded to the Panel. The Panel has decided to accept the Complainant’s Supplemental Filing as the Respondent raised certain arguments in its Response that the Complainant may not reasonably have been aware of prior to the filing of the Complaint. With regard to the Respondent’s Supplemental Filing, the Panel has decided not to accept it, as it appears to be redundant of the Response, and would have no effect on the Panel’s findings. 4. Factual Background
The Complainant was incorporated in November 1998 and is in the information and communications technology industry. The Complainant holds Community Trade Mark (“CTM”) and Italian trade mark registrations for the BRENNERCOM mark.
The Respondent is a company incorporated on March 5, 2012 in the USA. It was formerly known as Webhosting24, Inc. but changed its name to Brennercom Limited in May 2014. The Respondent provides hosting and domain name registration services, and is also an accredited ICANN registrar. The Respondent holds a United Kingdom of Great Britain and Northern Ireland (“UK”) trade mark registration for the BRENNERCOM mark. The Respondent belongs to a group of companies that are partly owned by a Mr. Thomas Moroder. These companies include Y&A Limited (a company incorporated in the UK that was dissolved on November 2, 2010), Incubatec s.r.l. (a company incorporated in Italy) and Webhosting24 GmbH (a company incorporated in Germany).
The Disputed Domain Name was acquired by Mr. Thomas Moroder in the name of Brennercom Limited in January 2004, with its address listed as the former office address of Y&A Limited. 5. Parties’ Contentions A. Complainant
The Complainant’s submissions can be summarized as follows:
(a) The Disputed Domain Name is identical to the Complainant’s BRENNERCOM word mark that was first registered by the Complainant in Italy on December 10, 2004, and its BRENNERCOM device mark that was first registered by the Complainant in Italy on December 21, 2006.
(b) The Complainant also has unregistered trade mark rights in BRENNERCOM predating its trade mark registration, due to its use of the mark since 1999.
(c) The Complainant’s BRENNERCOM mark is distinctive, and has been used to advertise the Complainant’s telecommunication services through printed media since 1999.
(d) The Respondent’s CEO, Mr. Thomas Moroder, is a resident of the Bolzano province of Italy, which is where the Complainant’s headquarters are located. Mr. Thomas Moroder also owns or operates Incubatec s.r.l., which offers IT services, server storage space and cloud services in Italy in direct competition with the Complainant.
(e) The Respondent only acquired and adopted the name “Brennercom Limited” after the Complainant issued a letter dated May 19, 2014 to Mr. Thomas Moroder demanding that he transfer the Disputed Domain Name. The Respondent changed its name from Webhosting24, Inc. to Brennercom Limited on May 23, 2014 and updated the registrant information of the Disputed Domain Name to list the address as the Delaware, USA registered office address of the Respondent. Prior to May 2014, the Disputed Domain Name was held under the name of “Brennercom Limited”, with an office address specified to be in London, the UK (which was the same address as that of Mr. Thomas Moroder’s company Y&A Limited). The company, “Brennercom Limited”, did not exist until May 23, 2014. As such, the Complainant submits that the Disputed Domain Name could not have possibly been acquired by the Respondent until that date and the change in the Respondent’s name to “Brennercom Limited” was a mere attempt by the Respondent to try and legitimize its registration of the Disputed Domain Name.
(f) The Disputed Domain Name has not been actively used, and has merely displayed a fake offer of free-mail and webmail services that cannot be actively used by a potential customer. Only in July 2014, after the Respondent became aware of the dispute, did the Respondent start advertising the buying and selling of domain names on the website to which the Disputed Domain Names resolves. Any new operations of the Respondent in respect of the Disputed Domain Name would divert customers away from the Complainant.
