1.1 The Complainant is Andre Geské of Lübbecke, Germany, represented by Vorys, Sater, Seymour and Pease, LLP, United States of America ("United States").
1.2 The Respondent is Domain Admin / This Domain is For Sale, Home of Domains of Phoenix, Arizona, United States. 2. The Domain Name and Registrar
2.1 The disputed domain name (the "Domain Name") is registered with NameSilo, LLC (the "Registrar"). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 13, 2017. On June 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 13, 2017, 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.
3.2 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").
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 12, 2017.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on July 18, 2017. 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
4.1 The Complainant is a German individual. He is the CEO and Owner of EIS GMbH ("EIS"), a company founded in 2006 and incorporated in Germany. EIS sells vibrators and massaging apparatuses under the "Satisfyer" brand in various markets around the world including several countries in Europe and North America. It has used the "Satisfyer" brand in respect of products in the United States since May 2016. Its products have benefited from a fair degree of publicity, with articles mentioning these products being published in magazines such as Cosmopolitan and Glamour in 2016.
4.2 The Complainant is the owner of United States registered trade mark no. 5156217, for the word mark SATISFYER in class 10 and registered on March 7, 2017. EIS uses that mark under licence from the Complainant.
4.3 Although the Complainant omits to mention this in the Complaint, on May 26 2017 the Complainant filed applications for registered trade marks in the European Union and the United States for the term "Satisfier Men" in stylised text.
4.4 The Domain Name was registered on May 26, 2017. It is registered in the name "Home of Domains" with an address in Arizona. Who or what is "Home of Domains" is not clear as no company name or individual's name is provided as part of the publicly available WhoIs data.
4.5 As at about the time that the Complaint was filed, a web page was displayed from the Domain Name that stated that the Domain Name was for sale and could be purchased for USD 950. Since that date, the web page operating from the Domain Name has changed to a page that looks as if it is a generic parking page generated by the Registrar. 5. Parties' Contentions A. Complainant
5.1 The Complainant claims that his SATISFYER trade mark comprises "an unusual and distinctive misspelling of the English word 'satisfier', meaning one that satisfies". He also describes his relationship with EIS and EIS's business and marks.
5.2 The Complainant contends that the Domain Name comprises his mark with the addition of the word "men". The Complaint refers to various UDRP decisions that are said to have held that domain names that incorporate the entirety of a complainant's mark with the addition of "minor words" are confusingly similar to those marks.
5.3 The Complainant further contends that the Respondent does not have rights or legitimate interests in the Domain Name and has registered and used the Domain Name in bad faith. In this respect, he maintains that Home of Domain is "a service provider which [the] Complainant believes conceals and keeps anonymous the real identity of the domain name owner" and therefore he is unable to identify the underlying registrant to the Domain Name. Nevertheless, he contends that it is clear from the web page operating from the Domain Name, that the Domain Name was registered with the intent to sell it to the Respondent for commercial gain and to take advantage of the Complainant's trade marks.
5.4 The Complainant also claims that the Respondent prior to registration of the Domain Name "was aware of [the] Complainant's interest in this particular domain and its value to [the] Complainant". Although how the Respondent was aware of this is not really explained, the Complainant appears to link this to a claimed "internal" announcement that it would launch a line of products under sub-brand "Satisfyer Men" two days earlier. B. Respondent
5.5 The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall "draw such inferences therefrom as it considers appropriate".
6.4 The Panel will address each of the requirements of paragraph 4(a) in turn. It will then add some remarks related to the Complainant's contentions as to the nature of "Home of Domains". A. Identical or Confusingly Similar
6.5 The Panel accepts that the Domain Name is confusingly similar to the Complainant's United States registered trade mark in the term "Satisfyer". The Domain Name can only be sensibly understood as incorporating the entirety of that term in combination with the word "men" and the ".com" top level domain. None of these additions so distract from or change the natural reading of the term "Satisfyer" in the Domain Name so as to prevent a finding of confusing similarity for the purposes of the Policy (as to which see Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227).
