The Complainant is Bartec GmbH of Bad Mergentheim, Germany, represented by Bardehle Pagenberg, Germany.
The Respondent is Privacy Administrator, Anonymize, Inc. of Bellevue, Washington, United States of America (“United States”) / Brady Moritz, Brady of Houston, Texas, United States, represented by Rabbit IP LLC, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Epik, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2018. On August 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 27, 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 amendment to the Complaint on August 30, 2018.
The Center verified that the Complaint together with the amendment to 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 September 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2018. The Response was filed with the Center on September 5, 2018.
The Center appointed Luca Barbero 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 is active in the field of explosion protection and offers a product portfolio ranging from complex measurement and analysis technology via innovative heating technology solutions to explosion-proof components and systems for automation, control and communication. Its customers include the oil and gas industry as well as chemical, petrochemical and pharmaceutical companies from several countries of the world, including the United States.
The Complainant is the owner of the United States trademark registration No. 1453996 for BARTEC, filed on June 19, 1986, and registered on August 25, 1987, for goods in International classes 9, 11, 37, and 42.
The Complainant is also the owner of various domain names consisting of, or including, BARTEC, such as , , , , and .
The disputed domain name was first registered on May 23, 1996. However, according to the uncontradicted information provided by the Complainant and as confirmed in the Respondent, it was transferred from a prior registrant to the Respondent in 2015. The disputed domain name has been pointed to a parking page with sponsored links. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to the Complainant’s trademark BARTEC.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name since:
i) the Complainant has not found that the Respondent has any registered trademarks or trade names or even personal names corresponding to “BARTEC” or the disputed domain name;
ii) no license or authorization of any other kind has been given by the Complainant to the Respondent to use BARTEC or the disputed domain name;
iii) the mere registration of a domain name does not give the owner a right or legitimate interest in respect of the disputed domain name;
iv) the Respondent’s use of the disputed domain name in connection with a website displaying sponsored links also related to third party websites offering amongst other services relating to the core business field of the Complainant does not amount to a bona fide offering of goods or services. To the contrary, the Respondent has intentionally chosen a domain name identical with a registered trademark and the trade name of the Complainant in order to generate traffic to sites with sponsored links.
The Complainant submits that the Respondent registered the disputed domain name in bad faith because:
i) the Respondent was clearly aware of the prior rights of the Complainant in the trademark BARTEC, which was registered in 1987 and therefore well before the registration of the disputed domain name and even more so before the transfer to the Respondent in December 2015;
ii) the Respondent is offering, on the website under the disputed domain name, sponsored links to websites offering products and services (“explosion protection”) which are to be used for or in connection with goods offered by the Complainant under its trademark BARTEC.
The Complainant asserts that the Respondent is using the disputed domain name in bad faith since:
i) the Respondent is using the disputed domain name, identical to the trademark BARTEC, in order to generate traffic to websites with sponsored links which are related to the Complainant’s business. The Respondent is, thus, using the Complainant’s mark to attract visitors to its website for commercial gain;
ii) a person acting on behalf of the Complainant contacted the Respondent offering USD 5,000 for the transfer of the disputed domain name and the Respondent replied submitting a counteroffer of USD 76,000. Therefore, the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant, owner of the correspondent registered trademark, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name under Policy paragraph 4(b)(i);
iii) the disputed domain name was initially registered by a privacy or proxy service. While this is, as such, not evidence of bad faith, using a privacy service for registering the disputed domain name, pointed to a sponsored links website and offered for sale at an exaggerated price, shows that the privacy/proxy service has been used to hide the real identity of the underlying registrant. B. Respondent
Regarding the first requirement, the Respondent states that, when one takes the visual and aural view in consideration, the disputed domain name cannot be said to be the same as the Complainant’s trademark BARTEC since there are many different factors to consider, such as appearance, commercial impression, nature of the services offered and the dominant textual elements of the mark. The Respondent in particular highlights that the disputed domain name is not used in connection with services similar to the ones offered by the Complainant.
The Respondent contends that the Complainant has failed to show that the Respondent has no rights or legitimate interest in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy because:
i) it neither knew, nor had any reason to know of, the Complainant or its BARTEC trademark at the time it registered the disputed domain name and the Complainant has failed to produce any evidence to show the extent of its fame outside of Germany as at that date;
ii) it has never used the disputed domain name for any purpose that has to do with the Complainant’s trade in explosion proofing;
iii) there is not a scintilla of evidence that the Respondent is acting with a BARTEC mark holder’s rights in mind, such use of the disputed domain name is a valid business model and shall be regarded as giving rise to rights and legitimate interests of the Respondent in the disputed domain name for the purposes of the test under the Policy. The Respondent also vehemently negates the Complainant’s contentions that the Respondent is using sponsored links to direct the viewers to the Complainant’s competitors;
iv) The fact that the Respondent responded to the Complainant’s enquiry to purchase the disputed domain name is not improper and does not make its use of it illegitimate.
