Complainant is Das Telefonbuch Zeichen-GbR of Frankfurt am Main, Germany, represented by Bird & Bird LLP of Munich, Germany.
Respondent is Yajun Zhang of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with AlpNames Limited (the "Registrar"). 3. Procedural History
Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 2, 2016. On November 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 6, 2016.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on December 9, 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
Complainant states that it is "a company constituted under German civil law in which the trademark rights of its shareholders... are bundled"; that the "[s]hareholders of the Complainant are DeTeMedien, Deutsche Telekom Medien GmbH (DeTeMedien) and its publishing partners"; that "DeTeMedien is an affiliated company of Deutsche Telekom AG, one of Europe's largest telecommunications companies, covering the entire spectrum of modem telecommunications and information technology"; that "DeTeMedien publishes in co-operation with its publishing partners the German phone directory 'Das Telefonbuch," which has "a yearly circulation of around 25 million copies," making it "the market leader in this field of business in Germany for many decades"; and that "DeTeMedien and its publishing partners also offer its services online, namely on the website ."
Complainant states, and provides evidence to support, that it "has registered a large number of national and European Union trademarks reflecting the term 'Das Telefonbuch'," including the following:
- German Trademark Reg. No. 302010033308 (registered June 2, 2010) for a design mark that consists primarily of the text DASTELEFONBUCH
- German Trademark Reg. No. 302010038144 (registered June 25, 2010) for a design mark that consists primarily of the text DASTELEFONBUCH
- German Trademark Reg. No. 302010033663 (registered June 2, 2016) for a design mark that consists primarily of the text DASTELEFONBUCH
- European Union Trademark Reg. No. 009603077 (registered December 2, 2010) for a design mark that consists primarily of the text DASTELEFONBUCH
- European Union Trademark Reg. No. 009603119 (registered December 2, 2010) for a design mark that consists primarily of the text DASTELEFONBUCH
The above trademark registrations are referred to hereafter as the "DASTELEFONBUCH Trademark."
The Disputed Domain Name was created on April 1, 2016, and, according to Complainant, "is not linked to a website and is therefore not in use." 5. Parties' Contentions A. Complainant
Complaint contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the DASTELEFONBUCH Trademark because, inter alia, the Disputed Domain Name contains the DASTELEFONBUCH Trademark "quasi identically"; and "the fact that the Complainant's 'DasTelefonbuch' trademarks are combined word/device marks and entail design elements does not change the result that the disputed domain name is confusingly similar to these trademarks" because " "figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name" and, therefore, "such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark."
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Complainant has not agreed to the Respondent's registration of the disputed domain name and has not given the Respondent any respective license or any other right to use or register the sign as a domain name"; "there are no economical connections between the parties that might authorize the Respondent to register the contested domain name"; "Respondent makes no use of the disputed domain name 'in connection with a bona fide offering of goods or services'" because "[t]he domain is not linked to a website and is therefore not in use"; "Respondent is not commonly known by the domain name " because "Respondent is a natural person named Yajun Zhang"; and "Respondent is not making a legitimate non-commercial or fair use of the domain name… since the Respondent is not using the domain at all."
- The Disputed Domain Name was registered in bad faith because, inter alia, "Complainant's trademarks had already been registered for several years by the time of the registration of the disputed domain name in April 2016," so "the Respondent must have been well aware of the Complainant and its trademark rights when registering the contested domain name"; and "Respondent's positive knowledge of the Complainant's trademark rights can also be proven by the fact that the Complainant's trademarks are registered at the Trademark Clearing House" and "[t]herefore, the Respondent was aware of the trademark rights of the Complainant in the term 'DasTelefonbuch' and that the use of the contested domain name infringes these rights before registering the disputed domain name." B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the DASTELEFONBUCH Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the DASTELEFONBUCH Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., "dastelefonbuch"), as it is well established that the Top-Level Domain (i.e., ".top") may generally be disregarded for this purpose. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 ("[t]he applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.")
The Disputed Domain Name contains the DASTELEFONBUCH Trademark – and only the DASTELEFONBUCH Trademark – in its entirety. The Panel agrees that, although the registrations for the DASTELEFONBUCH Trademark cited by Complainant are for a stylized mark, the "design is irrelevant in the context of domain names." Casa Editorial El Tiempo, S.A. v. Montanya Ltd,WIPO Case No. D2009-0103. Indeed, "as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark." WIPO Overview 2.0, para. 1.11.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Complainant has not agreed to the Respondent's registration of the disputed domain name and has not given the Respondent any respective license or any other right to use or register the sign as a domain name"; "there are no economical connections between the parties that might authorize the Respondent to register the contested domain name"; "Respondent makes no use of the disputed domain name 'in connection with a bona fide offering of goods or services'" because "[t]he domain is not linked to a website and is therefore not in use"; "Respondent is not commonly known by the domain name " because "Respondent is a natural person named Yajun Zhang"; and "Respondent is not making a legitimate non-commercial or fair use of the domain name… since the Respondent is not using the domain at all."
Under the Policy, "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once 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 domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP." WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location. Policy, paragraph 4(b).
In this case, Complainant does not articulate which, if any, of the above factors is specifically applicable here, nor does Complainant set forth a typical argument for a finding of bad faith. Indeed, Complainant's arguments on the issue of bad faith are, like the Complaint in general, greatly lacking in substance and not of the quality expected in a legal proceeding – especially considering that Complainant is represented by a firm that describes itself as "an international leading law firm in business sectors where technology plays a key role."1 Although quality and quantity are not always correlated, the Panel is surprised that Complainant's argument on the issue of bad faith constitutes scarcely more than a single page in the Complaint.
