The Complainant is Accell Trademarks B.V. of Heerenveen, Netherlands, represented by Merkenbureau Knijff & Partners B.V., Netherlands.
The Respondent is Markus Schmid of Grafenau, Germany, represented by HK2 Rechtsanwälte, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 21, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 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.
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 December 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2017. On December 19, 2017, the Respondent requested 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 December 29, 2017. The parties filed a joint suspension request on December 21, 2017 which was granted by the Center on the same day with a suspension until January 20, 2018. The Response was filed with the Center on January 19, 2017.
The Center appointed Peter Wild as the sole panelist in this matter on January 29, 2018. 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 the owner of the European Trademark registration no. 8233405 1 2 BIKE for "bicycles, organization of bicycle events and bicycle rental", registered on December 11, 2009. The Respondent registered the disputed domain name on September 25, 2013. According to the Complainant, the domain name is currently being used to redirect traffic to various sponsored links which promote the sales of bicycles and bicycle parts.
The Respondent Markus Schmid appears to be the owner of a sport shop, namely Sport- und Freizeithandel Markus Schmid, which operates under the domain name . 5. Parties' Contentions A. Complainant
In the Complainant's view, the only purpose of the disputed domain name for the Respondent was to redirect traffic intended for the business and the website of the Complainant, to the website of third parties who offer identical and or similar goods which creates a danger of confusion and constitutes bad faith in registration and use of the disputed domain name.
The respondent Markus Schmid appears to be the owner of a sport shop, namely Sport- und Freizeithandel Markus Schmid, which operates under the domain name .
The Complainant claims that the Respondent has no trademark rights in the name "12bike" as he is operating under a different name, namely Markus Schmid and/or Sport-und Freizeithandel Markus Schmid.
The disputed domain name is being used by the Respondent to redirect traffic to various bicycle and bicycle parts shops. On the website, various links are provided, which include references to bicycles. The links are redirected to various bicycle related online shops, part of them in English language. The Complainant concludes that the only purpose of the disputed domain name for the Respondent was to redirect traffic intended for the business and the website of the Complainant, to the website of third parties who offer identical and or similar goods.
On August 3, the Complainant's attorneys sent a request to the abuse email address of the Registrar in English. In addition, they sent a cease and desist letter to the Respondent on March 20, 2017 asking him to cease and desist use of the disputed domain name. On behalf of the Complainant, they asked for the transfer of the domain name to the Complainant. B. Respondent
According to the Respondent, the trademark 1 2 BIKE has not been used by the Complainant or third parties. The Respondent also maintains that the trademark is vulnerable based on this non-use. Furthermore, the Respondent contends that the Complainant is not the registrant, web shop operator or store owner of the domain name . The Respondent submits that the entity running the website under that domain name is not related to the Complainant. Furthermore, the Complainant has not submitted any proof of licensee agreement between this entity and the Complainant. The Respondent also claims that the trademark did not show up on an Internet search when entering the term "". Furthermore the Respondent claims that this is a case of Reverse Domain Name Hijacking and that the Complainant's trademark is generic and that there is no danger of confusion.
The Respondent rejects the Complainant's allegations and alleges to have a legitimate interest to register and use the disputed domain name, as it is generic and filed in connection with a planned business for selling e-bikes. He also rejects the allegations of bad faith registration, claiming that he had no actual knowledge of the Complainant's trademark. The Respondent also claims that the Complainant's email of March 20, 2017 went to his spam folder and he only discovered it after receiving the Center's notification. Finally, the Respondent claims that the parties are not competitors and the disputed domain name does not mislead the public, as the interested public looking for the common element of "1 2 bike" in a search engine will not find either the Complainant's domain name , nor the Respondent's domain name . 6. Discussion and Findings A. Language of the Proceedings
Paragraph 11(a) of the Rules provides that "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding". The Panel may also order that any documents submitted in a language other than that of the proceeding be translated. The Registrar confirmed that the language of the Registration Agreement is German.
The Complainant maintains that that pre Complaint correspondence with the Respondent was in English. Indeed, the parties submitted a joint request for suspension of the proceedings on December 21, 2017 in English and when the proceedings continued, the Respondent filed a Response in English and did not challenge the Complainant's request for English as the language of the proceedings, which can be interpreted as a tacit consent to the Complainant's request for the language of proceedings to be English. This is sufficient evidence for this Panel that the Respondent is sufficiently fluent in English and taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion, according to paragraph 11(a) of the Rules and allow the proceedings to be conducted in English. B. Identical or Confusingly Similar
The Complainant is the owner of the trademark 1 2 BIKE. The Respondent claims that this is a generic term and a vulnerable trademark because of non-use. Such points cannot be heard in the context of this UDRP case under the first element. The Complainant has shown a valid trademark registration which is sufficient prima facie evidence of a trademark right. The respondent's objection regarding lack of use cannot be heard here as long as the trademark remains properly registered. (Moreover, it is not the Panel's role to second guess or replace a trademark authority's registration decision, see Southwestern Association for Indian Arts, Inc. v. Indian Art of America and A. MataWIPO Case No. D2009-1774.)