The Respondent submits that it did not register or use the disputed domain name in bad faith because:
i) while it is true that parking pages and sponsored links could be evidence of bad faith registration and use, the links on the current parking page do not link to any references to the Complainant. Rather, most of the current links are about tires and none of which reference anything that appears to target the Complainant;
ii) the fact that the Respondent sought to sell the disputed domain name for a sum in excess of its out-of-pocket costs is not in itself, sufficient to find that the disputed domain name was registered in bad faith. Moreover, in the absence of bad faith, seeking a high price is not inherently objectionable;
iii) in the absence of any evidence or even argument, as to why the Complainant’s trademark registrations for BARTEC or the overall repute of its brand in the United States should have come to the attention of the Respondent as at the time of registration of the disputed domain name, it must fail.
The Respondent requests the Panel to issue a finding of Reverse Domain Name Hijacking (“RDNH”) based on the following grounds:
i) the Complainant’s delay in taking action against the Respondent in the 3 years since the disputed domain name was registered by the Respondent raises the inference that the Complainant did not truly believe that the disputed domain name was registered or used in bad faith;
ii) there is no basis for the Complainant’s claim and the Complainant, through its representatives, should have known that. Any amount of due diligence would have shown that the Complainant could not prove two of the three requirements;
iii) the Complainant filed the Complaint as a “Plan B”, intended to deprive the Respondent of a valuable domain name that the Complainant has failed to acquire it in the market;
iv) the strategy of bringing complaints after commercial negotiations have failed has been considered as “highly improper” by a number of panels and contributed to findings of RDNH. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed 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 disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a United States trademark registration for BARTEC.
As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The Panel finds that the disputed domain name is identical to the Complainant’s word mark BARTEC, as it reproduces the mark in its entirety with the mere addition of the generic Top-Level Domain (“gTLD”) “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See i.a., Banco Itau S.A. v. Laercio Teixeira,WIPO Case No. D2007-0912; Wal-Mart Stores, Inc. v. WalMart Careers, Inc.,WIPO Case No. D2012-0285.
Based on the records, there is no relation between the Parties and the Complainant has not authorized the Respondent to use its trademark BARTEC or to register and use the disputed domain name. There is also no evidence that the Respondent might be commonly known by the disputed domain name or might have acquired trademark rights in the term BARTEC.
As highlighted above, the disputed domain name has been pointed to a parking page with sponsored links. According to the screenshot submitted by the Complainant, some of the links displayed on the website relate to the Complainant’s core business, i.e., explosion protection systems. The Respondent denied that it used the disputed domain name in connection with links related to the Complainant but did not provide any evidence to demonstrate that it actually used the disputed domain name in connection with content unrelated to the Complainant and its business. Moreover, the Panel’s verifications on the website to which the disputed domain name resolves1 showed that the links published therein indeed correspond to the ones featured in the screenshot submitted by the Complainant.
As stated in Section 2.9 of the WIPO Overview 3.0, “Panels have recognized that the use of a domain name to host a page comprising PPC [‘pay-per-click’] links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark”.
In view of the Respondent’s use of the disputed domain name in connection with sponsored links also related to the Complainant’s products and services under the trademark BARTEC, the Panel finds that the Respondent’s use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name without intention to misleadingly divert the consumers or to tarnish the Complainant’s trademark.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As mentioned in Section 4 above, the disputed domain name was first registered on May 23, 1996, but was transferred to the Respondent in 2015, years after the registration of the Complainant’s trademark in the United States and the start of the Complainant’s business under the trademark BARTEC.
The date on which the Respondent acquired the disputed domain name is the date the Panel will consider in assessing the Respondent’s bad faith (see section 3.9 of the WIPO Overview 3.0).
Based on the documents on records and on the information provided on the Complainant’s website, the Panel is persuaded that, at the time of registration of the disputed domain name, the Complainant’s trademark was already used by the Complainant in Europe, United States and several other countries of the world in connection with the specific products and services provided by the Complainant.
In light of the identity of the disputed domain name with the Complainant’s trademark BARTEC, of the Respondent’s failure to provide any evidence to demonstrate that it registered the disputed domain name for a legitimate purpose not interfering with the Complainant’s business, and of the Respondent’s use of the disputed domain name in connection with a pay-per-click website displaying several sponsored links related to the Complainant’s business under the trademark BARTEC, the Panel finds that the Respondent, on balance of probabilities, registered the disputed domain name with the Complainant’s trademark in mind.
In light of the use of the disputed domain name described above, the Panel also finds that the Respondent intentionally attempted to attract users to its website for commercial gain, by causing a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website according to paragraph 4(b)(iv) of the Policy.
Therefore, based on the records before it and on balance of probabilities, the Panel finds that the Complainant has proven that the disputed domain name was registered and is being used by the Respondent in bad faith according to paragraph 4(a)(iii) of the Policy.
In view of the above, the Respondent’s request for a finding of RDNH is denied. 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.
Luca Barbero
Sole Panelist
Date: October 2, 2018
1 As held in section 4.8 of WIPO Overview 3.0, “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name […]”.
Full & Egal Universal Law Academy