The Complainant is Stadl Media GmbH, Vienna, Austria, represented by Donath Law, Austria.
The Respondent is Hui Min Song of Macau, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2018. On August 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 1, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was 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 August 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2018.
The Center appointed Jane Seager as the sole panelist in this matter on September 17, 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, Stadl Media GmbH, publishes a magazine entitled “Stadlpost” centered around “schlager” music and its performers. The denomination “Stadlpost” was first used for a print publication in 1997 “Musikanten Stadlpost” and since 2012 the publication has simply been entitled “Stadlpost”. Every year approximately 160,000 copies of the magazine are sold, predominantly in German speaking countries.
The Complainant has the following registered trade mark rights in the term STADLPOST:
- Austrian Trade Mark No. 171905 (Am 4541/1997), for the word mark STADLPOST, registered on October 6, 1997 (classes 16 and 41); and
- International Trade Mark No. 682459 for the word mark of STADLPOST, registered on October 6, 1997 (classes 16 and 41).
The Respondent appears to be an individual based in China. No additional information about the Respondent is known.
The Domain Name was registered on December 23, 2014 by another individual, a Mr. G. Haberfellner, based in Austria, who runs a website competing with the Complainant’s publication. It has never been used to point to an active website and was transferred to the Respondent around March 20, 2018, shortly after the Complainant sent a cease and desist letter to Mr. Haberfellner. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it has developed a strong name and reputation in relation to its publication in the music industry. The Complainant contends that its STADLPOST trade mark is a distinctive indicator of the source of its goods and services in German speaking countries and regions, mainly in Austria, Germany, Switzerland and Northern Italy. As evidence, the Complainant has supplied a copy of its trade mark registration certificates.
Furthermore, the Complainant claims to be the owner of a number of country code Top-Level Domain names (“ccTLDs”) containing its STADLPOST trade marks. The Complainant submits that these domain names include , , and .
In response to each of the requirements under the Policy, the Complainant asserts as follows:
(i) The Domain Name is confusingly similar to the Complainant’s trade mark
The Complainant states that it has two registered trade marks in the term STADLPOST, which can be traced back as early as 1997. Furthermore, the Complainant asserts that its brand has built up substantial recognition in the public domain, supported by endorsements on social media and the substantial number of visits to its website per year.
According to the Complainant, the Domain Name is identical to the Complainant’s STADLPOST trade mark as the Domain Name incorporates it in its entirety.
(ii) The Respondent has no rights or legitimate interests in the Domain Name
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant claims that the Domain Name was originally registered in the name of another individual, Mr. Haberfellner, who transferred the Domain Name to the Respondent immediately after receiving a cease and desist letter from the legal representative of the Complainant.
Furthermore, the Complainant provides evidence that Mr. Haberfellner made an explicit attempt to sell the Domain Name to the Complainant before receiving a cease and desist letter from the legal representative of the Complainant.
The Complainant submits that the Domain Name has not been used for any activity, in particular not for any bona fide commercial activity.
Moreover, the Complainant avers that the Respondent has never been known by the Domain Name at any point in time and has no commercial or private connection to the term STADLPOST in which the Complainant has rights.
The Complainant states that the Respondent is not making a fair or non-commercial use of the Domain Name in any manner.
(iii) The Domain Name was registered and is being used in bad faith
The Complainant argues that its trade marks for the term STADLPOST significantly pre-date the registration of the Domain Name by Mr. Haberfellner in 2014. Furthermore, the Complainant submits that the acquisition of the Domain Name in 2014 happened long after the term “Stadlpost” was widely used by the Complainant and its predecessor for print products and in marketing, and registered under various ccTLDs.
The Complainant avers that Mr. Haberfellner is a competitor of the Complainant and it is therefore possible that the Domain Name may be used to disrupt the Complainant’s legitimate business and to cause confusion in the marketplace.
Moreover, the Complainant submits that Mr. Haberfellner made an attempt to sell the Domain Name to the Complainant without indicating a specific price, but insinuating that the price would be in excess of his out-of-pocket-expenses directly related to the acquisition of the Domain Name.