Having determined that the Complainant has trademark rights in the 1 2 BIKE mark, the Panel next assesses whether the disputed domain name is identical or confusingly similar to the 1 2 BIKE mark. The disputed domain name incorporates the trademark in in its entirety. The only difference is the connected writing of "12bike" and the generic Top-Level Domain ("gTLD") ".com". It is well-established UDRP precedent that the gTLD ".com" may be disregarded and does not prevent a finding of confusing similarity..
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark and that the second element of the Policy is met. C. Rights or Legitimate Interests
The Respondent is not known under the name "1 2 bike" nor does it claim to have registered or unregistered rights to that name, which based on the Complainant's claims and evidence leads to prima facie evidence that the Respondent has no rights or legitimate interest in the disputed domain name for the Respondent to rebut. The Respondent claims that the disputed domain name was registered in connection with a planned business of selling e-bikes. As evidence for this it submits a business plan under the title "Einstein Bike Business Planung bis 2019", allegedly drafted on August 22, 2013. The Respondent also claims that at around the same time in late September 2013, not only the disputed domain name, but also two further domain names were registered in light of this business project.
Nothing in this business plan, which consists of a spreadsheet without branding aspects, points to a possible business or project name using the disputed domain name. Further correspondence which the Respondent submitted in connection with this project, namely emails of August 13, 2016 and August 17, 2016, refer to the project name "Einstein" or "Einstein GMBH" but do not mention "1 2 bike" or the disputed domain name.
The project was never realized. There is no specific evidence on file that the disputed domain name was planned to be used in connection with the project, so the Respondent's claim in this regard remains unproven.
The Respondent's disputed domain name directs to a parking page comprising pay-per-click (PPC) links relating to bicycles and bicycle parts. This does not support the Respondent's claimed rights or legitimate interests for an e-bike business project. "Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant's mark or otherwise mislead Internet users" (see, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.9.).
In the present case, the goods offered under the links provided at the disputed domain name are identical with the goods for which the Complainant's trademark is registered.
The Respondent claims that the Complainant's trademark 12BIKE is generic and therefore free for use, generating a legitimate interest of the Respondent to the disputed domain name. It cannot be denied that the disputed domain name contains a descriptive element, namely "bike". However, it also contains, prominently at the beginning, the numbers "1 2". The Respondent does not explain in which way the number "1 2", combined with the term "bike", results in a generic or descriptive overall term in respect of bicycles.
On balance, there is some indication that the Respondent had an intention to use the disputed domain name for a new business project which was independent from and unrelated to the Complainant's trademark, but not sufficiently supported by clear explanations of a branding concept or related evidence.
This Panel therefore comes to the conclusion that the Respondent did not show rights or legitimate interests in respect of the domain name to rebut the Complainant's case, and therefore the second element of the policy is met. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that four circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith, of which the Complainant appears to refer to one, namely:
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line 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 its website or location.
The Policy holds that the Complainant must show that the disputed domain name has been registered and used in bad faith.
As to use in bad faith, the Panel notes that until the time of writing this decision, the Respondent's website is populated with PPC links that are related to the field of commercial activity of the Complainant, including links to websites offering bicycle related products that compete with those of the Complainant's trademark. Such behavior has repeatedly been recognized by earlier Panels as use of the disputed domain name in bad faith. This Panel is inclined to follow this interpretation of the Policy at least for the time after the Respondent was put on notice, either by the Complainant's cease and desist email or at the latest after the official notification of this Complaint.
This Panel therefore holds that the use aspect of the third element of the Policy is met.
The question regarding registration in bad faith is more difficult to answer. According to the Complainant, the only purpose of the disputed domain name for the Respondent was to redirect traffic intended for the business and the website of the Complainant, to the website of third parties who offer identical and or similar goods which results in registration and use in bad faith. Apart from the links, which direct Internet users to websites which offer bicycles and related goods for sale, the Complainant offers no evidence, in particular as to the question whether and how the disputed domain name was registered in bad faith.
For this Panel, a relevant question in this context is whether the Respondent knew or should have known the Complainant's trademark at the time of registering the disputed domain name.
The Respondent asserts that, at the time of registering the disputed domain name, he did not know and could not know about the Complainant's trademark, as the element "1 2 bike" is, according to the Respondent, generic and no trademark protection of a generic term by a third party must be anticipated. The Respondent also claims that he simply selected the disputed domain name because domain names with the prefix "1 2" followed by a descriptive term were quite popular in the Internet in Germany. In this context, the Respondent refers to: and . He also claims that the disputed domain name was, together with 2 further domain names, registered in light of a planned but never realized project of selling e-bikes. As discussed before, on the evidence before it, it is the Panel's view that the term "1 2 bike" is not purely descriptive. Nevertheless, this Panel agrees that it may be a somewhat weak combination of elements for a business in connection with bicycles.