(g) The Complainant originally submitted that the correct date of registration of the Disputed Domain Name to be considered is May 23, 2014, when the Respondent changed its name to “Brennercom Limited”. Alternatively, even if the correct date of registration of the Disputed Domain Name to be taken into account is 2004, Mr. Thomas Moroder and therefore the Respondent must have been aware of the Complainant at the time of registration. Mr. Thomas Moroder is a resident of the Bolzano province of Italy, where the Complainant is headquartered, and his other company, Incubatec s.r.l., is a direct competitor of the Complainant in Italy and is registered in the Bolzano province of Italy.
(h) Mr. Thomas Moroder, the Respondent and the related group of companies have engaged in a pattern of cyber-squatting. For example, in 2004, Y&A Limited had registered the domain names and , and Webhosting24 GmbH had registered the domain name .
(i) The Respondent primarily registered the Disputed Domain Name for the purposes of selling it for valuable consideration. The Respondent previously tried to sell the Disputed Domain Name via the Sedo marketplace for the minimum selling price of EUR 5,000. The Complainant also offered to purchase the Disputed Domain Name from the Respondent in 2012 for EUR 500. The Complainant submits that the offered amounts were deemed insufficient by the Respondent, and the Respondent therefore used the Disputed Domain Name in bad faith to prevent the Complainant from reflecting its BRENNERCOM trade mark in a corresponding domain name, and engaged in typosquatting behavior.
(j) The Respondent’s BRENNERCOM trade mark that was registered on October 15, 2004, had expired on April 28, 2014, and was renewed on July 16, 2014. This trade mark was originally registered to Y&A Limited (which was dissolved on November 2, 2010) and later assigned to the Respondent and recorded with the UK Intellectual Property Office on July 15, 2014. The Complainant questions how the assignment of the trade mark could have legitimately occurred in 2014 since Y&A Limited was dissolved in November 2, 2010. The fact that the renewal and recordal of assignment occurred only after the Complaint was filed shows that this was done by the Respondent merely in an attempt to defend its registration of the Disputed Domain Name.
(k) The Respondent’s registration as an ICANN registrar is unrelated to the Disputed Domain Name. B. Respondent
The Respondent’s contentions can be summarized as follows:
(a) The Disputed Domain Name was acquired by Mr. Thomas Moroder in 2004, and has always been owned and controlled by Mr. Thomas Moroder through one of his companies, including the Respondent. Previous UDRP cases have established that the transfer of a domain name between commonly-controlled persons does not itself act to extinguish rights and legitimate interests that have accrued in that domain name (Schwiezerische Bundesbahnen SBB v. Gerrie Villon,WIPO Case No. D2009-1426).
(b) The Respondent accepts that the Disputed Domain Name is identical to the Complainant’s BRENNERCOM mark. However, the Disputed Domain Name also corresponds to the Respondent’s BRENNERCOM mark which was registered in the UK on October 15, 2004. The Respondent built a legitimate business around the BRENNERCOM mark based on the Disputed Domain Name and further domain names registered by its group of companies, including , and .
(c) The Respondent chose to register the Disputed Domain Name due to its incorporation of the geographic term “Brenner”, which refers to the Brenner Pass, one of the major passes through the Alps linking Italy and Austria. The BRENNERCOM mark has a very low degree of distinctiveness, and therefore the registration of the Disputed Domain Name does not itself provide evidence of bad faith registration. In addition to its geographic reference, the term “Brenner” also corresponds to a common surname, a municipality in South Tyrol, a community in the USA, a railway company, a regional council in Israel, a tumor and is the German word for “burner” or “writer”. The term “com” is a commonly used abbreviation of “communication”.
(d) Both Mr. Thomas Moroder and the Complainant applied for the registration of the domain name during the relevant sunrise period in 2005. The Complainant’s application was unsuccessful as Mr. Thomas Moroder had filed an earlier application, which was accepted. Only an owner of earlier rights is eligible to apply for a domain name during a sunrise period. The Complainant was therefore aware of Mr. Thomas Moroder and his prior rights in the BRENNERCOM mark.
