The Complainant is György Pintz, Pintz & Partners LLC of Budapest, Hungary, internally-represented.
The Respondent is Outlook World, Outlook World of Bodden town, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 26, 2018. On July 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2018, the Registrar transmitted by email to the Center its verification response disclosing the registrant and contact information for the disputed domain name. The Center sent an email communication to the Complainant on July 30, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 31, 2018.
The Center verified that the Complaint together with the amended 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 August 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 28, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on September 10, 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 a law firm in Budapest, Hungary. Founded more than 30 years ago, a major portion of the Complainant's legal practice is concentrated in the area of intellectual property ("IP"), including professional consultation, updating and restoration of computer software, and computer software system design. The Complainant is the owner of the trademark GEORG PINTZ & PARTNERS, reg. no. 167777, applied for on October 4, 2000, and registered with the Hungarian Intellectual Property Office in Class 42 on December 3, 2001. The Complainant trades under the business name PINTZ & Partners, and is the holder of the domain name .
The Respondent registered the disputed domain name on December 1, 2000, within two months of the filing of the Complainant's trademark application. The disputed domain name currently resolves to a pay-per-click website that includes advertising links to software systems and applications. The disputed domain name is also advertised for sale on the Respondent's website. 5. Parties' Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant's trademark GEORG PINTZ & PARTNERS. The Complainant contends that Internet users encountering the disputed domain name would expect it to be owned by the Complainant.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant represents that the Respondent has not been licensed or otherwise authorized to use the Complainant's mark. The Complainant asserts that the Respondent has neither used the disputed domain name in connection with a bona fide offering of goods or services nor made any legitimate noncommercial or fair use of the disputed domain name. According to the Complainant, the Respondent has used the disputed domain name with a pay-per-click website with sponsored listings, and has held the disputed domain name out for sale on the website, in order to exploit and profit from the Complainant's trademark rights.
The Complainant submits that the Respondent registered and has used the disputed domain name in bad faith. The Complainant maintains that its GEORG PINTZ & PARTNERS mark is well-known in the field of IP services, and emphasizes that the Respondent registered the disputed domain name shortly after the Complainant applied to register the mark. The Complainant asserts that the Respondent could not conceivably have registered the disputed domain name without an awareness of the Complainant and the Complainant's mark.
The Complainant maintains that the Respondent has attempted to attract Internet users to the Respondent's pay-per-click website by creating a likelihood of confusion with the Complainant's mark. According to the Complainant, the sponsored links on the Respondent's website display labels such as "Software System", "Management System" and "Computer Software Programs," which are relevant to services provided by the Complainant under its GEORG PINTZ & PARTNERS mark. The Complainant submits that the Respondent registered the disputed domain name to prevent the Complainant from registering a domain name reflecting the Complainant's mark, and has used the disputed domain name to divert traffic to the Respondent's website, with the intention of selling the disputed domain name to the Complainant at an exorbitant price. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term "cybersquatting" is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
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, UDRP 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 the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the 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. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's GEORG PINTZ & PARTNERS mark, in which the Complainant has established rights. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant's trademark and the disputed domain name.
In this case, the Panel finds that the Complainant's mark is recognizable in the disputed domain name, as the PINTZ name is the dominant and distinctive element of the Complainant's mark.2 Top-Level Domains ("TLDs") generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.3
While the content of the website associated with a disputed domain name is typically disregarded by UDRP panels when assessing confusing similarity under the first element, the Panel also notes that given the Respondent's website content, the disputed domain name appears calculated to play off of the confusing similarity of the disputed domain name with the Complainant's mark, and indicates targeting of the Complainant's mark by the Respondent.4
While the Policy makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. Accordingly, the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant's standing to file a UDRP case, nor a panel's finding of identity or confusing similarity under the paragraph 4(a)(i) of the Policy.5
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to register or use the Complainant's GEORG PINTZ & PARTNERS mark. The Respondent notwithstanding has registered the disputed domain name, which is confusingly similar to the Complainant's mark. As noted earlier, the Respondent has used the disputed domain name in a manner consistent with the targeting of the Complainant's mark.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not come forward with any evidence of rights or legitimate interests in the disputed domain name. In the absence of any explanation from the Respondent, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Internet users upon encountering the disputed domain name could easily expect they would be transported to the Complainant's website, or a website sponsored, affiliated or endorsed by the Complainant. Further, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant's mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Respondent's opportunistic registration and use of the disputed domain name clearly reflects the Respondent's intent to exploit or otherwise capitalize on the Complainant's existing or nascent trademark rights, and is indicative of the targeting of the Complainant's mark by the Respondent. See WIPO Overview 3.0, section 3.8.2. The Respondent has used the disputed domain name to divert Internet users to a pay-per-click website and has offered the disputed domain name for sale. The Panel thus concludes that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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.
William R. Towns
Sole Panelist
Date: September 24, 2018
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.
2 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
3 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.
4 See WIPO Overview 3.0, section 1.15.
5 See WIPO Overview 3.0, section 1.1.3 and cases cited therein.
Full & Egal Universal Law Academy