6.6 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.7 For reasons that are set out in greater detail under the "bad faith" section of this decision that follows, the Panel is satisfied that the Domain Name was registered and has then been held with the intention of taking unfair commercial advantage of the reputation of the Complainant's trade mark. Registering a domain name for such a purpose does not provide the registrant with a right or legitimate interest in the domain name and provides a positive basis for a finding that no such right or legitimate interest exists (see, for example, Supercell Oy v. Don Renne,WIPO Case No. D2015-1145).
6.8 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.9 As has already been stated in this decision, the Panel accepts that the Domain Name was registered and has then been held with the intention to take unfair commercial advantage of the reputation of the Complainant's trade mark.
6.10 The key reasons for this are as follows:
(i) The Panel accepts that the term "Satisfyer" is an unusual misspelling of the word "satisfier". Given this, and in the absence of any explanation as to why the Respondent registered a domain name that adopted this misspelling, the most likely explanation is that the term was adopted because of its association with the Complainant and its trade marks;
(ii) The term "satisfyer men", is an unusual combination of words and is not an obvious choice of words for use with any product or service other than one with which the Complainant is associated;
(iii) The fact that the Domain Name was registered just a couple of days after the Complainant had at least internally announced that it had decided to adopt a brand that save for the TLD is essentially identical to the Domain Name calls out for an explanation. No such explanation has been offered by the Respondent, and (even though the Complainant has not explained how the Respondent would have known about this announcement or the Complainant's decision) in the absence of any such explanation the Panel is not prepared to accept that this is mere coincidence.
(iv) How the Domain Name was used in the short period that has elapsed since the Domain Name was registered provides evidence of the Respondent's intentions when registering the Domain Name. It is clear from the web page that was initially displayed from the Domain Name, that the Domain Name was registered with the intention of making a profit by subsequent sale. For the reasons identified at (i) to (iii) above, the only sensible explanation is that the Respondent had the Complainant in mind as the most likely purchaser of the Domain Name. Such activity falls within the scope of the example of circumstances indicating bad faith registration and use set out in paragraph 4(b)(i) of the Policy.
6.11 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. D. Additional remarks
6.12 In its Complaint the Complainant contends that "Home of Domains" is a service provider which conceals and keeps anonymous the real identity of the domain name owner and contends that in this case the use of such a service in a further factor that indicates bad faith.
6.13 However, no real evidence was provided to support that contention. Further, it is possible that the real position may be somewhat more complicated than this. In particular, the Panel notes that a few days ago the "dotweekly" website published an article (at the URL "/company-domain-movers-whs-com-thebash-com/") that contained the following statement:
"I have pointed this out on many situations. Trnames / Home Of Domains tracks newly filed trademarks and checks the terms as .com domain names. If the domain is available, they register it and list the domain name for $950. Since it cost $1,500 at a minimum to file a UDRP, the TM filer is in a bit of a pickle. It is also the filers fault, that they didn't register the domain prior to filing the publicly listed trademark, which would end up saving them some money or legal hassle."
6.14 Therefore, if the "Home of Domains" entity mentioned in this article is the same person or entity as the Respondent, the writer of this article is in essence claiming that the Respondent has adopted a business model that involves gaming the trade mark registration, domain name registration and UDRP systems in order to seek to profit from those who have applied for a trade mark before they register the corresponding domain name.
6.15 The facts of the present case before the Panel at first sight seem to be consistent with this. However, this is not the way that the Complainant has put his case and, as a consequence, the Respondent has not had an opportunity to respond to this allegation. It would therefore be unfair and inappropriate for the Panel to conclude that this is what is happening, without at least giving the Respondent a chance to respond. This is particularly so since such a business model would not only be likely to offend against the UDRP but would arguably be unlawful in certain jurisdictions. Further, it has not been necessary for the Panel to reach a conclusion as to whether the registration in this case formed part of such a broader scheme, in order to come to a decision under the Policy. Therefore, this has not formed any part of the Panel's reasoning in this case. 7. Decision
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, , be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Date: July 30, 2017
Full & Egal Universal Law Academy