Complainant is European Handball Federation, Vienna, Austria, represented by schmid-ip, Austria.
Respondent is domain admin, Xedoc Holding SA / Whois Privacy Services Pty Ltd of Luxembourg, represented by Paul Keating, Esq., Spain. 2. The Domain Name and Registrar
The disputed 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 January 12, 2016. On January 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2016, 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 15, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 20, 2016.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 21, 2016. On the same day, Respondent requested the Center to reject the amendment to the Complaint. The Center responded on January 22, 2016, by recalling that the amendment to the Complaint had been solicited by the Center and thus could not be considered as a supplemental filing.
In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2016. On February 9, 2016, Respondent asked for an automatic 4-day extension of the deadline to file a Response. The Center granted the requested extension and confirmed that the new deadline for Response was February 14, 2016. The Response was filed with the Center February 14, 2016.
On February 17, 2016, the Center requested Complainant to communicate its selection of panelists. Complainant responded on February 18, 2016, and added a request to take appropriate measures with regard to the Response being in excess of the permitted word limit. Complainant also requested to take its amendment of the Complaint into account, and to reject Respondent's additional filing of its exhibit 12. Respondent contested these requests in its email of February 19, 2016.
The Center appointed Flip Jan Claude Petillion, John Swinson and The Hon Neil Brown Q.C. as panelists in this matter on March 7, 2016. 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. 4. Factual Background
Complainant, the European Handball Federation, is the competent European handball umbrella organization for 50 member federations and two associated federations (England and Scotland). Its main objectives are the promotion and the development of the handball sport at all levels in Europe via the organisation of European handball competitions, the education of referees, delegates, coaches and the support to local, national and European handball development projects. The Complainant holds various trademarks, including the following:
- International Registration No. 704337 (figurative mark with word element EHF), registered on November 20, 1998 in class 16 (printed matter, fotographs), 35 (advertising), and 41, (entertainment; sporting and cultural activities), with a priority date of June 19, 1998, designating various countries and regions including the Benelux;
- Austrian trademark No. 177 082 (figurative mark with word element EHF), registered on July 30, 1998, with a priority / filing date of June 19, 1998, in classes 16, 35 and 41.
The Disputed Domain Name was registered on September 10, 1999 and was acquired by Respondent on December 22, 2003. It resolves to a website containing pay-per-click links. 5. Parties' Contentions A. Complainant
Complainant considers the Disputed Domain Name to be confusingly similar to trademarks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Finally, Complainant claims that the Disputed Domain Name was registered and is used in bad faith. B. Respondent
Respondent considers that it has a legitimate interest in the Disputed Domain Name as "EHF" is a generic abbreviation. Respondent further states that it did not know of Complainant's trademark rights at the time of registration of the Disputed Domain Name, and Complainant did not show that its trademarks were well-known at that time. Finally, Respondent argues that it did not use the Disputed Domain Name in bad faith but ran it as a pay-per-click site of a general nature by using a generic domain name and promoting goods and services that were not associated with the Complainant's industry. Complainant's evidence showing the opposite is not reliable. 6. Discussion and Findings A. Procedural matters A.1. Amendment of the Complaint
In its communications of January 21, 2016 and February 19, 2016, Respondent requested to reject the amendment to the Complaint on the basis that it was not certified. However, the Panel notes that the Center solicited and accepted the amendment to the Complaint. Moreover, Complainant stated the following in its amendment to the Complaint: "In addition, we refer to our previous submissions, which are otherwise fully upheld." Therefore, the Panel finds that the certification clause mentioned in the original Complaint also applies to the amendment to the Complaint.
Consequently, the Panel takes into account the amendment to the Complaint. A.2. Response
Pursuant to Paragraph 5(c)(i) of the Rules and Paragraph 11(b) of the Supplemental Rules, the word limit for the portion of the Response which relate specifically to the statements and allegations contained in the Complaint shall be 5,000 words. The Panel notes that the concerned portion of the Response contains 8,980 words.
Respondent was clearly aware of the word limit, as it expressly referred to it in its communication to the Center of January 21, 2016. Contrary to what is stated in this communication, Respondent did not allocate a portion of its Response to address procedural issues.
In view of the foregoing, although the Panel has taken into account the Respondent's arguments, it reminds parties that they should strictly adhere to the prescribed word limits. B. Merits of the case
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn. B.1. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there are trademarks in which Complainant has rights. The trademarks have been registered and used in various countries in connection with Complainant's mission of promotion and development of the handball sport.
