The Complainant is Winfried Wengenroth of Hannover, Germany, represented by Matthias Kiunka, Germany.
The Respondent is Domain Admin / Pisces Online Investment of Karachi, Pakistan. 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 28, 2014. On October 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 5, 2014. The Complainant filed a further amendment to the Complaint on November 13, 2014.
The Center verified that the Complaint together with the amendments 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 November 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2014. The Response was filed with the Center on December 4, 2014.
The Center appointed Alistair Payne as the sole panelist in this matter on December 11, 2014. 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 Company is based in Germany and owns a German federal registered trade mark for WUP convering goods and services in class 42 under registration number 302014 026280 dating from April 14, 2014.
The Respondent registered the disputed domain name on July 28, 2008. 5. Parties’ Contentions A. Complainant
The Complainant submits that “WUP” is the initials of its company “Wengenroth und Partner”, that the company is well known under the WUP name or mark and that it owns a registered trade mark for WUP under German federal registration number 302014 026280 dating from April 14, 2014.
It says that since initial registration in 2008 the Respondent has not used the disputed domain name to resolve to a website at which any “real” content is provided and therefore has no rights or legitimate interests in the disputed domain name. The Complainant further submits that the disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring it to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs.
The Complainant further submits that either the disputed domain name was registered primarily for the purpose of selling it at a profit or of disrupting the business of a competitor and therefore it was registered and has been used in bad faith. It says further that it has contacted the Respondent innumerable times in an effort to purchase the disputed domain name but without success. B. Respondent
The Respondent submits that “wup” is a generic term. It says that the Complainant has not provided any evidence that it developed rights prior to the Respondent’s registration in 2008 and that this date predates the Complainant’s trade mark registration by six years. The Respondent also notes that the Complainant trades as “Wengenroth und Partner” and not under the name or style “WUP” and that its principal domain name is and not . It notes that the oldest blog on the Complainant’s website dates back to June 2012 and submits that the company may not even have existed when the disputed domain name was registered.
The Respondent says that it registered the disputed domain name for its own purposes in 2008 and at the time was not aware of the Complainant’s existence. It notes that it has been approached by numerous parties, including the Complainant, to sell the disputed domain name but has never accepted any approach. Further, the Complainant says that it has not attempted to sell, rent or transfer the disputed domain name to anyone and that the Complainant has not put forward any evidence that this is the case.
The Respondent submits that it follows that there is no evidence that it has registered or used the disputed domain name in bad faith. Apart from not offering to sell the disputed domain name to the Complainant or to a competitor, the Respondent says that it did not register the disputed domain name to disrupt the business of the Complainant or of a competitor and reiterates that it had no knowledge of the Complainant at the time of registration of the disputed domain name. The Respondent also notes that it does not operate a website that is likely to be confused with the Complainant’s social media consulting website. 6. Discussion and Findings A. Preliminary Matter: Supplemental Filings from the Complainant and the Respondent
On December 16, 2014, the Complainant sought to make a supplemental filing. Supplemental filings are admitted at the discretion of the panel, but as a general rule are only accepted in the event of exceptional circumstances, such as where information has come to light that could not in any event have been submitted with the party’s original filing. The Complainant has not premised its filing upon exceptional grounds and in any event the Panel notes that the supplemental filing would not, even if admitted, alter the essential grounds on which the Panel has made its decision below. Accordingly, the Panel refuses to admit this supplemental filing into the record and notes that the Respondent’s subsequent email, which also adds nothing to the proceedings, will also not be admitted to the record. B. Identical or Confusingly Similar
The Complainant has demonstrated that it owns a German federal registered trade mark for the WUP word mark under registration number 302014 026280 and that this registration dates from 14 April, 2014. The substantive element of the disputed domain name is identical to this mark and accordingly the Panel finds that the Complaint succeeds under this element of the Policy. C. Rights or Legitimate Interests
Under this element of the Policy, the onus is upon the Complainant to make out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and then it is for the Respondent to rebut the Complainant’s case.
Apart from making unsubstantiated allegations that the disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a competitor, or that the Respondent did so for the purpose of disrupting the business of a competitor, the Complainant has failed to provide any evidence to support its case in this regard. The fact that the Respondent has not used the disputed domain name in the course of a business since registration, does not on its own give rise to an inference of lack of bona fides. Although the disputed domain name currently appears to resolve to a sort of “pay-per-click” advertising site, this does not appear from the record to link to competitive advertising sources and therefore does not imply a lack of bona fides in the absence of other circumstantial evidence.
The Respondent submits that it was unaware of the Complainant when it registered the disputed domain name in 2008. There is no evidence before the Panel to suggest that the Complainant was operating in 2008, or that its WUP trade mark was well known at that time, or could have been known to the Respondent. Had the Complainant been in business and using the WUP name at the time of registration of the disputed domain name, it is not unreasonable to expect that it would have made a submission accordingly, but it has failed to do so. The Panel also notes that the Complainant only registered its German trade mark in 2014 which is consistent with the assumption that its use of the WUP mark post- dates the registration of the disputed domain name. The first evidence of use by the Complainant of the WUP mark in the record before the Panel is in the context of a blog dating from 2012.
The Panel notes that “wup” is a combination of three letters with no apparent meaning and unless the Complainant could demonstrate reputation in its mark at the date of registration of the disputed domain name then the Panel accepts that the Respondent may very well have sought in 2008 to register the disputed domain name on the assumption that it incorporated a “generic” term without having any knowledge of the Complainant. Although the Respondent has not used the disputed domain name for a specific business activity none of the other circumstances point to bad faith on the part of the Respondent. Without other evidence it is very difficult to see how the Complainant could successfully argue that the Respondent has no rights or legitimate interests in the disputed domain name.
Overall, the Panel therefore finds on the balance of probabilities that the Complainant has failed to make out its case that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complaint fails under this element of the Policy. D. Registered and Used in Bad Faith
Although the Complaint fails if any single element of the Policy is not made out, the Panel notes that there is also insufficient evidence before it to demonstrate that the disputed domain name was registered or used in bad faith, as there must be if the Complaint is to succeed under the third element of the Policy.
As noted above, the Complainant has made no suggestion that its business under the WUP mark was operating at the date of registration of the disputed domain name and neither is there any evidence to suggest that the Respondent should or could have been aware of the Complainant’s interest in the WUP mark at that date. The Panel’s view in this regard is reinforced by the fact that the Complainant’s WUP trade mark was only registered in 2014 and that the earliest evidence of use by the Complainant of the WUP mark is from a blog in 2012.
In these circumstances it seems more likely than not that the Respondent, as it submits, was not aware of the Complainant or of its WUP mark in 2008 when it registered the disputed domain name and there is therefore no basis on which the Panel could therefore infer registration in bad faith.
For completeness the Panel also notes that in all these circumstances and considering that there is no evidence that the parties operate competing businesses, the fact that the disputed domain name appears to resolve to a “pay-per-click” advertising site with no apparent theme does not alone amount to use in bad faith. As a result the Complaint also fails under the third element of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Alistair Payne
Sole Panelist
Date: December 16, 2014
Full & Egal Universal Law Academy