The Complainant did not allege that the Respondent had actual knowledge of the trademark at the time of registration of the disputed domain name. The Panel finds no indication on file that the Respondent had actual knowledge.
It is another question whether the respondent should have known of the Complainant's trademark. The Complainant does not claim that its trademark was particularly well known when the Respondent registered it in 2013. The Complainant does not mention use of its trademark at all but rather focuses on the Respondent's conduct. The use of the Complainant's trademark to which the Respondent refers (denying a legally sufficient use and sufficient connection with the Complainant), is under , a page in Dutch. The Complainant does not mention the domain name nor explain the connection between itself and the registrant – though based on the Respondent's own evidence this is likely merely a webhost – and the business of the domain name . While it is possible that there is an agreement among them for use of the trademark 1 2 BIKE, the Complainant did not allege this nor offer evidence on this point, but merely speaks in a way which presumes some connection.
On balance, this Panel therefore comes to the conclusion that there is no evidence in the record before it that the Respondent should have known the trademark.
The final question therefore is, in this context, whether the Respondent had an obligation to research for potential possible trademarks before registering the disputed domain name. This Panel notes that paragraph 2 of the Policy requires a registrant to make some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy. See Media General Communications, Inc. v. Rarenames, WebReg.,WIPO Case No. D2006-0964. In the present case, the Respondent has not indicated whether it researched the possibility of third-party rights before registering and using the disputed domain name but simply stated that the trademark and domain name do not appear as results of an Internet search on Google at this time. There is no indication whether such a search was made before registering the disputed domain name, and without such a claim being made the Panel infers that the Respondent did not, or else he would have said so. Moreover, a simple Internet search, such as on the Google search engine, has been held not to be sufficient by itself by prior Panels, which referred to free, publicly available online resources for trademark registrations as proper research databases.
Prior Panels discussed whether respondents have an obligation to effect trademark searches in all circumstances and the majority view is that, in the absence of further specific indications, professional domain name registrants (which does not necessarily bear any relation to the number of domain names a registrant owns) or where registrants show a pattern of abusively registering prior trademarks as domain names are under such obligation (see Intocable, Ltd. v. Paytotake LLC, WIPO Case No. D2016-1048, see also The Skin Store, Inc. v eSkinS,WIPO Case No. D2004-0661, Terroni Inc. v. Gioacchino Zerbo,WIPO Case No. D2008-0666; and mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
Some panels have noted that, in theory, such obligation may be just as applicable to non-professional domain name registrants, who are also subject to paragraph 2 of the UDRP, which states: "It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights." Whether such obligation must be imposed on the Respondent in this case can only be answered by focusing on this case's known circumstances and on the Registrant's intent in adopting the domain name.
In this regard, the Complainant evidenced that the disputed domain name features PPC links to websites offering competing products. This may be an indication that the Respondent had the Complainant's mark in mind when registering the disputed domain name especially given that they operate in the same industry. On the other hand, the Respondent shows no pattern of conduct and does not seem to be a professional, bulk registrant (i.e., in the business of buying and selling domain names by themselves) and asserts, plausibly enough based on the present record, that he did not know the Complainant's trademark. Furthermore, the Respondent claims that the disputed domain name was registered in preparation of a new business venture. These explanations, while not implausible, are not supported by evidence, while the Complainant has not claimed nor offered evidence whether and where its trademark is in use and known or should have been known to the Respondent. (See also Novo Nordisk A/S v. Andrew Melcher,WIPO Case No. D2010-0095)
Having carefully considered the facts presented in the case file, and the fact that the burden of proof for all three elements of the policy lies on the Complainant, the Panel concludes on the balance of all claims and evidence submitted that there is no sufficient evidence that the Respondent did register the disputed domain name intentionally to create a likelihood of confusion with the Complainant's trademark.
The Panel therefore holds that the third element of the policy is not met. 7. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that if, after considering the submissions, the panel finds that the complaint was brought in bad faith or was brought primarily to harass the domain name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
In view of the Panel's analysis above, and in particular fair questions concerning the Respondent's right or legitimate interest in the domain name, as well as Complainant's lack of knowledge concerning the Respondent and the Respondent's motives prior to the filing of this case (noting here that the Respondent did not reply to the Complainant's cease and desist letter, where such matters may have been raised), the Panel does not consider this a case of RDNH. 8. Decision
For the foregoing reasons, the Complaint is denied.
Peter Wild
Sole Panelist
Date: January 31, 2018
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