The Panel notes that the Disputed Domain Name incorporates the most distinctive element of Complainant's figurative trademarks, namely the abbreviation "EHF". The Panel is of the opinion that the addition of gTLDs can be disregarded when comparing the similarities between a domain name and a trade mark (See Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah,WIPO Case No. D2014-0269). Therefore, the Panel considers the Disputed Domain Name to be identical to the Complainant's EHF trademark.
Accordingly, Complainant has made out the first of the three elements that it must establish. B.2. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is established case law under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain names in order to place the burden of rebuttal on Respondent (See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent's use and registration of the Disputed Domain Name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
In addition, the Panel is of the opinion that Respondent is not "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" (Policy, paragraph 4(c)(iii)). Respondent uses the Disputed Domain Name to refer to a website incorporating pay-per-click links which, at least intermittently, relate to handball and the Complainant.
According to the Panel, such use of the Disputed Domain Name is detrimental to the Complainant and cannot be considered to constitute a bona fide commercial or fair use (See paragraph 2.6 of WIPO Overview 2.0; Delta-Sonic Carwash Systems, Inc. v. Radio plus, spol.s r.o.,WIPO Case No. D2015-1512). The Panel also refers to its views related to bad faith registration and use under B.3.
In view of the foregoing, the Panel considers that the Complainant has also made out the second of the three elements that it must establish. B.3. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (See e.g., Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
In the instant case, the Panel finds that Respondent must have had knowledge of Complainant's rights in the EHF trademark at the moment it registered the Disputed Domain Name. The Complainant has valid trademarks in the Benelux, where the Respondent is located. At least two trademarks of the Complainant were registered in 1998, 5 years before Respondent acquired the Disputed Domain Name. A simple trademark search on the Internet would have revealed the presence and use of the EHF trademark by Complainant. Moreover, the historical Google searches included in the annexes to the Response (RE3) show that there were already links to the Complainant and its trademarks between 1999 and 2000 on the website linked to the Disputed Domain Name. Complainant also shows that an archived version of the website mentioned the sign "ehf" for the first time in April 2004, a few months after Respondent acquired the Disputed Domain Name. The sign was mentioned in connection with sports, which is a further indication that Respondent was aware of the Complainant.
Respondent states that the Disputed Domain Name was acquired as a large portfolio purchase, and mentions that it has numerous other domain names in its portfolio. The Panel notes that Respondent also appears in a large numberof UDRP disputes, which further indicates that Respondent is in the business of selling domain names. The Panel finds that paragraph 2 of the Policy implicitly requires some good-faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy, especially when Respondent is a professional domain name registrant reseller (See paragraph 3.4 of WIPO Overview 2.0).
The panel in The Fragrance Foundation Inc. v. Texas International Property Associates,WIPO Case No. D2008-0982, stated the following in that regard: "While as a general rule, UDRP panels are reluctant to find that a respondent had constructive notice of an existing trademark when registering a domain name, there are cases in which constructive notice can properly be found. Especially when the trademark is already publicly registered in the country where the parties are located prior to domain name registration, and the respondent is involved in the business of registering thousands of domain names, panels consider a higher standard of diligence on the part of domainers to be appropriate."
There is no evidence in the record that the Respondent in the present case engaged in any trademark review before registering the Domain Name, listing it for sale for USD150,000 and using it to redirect visitors to a website filled with advertising links. Such review might not be considered necessary in registering a domain name containing "dictionary words", but the likelihood of infringing the rights of a third party or creating a likelihood of confusion as to source is clearly greater where the domain name is not a dictionary word or descriptive phrase. This is particularly true for three- or four-letter strings (See e.g., Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No.. D2006-0964).
As mentioned above, Respondent uses the Disputed Domain Name to refer to a website incorporating pay-per-click links which, at least intermittently, relate to handball and the Complainant. While the intention to earn click-through-revenue is not in itself illegitimate, the Panel finds that the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use (See Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258; L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc. WIPO Case No. D2005-0623).
Respondent gives a detailed explanation of the pay-per-click method it used. It argues that the "periodic appearances[of references to the Complainant]were related to the Complainant's advertising activities and were not related to any actions undertaken by the Respondent." The Panel does not accept this argument, as Respondent is solely responsible for the content of websites linked to the Disputed Domain Name (See Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396 ("Even if the advertising links served up to visitors on the website associated with the Domain Name are automated, the Respondent remains responsible for the uses to which the Domain Name is put.")).
The Panel concludes that, by using the Disputed Domain Name incorporating the Complainant's trade mark in connection with a website containing links relating to the Complainant and its trademarks, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trademark. In accordance with 4(b)(iv) of the Policy, this is evidence of registration and use in bad faith.
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Flip Jan Claude Petillion
Presiding Panelist
John Swinson
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: March 22, 2016
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