More shocking than the lack of words, however, is Complainant's reliance on what the Panel could have found to be a fatal flaw: the Complaint largely fails to address whether the Disputed Domain Name "is being used in bad faith" and instead focuses exclusively on whether the Disputed Domain Name "has been registered" in bad faith. (Paragraph 4(a)(iii) of the Policy makes clear that the bad faith element requires that the "domain name has been registered and is being used in bad faith" (emphasis added). Much has been written in previous decisions under the Policy about the significance of the word "and" in this requirement; the Panel here does not endeavor to revisit this topic but instead addresses it only with respect to shortcomings in the instant Complaint.)
Strikingly, the Complaint contains only a boilerplate reference – drawn from the Center's model complaint – as a section heading that states, "The domain name was registered and is being used in bad faith." Following this heading, the Complaint states: "The disputed domain name has been registered in bad faith." The emphasis is as written in the Complaint itself, and the four paragraphs in the Complaint that follow address facts and law related only to registration – not use – of the Disputed Domain Name, concluding with a summary statement that says, "Hence, it is evident that the domain name has been registered in bad faith." Because the Complaint so clearly bifurcated the bad faith element, the Panel expected that the Complaint would next contain a series of arguments as to why the Disputed Domain Name is being used in bad faith, as is common when Complaints separately address the registration and use requirements. However, the Complaint contains no such structure.
Indeed, the only references in the Complaint to any use of the Disputed Domain Name are a sentence noting that the DASTELEFONBUCH Trademark is registered at the Trademark Clearinghouse and, therefore, that "the Respondent was aware of the trademark rights of the Complainant in the term 'DasTelefonbuch' and that the use of the contested domain name infringes these rights before registering the disputed domain name";2 and that "[t]he domain is not linked to a website and is therefore not in use." While decisions under the Policy frequently find bad faith even in the absence of an active website associated with a disputed domain name, pursuant to the so-called doctrine of "passive holding," Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the Complainant has not invoked this doctrine. The Panel is not obligated to make such arguments on Complainant's behalf.
Notwithstanding the poorly argued Complaint, it is apparent to the Panel that the DASTELEFONBUCH Trademark is well-protected, and Complainant's statement that the DASTELEFONBUCH Trademark appears on "around 25 million copies" of the German phone directory annually has not been rebutted by Respondent. Further, the Panel takes notice that Respondent recently lost another proceeding under the Policy, Gelbe Seiten Zeichen-GbR v. Yajun Zhang,WIPO Case No. D2016-2230 (transfer of ). In that case, the Panel said that "it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law" and that "there is no response to offer an explanation as to why the Respondent may have registered the disputed domain name." While a single previous losing decision under the Policy does not in and of itself establish bad faith, a "pattern of such conduct" is relevant to a finding of bad faith under paragraph 4(b)(ii) of the Policy, and previous decisions have made clear that "even two domain names… indicate[] a 'pattern' of conduct by Respondent." Inter-Continental Hotels Corporation v. James Alex, Design Factory,WIPO Case No. D2010-0974.
Based on the facts of this case – including the numerous trademark registrations for the DASTELEFONBUCH Trademark; the apparent notoriety of the trademark; that the Disputed Domain Name is identical to the Complainant's trademark other than the top-level domain; and that the Disputed Domain Name was registered in the Trademark Clearinghouse, the Panel believes that a preponderance of evidence establishes that "it is very likely that the Respondent was aware of the Complainant at the time he selected the disputed domain name[] for registration", which "is sufficient to infer bad faith." Gelbe Seiten Zeichen-GbR v. Tom Eisenlohr,WIPO Case No. D2016-0540. Further, as previous panels have held, despite the current absence of any active use of the Disputed Domain Name, "the presence of the Domain Name in the hands of the Respondent represents, in the view of the Panel, an abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered by the Respondent at any time) and therefore a continuing abusive use", which also implies bad faith. Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited,WIPO Case No. D2014-1564.
The Panel must reiterate that it reaches this conclusion not necessarily because of – but rather, despite – Complainant's cursory arguments. Indeed, the Panel could have concluded, as have other panels, that this case was "insufficiently pleaded to warrant a transfer of the Disputed Domain Name." Pixers Ltd. v. Whois Privacy Corp.,WIPO Case No. D2015-1171. While such a decision may have been appropriate as a matter of formality, the Panel declines to penalize Complainant for the sins of its counsel and rather seeks to apply a reasonable conclusion based on the overall facts and circumstances of the present case.
Accordingly, the Panel finds that the third element of the Policy has been satisfied. 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 Complainant.
Douglas M. Isenberg
Sole Panelist
Date: January 9, 2017
1 (visited January 9, 2017)
2 Complainant's understanding of the relevance of the Trademark Clearinghouse is mistaken but irrelevant here. As stated in ICANN's Applicant Guidebook, one role of the Trademark Clearinghouse is to "provide clear notice to [a] prospective registrant of the scope of the mark holder's rights in order to minimize the chilling effect on registrants." Applicant Guidebook, Module 5, paragraph 6.1.2 (visited December 13, 2016). This notice does not prevent a prospective registrant from proceeding to register a domain name, nor does it establish that any use of the domain name would constitute an infringement. Rather, as ICANN's Applicant Guidebook says, this trademark claims service requires a registrant to warrant that "to the best of the prospective registrant's knowledge, the registration and use of the requested domain name will not infringe on the rights that are the subject of the notice." Although such warranties are often breached, it is wrong to conclude that use of a domain name following notice pursuant to the trademark claims process must necessarily therefore be infringing.
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