(e) The Disputed Domain Name has been continuously used in connection with vanity email services. Various UDRP cases have previously found that such use amounts to a bona fide offering of goods or services. These email services have never competed with the Complainant’s services, nor has the Respondent ever claimed to be the Complainant. The Disputed Domain Name has also not been used to link to any of the Complainant’s competitors.
(f) The Respondent has not tried to sell the Disputed Domain Name to the Complainant, nor was the Disputed Domain Name acquired for the primary purpose of selling it to the Complainant. The Respondent has twice refused the Complainant’s offers to purchase the Disputed Domain Name. The fact that the Disputed Domain Name was temporarily listed on the Sedo marketplace for sale does not provide any evidence to the contrary, as such was done only temporarily after Y&A Limited was dissolved, as it was unclear at the time how to proceed with the relevant business.
(g) The Respondent has invested a significant amount of money in its business, and became an accredited ICANN registrar. The Respondent submits that cybersquatters do not generally invest such time and money simply to bolster a domain name registration.
(h) The dispute between the parties goes beyond the scope of the Policy, and should be determined via court proceedings.
(i) The Complainant waited more than 10 years before lodging a complaint against the Respondent, which adds successive years of legitimacy to the Respondent's use of the Disputed Domain Name. The Respondent further seeks to rely on the defence of laches.
(j) The Respondent requests that a decision of Reverse Domain Name Hijacking be entered into against the Complainant. 6. Effect of Court Proceedings
The Complainant initiated court proceedings on June 27, 2014, in the regional courts of Bolzano, Italy, against the Respondent, its other related entities and Mr. Thomas Moroder on the basis of trade mark infringement and unfair competition due to abusive registrations and use of the Disputed Domain Name, , , and (“Court Proceedings”). The Court Proceedings were commenced prior to the filing of the Complaint.
Paragraph 18(a) of the Rules provides that “in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
In this case, the Respondent had not made any express request for the Panel to suspend or terminate these administrative proceedings. As such, the Panel has decided that it is appropriate to proceed to a decision. Any decision issued by the Panel will not prevent the parties from continuing with the Court Proceedings. 7. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(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 by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the BRENNERCOM trade mark on the basis of its trade mark registration in Italy.
The Panel notes that the Respondent also has registered trade mark rights in BRENNERCOM in the UK. However, the Panel does not believe that the Respondent’s trade mark registration is relevant for the purposes of determining whether or not the Disputed Domain Name is confusingly similar to the Complainant’s trade mark. As stated in Funskool (India) Ltd. v. Corporation,WIPO Case No. D2000-0796, “whether a disputed domain name is identical or confusingly similar to a trademark or service mark is a question of fact which ought to be answered without reference to whether the trademark or service mark is operative in the country of residence or incorporation of the registrant of the domain name.” The Panel believes that this same reasoning applies in respect of any registered trade mark held by the Respondent, i.e. it is a question of fact whether or not the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights, irrespective of whether or not the Disputed Domain Name also corresponds to a registered trade mark right of the Respondent and irrespective of where each party holds such registered trade mark rights. The Respondent’s registered trade mark rights may, however, be relevant when considering the question of whether or not the Respondent has any rights or legitimate interests in the Disputed Domain Name.
In this case, the Disputed Domain Name incorporates the Complainant’s registered BRENNERCOM trade mark in its entirety, and the Respondent expressly accepts that the Disputed Domain Name is identical to the Complainant’s BRENNERCOM mark. It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic top-level domain extension, in this case “.com”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762).
The Panel accordingly finds that the Disputed Domain Name is identical to the Complainant’s registered mark, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Respondent is not a licensee of the Complainant nor is it authorised by the Complainant to use the Complainant’s BRENNERCOM mark. The Panel also notes that the Respondent does not claim to be and has provided no evidence that it is commonly known by the Disputed Domain Name. Accordingly, the Panel is of the view that a prima facie case has been established and the Respondent has the burden of proving that it has rights or legitimate interests to the Disputed Domain Name.
