The Complainant is EnBW Energie Baden-Württemberg AG of Karlsruhe, Germany, represented by Witold Kabacinski, Germany.
The Respondent is Claus Linder of Fichtenau, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2016. On July 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2016, 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.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on July 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2016.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on August 22, 2016. 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 is EnBW Energie Baden-Württemberg AG. The Complainant is the registered owner of trademark registrations for the sign ENBW, in particular of European Union Trade Mark (“EUTM”), word mark No. 000771014 registered on February 18, 2000 and of EUTM No. 009450041, figurative mark registered on March 18, 2011, both for goods and services in classes 4, 9, 35, 36, 37, 38, 39, 40, 41,42, in particulargas as fuel; communication technology products; professional business and organization consultancy in the energy sector; financial services; construction of power stations, in particular hydroelectric power stations, nuclear power stations etc.; telecommunications; providing transport networks for distributing energy; electricity generation; staff training; energy consultancy for domestic, commercial and industrial purposes.
The Respondent registered the disputed domain name on May 4, 2016. It results from the Complainant’s documented allegations that no content is displayed on the website to which the disputed domain name resolves. 5. Parties’ Contentions A. Complainant
According to the Complainant, the disputed domain name is identical to the trademark ENBW.
The Complainant further contends that the Respondent has no prior rights or legitimate interests in the disputed domain name, as the Respondent’s website “www.” does not provide any goods or services and is not used by the Respondent. In fact, the disputed domain name simply resolves to an inactive page. Furthermore, the Complainant asserts that the Respondent does not own any trademarks or service marks corresponding to the sign “ENBW”. Finally, the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
The Complainant further contends that the disputed domain name has been registered in bad faith for the primary purpose of reselling it. In fact, it results from the Complainant’s undisputed allegations that the Respondent actually contacted the Complainant on May 5, 2016 and offered the disputed domain name for sale on his own initiative. With letter dated May 17, 2016 the Complainant offered to settle this issue either by a transfer of the disputed domain name to the Complainant or alternatively, by cancelling the disputed domain name and payment of EUR 50 to the Respondent for his expenses. By letter dated May 20, 2016, the Respondent refused the Complainant’s settlement proposal and requested a sum of EUR 10.000 per day starting from the date of registration until settlement plus 50% reduction on his electricity consumption. Subsequently, the Respondent reduced this request to EUR 1.500 - 2.000 via email dated July 13, 2016. In the light of the above, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires the complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(i) The disputed domain name is identical or confusingly similar to a trademark 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.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
From a procedural point of view, the Panel notes that it is its discretion under paragraph 11 of the Rules to determine the appropriate language of proceedings. As a rule, the appropriate language of proceedings is the language of the Registration Agreement, which is - in the case at hand - English. Nonetheless, the Panel accepts that the Complainant submitted some of the documents in support of its assertions in German. In fact, these documents in German are the letters and emails exchanged between the parties - resumed above under Section 5.A of this decision. Since both parties corresponded in German language, accepting these documents in German language does not cause any unfair disadvantage neither to the Respondent nor to the Complainant (see WIPO Overview of WIPO Panel Views on Selected Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.3.). A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant is the registered owner of several trademark registrations for ENBW, in particular word mark EUTM No. 000771014 registered on February 18, 2000 and figurative mark EUTM No. 009450041 registered on March 18, 2011. These trademarks predate the registration date of the disputed domain name which is May 4, 2016.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., Multi Media, LLC v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-1039; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910). This is the case in the present proceeding, where the second level domain of the disputed domain name consists exclusively of the Complainant’s registered trademark.
Furthermore, in accordance with well-established precedents (see WIPO Overview 2.0 at paragraph 1.2.) a generic Top-Level Domain (“gTLD”) suffix in the domain name will be as a rule disregarded under the confusing similarity test as it is a technical requirement of registration. In the Panel’s view this rule does also apply to the new gTLD which will be understood by Internet users as leading to the Complainant’s “online”-presence.
The Panel has therefore no doubt that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. In the Panel’s view, based on the unrebutted allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
No content is displayed on the website to which the disputed domain name resolves. Such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy (see, e.g., Sanofi, Genzyme Corporation v. Domain Privacy,WIPO Case No. D2016-1193; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, supra; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, supra).
The Panel does further not dispose of any elements that could lead the Panel to the conclusion that the Respondent is commonly known by the disputed domain name or that it has acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy. All the more so as it results from the Complainant’s undisputed allegations that the Respondent does not own any ENBW trademark.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
According to the Complainant’s undisputed and evidenced allegations, the Respondent offered to sell the disputed domain name to the Complainant on his own initiative only one few days after registration. It subsequently specified its proposal by requesting EUR 10.000 per each day starting from the registration up to the conclusion of a settlement agreement and reduced this request in a further step to a sum of EUR 1.500-2.000. However, any of those requests go far beyond the costs for registration and maintenance of the disputed domain name. Therefore, the Panel takes these requests as clear evidence that Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of the trademark or service mark for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name as discussed in paragraph 4(b)(i) of the Policy (See Banque Pictet & Cie SA v. Claus Linder,WIPO Case No. D2016-1081; Bayerische Motoren Werke AG v. Claus Linder,WIPO Case No. D2016-1109). In addition, the Panel does not consider - at least the first - offer for sale as a good faith effort to reach a compromise in good faith settlement discussions but rather as a bad faith effort to extort and therefore as evidence of bad faith (see WIPO Overview 2.0, paragraph 3.6). This conclusion is supported by the fact that it was the Respondent who contacted the Complainant just one day after the registration of the disputed domain name on his own initiative proposing to sell the Complainant the disputed domain name. Furthermore, the Respondent’s first contact is also clear evidence that he perfectly knew the Complainant and its rights in the mark ENBW when registering the disputed domain name. In the view of the circumstances of this case, the Panel accepts the Complainant’s contentions as being well founded, a fortiori since the Respondent failed to come forward with any allegations or evidence in order to justify its behavior.
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant is therefore deemed to also have satisfied the third element, paragraph 4(a)(iii) of the Policy. 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.
Tobias Malte Müller
Sole Panelist
Date: September 1, 2016
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