According to the Complainant, the transfer of the Domain Name to the Respondent by Mr. Haberfellner clearly shows his bad faith. The Complainant argues that the Respondent, if a real individual, has also acted in bad faith in acquiring the Domain Name from Mr. Haberfellner who has no relationship or right whatsoever to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.
In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent did not reply to the Complainant’s contentions. The Respondent’s failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Taking the aforementioned provisions into consideration, the Panel finds as follows: A. Preliminary issue: Identity of the Respondent
The Panel notes that the respondent is defined by the Rules as “the holder of a domain-name registration against which a complaint is initiated” (see paragraph 1 of the Rules). Therefore, the Respondent in the present proceedings is Hui Min Song, the individual appearing on the WhoIs record and confirmed by the Registrar (see Accor, SoLuxury HMC v. Jim Green,WIPO Case No. D2011-1773 and France Billet v. Privacy Administrator, Anonymize, Inc.,WIPO Case No. D2015-1641).
In view of the factual circumstances outlined by the Complainant, the Panel finds that there is insufficient evidence for purposes of the Policy to name Mr. Haberfellner as Respondent in these proceedings. Regardless, the Panel notes from the circumstances surrounding his exchange with the Complainant, including the coincidental timing of the change of registrant information, that it is not implausible that Mr. Haberfellner may still exercise control over the Domain Name. However, the Panel does not find conclusive evidence of such control in the record before it. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has provided evidence that it has registered trade mark rights in the term STADLPOST. The Panel is therefore satisfied that the Complainant has established relevant trade mark rights.
The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trade mark. In this regard, the Panel notes that the Domain Name incorporates the Complainant’s distinctive STADLPOST trade mark in its entirety. See section 1.9 of the WIPO Overview 3.0: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Furthermore, it is widely accepted that the “.com” generic Top-Level-Domain (“gTLD”) is generally irrelevant for the purpose of assessing identity or confusing similarity between a trade mark and a domain name.
The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trade mark.
The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including but not limited to:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
A complainant is required to make a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. 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 in question. If, however, 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. See section 2.1 of the WIPO Overview 3.0.
The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Name and that, as a result of his default, the Respondent has failed to rebut such a showing.
The Respondent is not affiliated or connected in any way with the Complainant and nor has it been authorised by the Complainant to make any use of its STADLPOST trade mark. There is no evidence that the Respondent is commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy.
The Respondent’s use of the Domain Name to resolve to an inactive web page cannot be considered use in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the Domain Name.
Finally, the Respondent’s lack of rights or legitimate interests in the Domain Name may be inferred from the Respondent’s failure to submit a response to the Complaint. See Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:
“(i) circumstances indicating that you have registered or you have 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
As far as bad faith is concerned, the Domain Name was resolving to an inactive web page at the time of filing and has seemingly never been used to point to any active content. However, the consensus view amongst WIPO panels is that “the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”. See paragraph 3.3 of the WIPO Overview 3.0. In this case, the Panel is convinced that the overall circumstances of this case strongly suggest that the Respondent’s non-use of the Domain Name is in bad faith. Such circumstances include the strength and renown of the Complainants’ STADLPOST trade marks and the Respondent’s failure to take part in the present proceedings. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel finds that for purposes of its assessment under this third element, the Panel must consider the time at which the Respondent Hui Min Song obtained the registration of the Domain Name as the relevant time for considering the question of registration in bad faith. As noted, the Panel finds it possible that Mr. Haberfellner retains some ownership or control of the Domain Name, but the evidence is insufficient for the Panel to conclude such for purposes of the Policy. Therefore the prior actions of Mr. Haberfellner are not considered for purposes of the Panel’s assessment.
On the basis of the record before it and in the absence of any Response the Panel considers that the Complainant has satisfied 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 Domain Name be transferred to the Complainant.
Jane Seager
Sole Panelist
Date: October 1, 2018
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