The Complainant alleges that the Disputed Domain Name has been inactive ever since it was registered and acquired by Mr. Thomas Moroder and/or the Respondent, and it was only after the Complaint was filed that the website began advertising mail and webmail services.
However, the Respondent contends that it and its predecessor have been using the Disputed Domain Name in connection with a bona fide offering of vanity email services. The Respondent has provided copies of invoices issued by Y&A Limited in 2005 to third parties (the identities of such third parties have been redacted). Such invoices expressly refer to the Disputed Domain Name and the provision of certain services, such as “domain+mail” or “additional traffic February 2005”. On balance for this Panel, it is reasonable to infer that these invoices were in relation to the provision of vanity email services or other related services with regard to the Disputed Domain Name, as alleged by the Respondent. Whilst these invoices were issued by Y&A Limited, it has been accepted by both parties that Y&A Limited and the Respondent are part of the same group of companies and under the common control of Mr. Thomas Moroder.
The Panel accepts that use of a domain name in relation to vanity email services may amount to a legitimate use of the domain name in certain circumstances (see Board of Trustees of the University of Arkansas v. FanM, LLC,WIPO Case No. D2009-1139; Markel Corporation v. T Co,WIPO Case No. D2007-1750; Rusconi Editore S.p.A. v. Net I Inc. Formerly known as M Inc.,WIPO Case No. D2001-0886). In this case, there is no evidence that the Respondent’s email service ever competed with the Complainant or its business, and there is no evidence showing that the Respondent conducted its business by claiming to be associated with the Complainant.
Second, based on the Respondent’s submissions, which were not denied by the Complainant, the Complaint was filed 10 years after the Disputed Domain Name first came to the attention of the Complainant. Although it is well established that the doctrine of laches as such does not apply under the Policy (see Yell Limited v. Ultimate Search,WIPO Case No. D2005-0091; The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447; TMK A/S v. woosan, James Motors,WIPO Case No. D2012-2073), an inordinate delay in bringing proceedings may still influence the assessment of the evidence provided, as “even if laches does not apply, delay may reflect the strength, or lack thereof, of a complainant’s case” (see Board of Trustees of the University of Arkansas v. FanM, LLC, supra). If the Complainant had genuinely believed that the Disputed Domain Name infringed its rights, it is questionable why the Complainant chose to bring proceedings 10 years after it became aware of the Disputed Domain Name and 10 years after it first tried to purchase it. No explanation has been provided by the Complainant as to the reason for this delay.
Third, the Respondent holds a trademark registration in the UK for BRENNERCOM. The Respondent’s BRENNERCOM mark was originally registered in the UK in October 2004, which is in fact 2 months before the Complainant’s first registration of its BRENNERCOM mark in Italy. The Complainant has produced no evidence that it has ever objected to or sought to cancel the Respondent’s trademark registration. Further, as alleged by the Respondent, the BRENNERCOM mark involves the geographic and generic words “Brenner” and “com” – “Brenner” being a geographic indicator and “com” being accepted by the Panel to be a common reference to the word “communications”. Apart from an article published in a local newspaper, the Complainant has failed to provide any evidence that its BRENNERCOM mark was well known on or before the time that the Disputed Domain Name was registered, such that it had acquired distinctiveness outside of Italy. In addition, although the owner of the Respondent, Mr. Thomas Moroder, does seem to have originated from Bolzano, Italy, it appears on the evidence that he has since been living in Germany for many years, and the business of the Respondent was operated either from the USA, the UK or Germany – not Italy. In light of the above, there is insufficient evidence to conclude, on the balance of probabilities, that the Respondent’s use of the Disputed Domain Name was an attempt to take advantage of the Complainant’s reputation in the BRENNERCOM mark.
