The Complainant is Deutsche Energieversorgung GmbH of Leipzig, Germany, represented by Maiwald Patentanwaltsgesellschaft mbH, Germany.
The Respondent is MustN of Taipei, Taiwan, Province of China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2018. On April 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 17, 2018, 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 April 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2018.
The Center appointed Ellen B Shankman as the sole panelist in this matter on May 31, 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 date of the creation Domain Name registration was November 30, 2002.
- The Panel also conducted an independent search to determine that the Domain Name is currently active, and appears to be a “parking page” with links to advertisements.
- The Complainant also provided evidence of correspondence between the parties regarding an offer to obtain transfer of the Domain Name for 1000 EUR that was rejected by the Respondent as being “insufficient”.
- Since the Respondent did not respond to this Complaint, the facts regarding the use and fame of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case. 5. Parties’ Contentions A. Complainant
The Complainant offers little information about the history of its company and its brand other than providing “bare bones” allegations and providing evidence of registration of its trademarks, which include, inter alia, European Union Trade Mark No. 015879621 for SENEC (registered June 5, 2017) and European Union Trade Mark No. 015879604 for SENEC.IES (registered April 19, 2017) for goods and services in the field of energy production.
The Complainant further alleges that it contacted the Respondent to obtain the Domain Name for an excess of its reasonable value, and provided evidence of both the correspondence (referred to above) between the parties and some third party evaluation of the value of the Domain Name.
In addition, the Complainant claims that the Respondent has a pattern of “serial” abusive conduct in registration of other domain names, and supplied citations to cases where other UDRP panels found against the same Respondent.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark SENEC, in respect of goods and services in the field of energy production. The Domain Name is confusingly similar to the trademark owned by the Complainant. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. The Respondent rejected an offer of 1000 EUR which is in excess of the value of the Domain Name as “insufficient”. The Respondent has lost other UDRP cases, and therefore there is a “pattern” of bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith. 6.1. Language of the Proceeding
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 proceedings”.
The Complainant provided evidence that the language of the Registration Agreement is English, as well as copies of correspondence between the parties in English. At no point did the Respondent address this issue with WIPO.
In light of the circumstances, even though the Respondent resides in Taiwan, the Panel finds the arguments made by the Complainant to be persuasive, and the Panel finds under paragraph 11(a) of the Rules that it is fair to continue these proceedings and to issue an opinion in English. 6.2. Substantive Issues A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for Senec.
Further, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement of the Policy. C. Registered and Used in Bad Faith
In the circumstances of this case, the Panel is not persuaded by the Complainant’s assertions that the Respondent has registered and used the Domain Name in “bad faith” just because the offer the Complainant made – even if apparently more generous than what the Complainant feels the Domain Name may be worth – was rejected by the Respondent. The Complainant has incorrectly summarized the circumstances in which bad faith will be found, as set out at paragraph 4(b)(i) of the Policy. It is insufficient for the Complainant to establish simply that the attempted sale has been “for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name”. The Complainant must also establish that the Respondent “registered or acquired the domain name primarily for the purpose of selling [emphasis added], renting, or otherwise transferring the domain name to the complainant [emphasis added] who is the owner of the trademark or service mark or to a competitor of that complainant [emphasis added]”. There is no evidence, even by inference, to support such a finding.
The Complainant tries to show that since the Domain Name was valued by a third party to be less than USD 10, and the offer made by the Complainant and rejected by the Respondent as “insufficient” was for 1000 EUR, and thus in excess of the reasonable value, this should constitute bad faith. Here too closer inspection of the correspondence appears to be the only discussion and offer of money to be by the Complainant, and not driven by the Respondent. The fact that the parking page has the language that the Domain Name may be for sale without further evidence of some knowledge of the Complainant’s brand or misleading tie to the Complainant’s field of goods and services is not itself sufficiently persuasive to the Panel that the registration and use of the Domain Name was done in bad faith.
When considering whether passive holding of a domain name might amount to bad faith, panelists will consider the totality of the circumstances. While it is true that parking pages and links could be evidence of bad faith registration and use, the links on the current parking page do not link to any references to “energy” or to the Complainant. Rather, most of the current links appear to be to free Internet TV and movies, and none of which reference anything that appear to target the Complainant.
While citing other cases where UDRP Panels have found against the Respondent might be interpreted as making the case that this is a “serial” bad actor, there is nothing clear in this case that the Respondent knew about or capitalized on the Complainant’s name and reputation.
More importantly, the Domain Name was registered in 2002 which is – on the record before the Panel – significantly before the Complainant acquired trademark rights. The Panel therefore finds that the Complainant has failed to show that the Respondent has either registered or used the Domain Name in bad faith.
Given the insufficiency of the evidence of the timing of the registration of the Domain Name with apparent full knowledge and the Respondent’s reply to the Complainant’s request for voluntary transfer of the Domain Name, the Panel finds that the Complainant has not satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Ellen B Shankman
Sole Panelist
Date: June 4, 2018
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