The Panel also places little weight on the Complainant’s contention that the registration of multiple domain names incorporating the BRENNERCOM mark by the Respondent and its related companies is evidence that the Respondent is engaged in a pattern of cybersquatting. As stated above, the Respondent has registered trade mark rights in the BRENNERCOM mark in the UK, and “Brenner” and “com” are geographic and generic terms. The Panel is of the opinion that it is reasonable to expect a person who holds a registered trade mark to register multiple different domain names with different country code or generic top level domain extensions, and this does not, per se, amount to evidence of cybersquatting.
Lastly, as was held in The Bruce Trail Association v. Andrew Camp and Bruce Trail Enterprises,WIPO Case No. D2001-1021: “the scope of Complainant’s trademark rights is insufficient to bar Respondent from acquiring legitimate rights in the same term when used for a different purpose. This is particularly so when those rights are confined to Canada and the center of the Respondents’ activities is elsewhere.” In this case the Complainant’s business and trade mark rights cannot act to prevent the Respondent from carrying on a legitimate business simultaneously in another country, particularly since: (i) the Complainant’s activities appear to be largely isolated to Italy; (ii) the Respondent is based in the USA and appears to have been operating its business in the USA, the UK and Germany; (iii) there is no substantive evidence that the Respondent is targeting the Complainant or seeking to trade off the Complainant’s reputation through use of the Disputed Domain Name; and (iv) the Respondent has registered trade mark rights in the BRENNERCOM mark in the UK, which predates the Complainant’s first registration of the BRENNERCOM mark in Italy. This appears to be a case where the Complainant and Respondent are both legitimately operating businesses simultaneously, in different countries and in different spheres.
For the foregoing reasons, the Panel is of the opinion that the Respondent’s use of the Disputed Domain Name constitutes legitimate use under the Policy. The Panel accordingly finds that the Respondent has shown that he has rights or legitimate interests in the Disputed Domain Names and that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy.
The Panel believes it is prudent to note that this is a complex case involving different and simultaneous rights of the parties who are operating in different markets. It is well established that the Policy is intended to handle clear cut cases of cybersquatting. The matters to be determined under the Policy by the Panel are relatively simple and straightforward. The subject matter of these proceedings is also part of a wider dispute that is the subject of the Court Proceedings. C. Registered and Used in Bad Faith
In light of the Panel’s finding under the second limb, the Panel need not consider whether or not the Disputed Domain Name was registered and is being used in bad faith. D. Reverse Domain Name Hijacking
The Respondent requests a finding of Reverse Domain Name Hijacking. Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. In addition, Reverse Domain Name Hijacking is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The onus is on the Respondent to prove that the Complainant filed its Complaint in bad faith for the purposes of Reverse Domain Name Hijacking. A decision of Reverse Domain Name Hijacking is reserved for clear cut cases that are clearly brought with the intent to harass the Respondent, without there being any possibility of the complainant reasonably believing that it had at least an arguable case.
The failure of the Complainant to succeed in these proceedings is not in itself sufficient to result in a finding of Reverse Domain Name Hijacking. The Panel is of the opinion that the Complainant had reasonable grounds to believe that it had a legitimate case at the time of filing the Complaint. However, where the Complainant fell short was in providing evidence to establish the second element – the Complainant focused heavily on the origins of Mr. Thomas Moroder, the owner of the Respondent, without addressing where the actual business of the Respondent was being conducted, and failed to provide enough documentary evidence that it was well-known outside of Italy at the time the Disputed Domain Name was registered.
As such, the Panel finds that the Complainant had at least an arguable case, and that the Complaint was not brought in bad faith as an attempt at Reverse Domain Name Hijacking. The Panel therefore rejects the Respondent’s request for a finding of Reverse Domain Name Hijacking 8. Decision
For the foregoing reasons, the Complaint is denied.
Gabriela Kennedy
Presiding Panelist
Nicoletta Colombo
Panelist (Dissenting)
Brigitte Joppich
Panelist
Date: November 10, 2014 Dissenting Opinion
I respectfully dissent.
Nicoletta Colombo
Panelist (Dissenting)
Date: November 10, 2014
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