The Complainant is Stöbich Brandschutz GmbH, Germany, represented by Gramm, Lins & Partner, PartGmbB, Germany.
The Respondent is Danny Sullivan, Pennsylvania, United States of America (“United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2019. On November 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 2019, 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 November 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2019.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 9, 2019. 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 BackgroundThe following information is taken from the Complaint, and also from the Complainant’s corporate website, which was entered into the record in this case. The Complainant is a private limited company organized under the laws of Germany with a place of business at Goslar, Germany. Its origins date back to 1978, when it was founded by Dr. Jochen Stöbich to develop the first fire protection closures for conveyor systems. It has been manufacturing standard designs and customized solutions for architectural and industrial projects in preventive building-related fire protection for more than 35 years. The Complainant’s international exports amount to approximately 45% of its total sales and it operates in over 50 countries across the globe, both through partners and via its 11 sales companies, which include Stöbich Fire Protection Systems Inc. in the United States, where the Respondent is based. The Complainant has won multiple awards for its fire protection products, including for innovation in the field and in respect of foreign trade performance.
The Complainant is the owner of a variety of registered trademarks for the word mark STÖBICH including German registered trademark no. 307451437, registered on September 7, 2007, and international registered trademark no. 956298, registered on January 3, 2008 and designated for multiple territories, each in international classes 9, 37, and 42. The Panel notes that the Complainant claims that the latter mark is designated in respect of the United States. However, the registered extension of protection appears not to have been renewed and the mark is showing as no longer active in the United States with effect from January 4, 2018. In checking the status of said mark, the Panel also identified the existence of another registered trademark in the United States which is owned by the Complainant but was not cited in the Complaint, namely the design and word mark STÖBICH FIRE PROTECTION, registered on March 25, 2014. Said mark consists of the word “stöbich” in stylized uppercase red letters above the words “fire protection” in white uppercase letters with a red background and disclaims the exclusive right to use the words “fire protection” apart from in the mark as shown.
The disputed domain name was created on February 4, 1998. The website associated with the disputed domain name points to a page at “www.dan.com”, at which it is offered for sale in the sum of USD 5,000. The Complainant shows with reference to a historic WhoIs entry dated February 1, 2017 that it was the holder of the disputed domain name on that date. It further shows with reference to a later record dated March 31, 2017 that the Respondent acquired the disputed domain name after the Complainant inadvertently failed to renew it. Little is known regarding the Respondent, who has failed to respond to the Complaint. However, it appears that the Respondent may also have been the respondent in two previous cases under the Policy, namely Damsté advocaten – notarissen v. Danny Sullivan,
WIPO Case No. D2017‑1794 (hereinafter “Damsté”) and Infraestructura Energetica Nova, S.A.B. de C.V. v. Danny Sullivan,
WIPO Case No. D2019‑1942. In both of these cases, the Respondent described itself as a domain name trader and entitled to offer domain names for sale.
In the first of said cases, a three member panel found in the Respondent’s favor relative to the domain name
In the second case, a single member panel found against the Respondent in respect of the domain name
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith.
The Complainant notes that the disputed domain name differs from its STÖBICH registered trademarks only by lacking the dots above the letter “o”, which represent the German language umlaut, and that the disputed domain name is thereby confusingly similar to the Complainant’s mark. The Complainant asserts that the Respondent has no trademark rights in the word “stobich”, and that the Complainant has not licensed the use of its marks to the Respondent. The Complainant adds that the Respondent acquired the disputed domain name after the Complainant’s trademarks came into force.
The Complainant explains that it failed to renew the registration of the disputed domain name and that the Respondent registered it as soon as it became available. The Complainant argues in consequence that it is highly unlikely that the Respondent has ever been commonly known by the disputed domain name. The Complainant notes that the disputed domain name directs potential visitors seeking the Complainant’s commercial website to the Respondent’s site at which the disputed domain name is offered for sale, asserting that this is not a bona fide offering of goods or services and does not constitute a legitimate noncommercial or fair use of the disputed domain name. The Complainant asserts that the only reason why the Respondent would have wanted to register or use the disputed domain name was because it knew of the Complainant’s prior registration of the disputed domain name and wished to take advantage of its failed renewal by selling it back to the Complainant.
The Complainant states that in assessing the question of registration and use in bad faith, all relevant circumstances must be taken into consideration, including the economic gain of the use, the violation of interests of the trademark holder, and the degree of misleading of the public. The Complainant submits that the Respondent has acted in bad faith if its primary intent was to sell the disputed domain name to the trademark owner or its competitor for a price in excess of out-of-pocket expenses related thereto, adding that the price which the Respondent seeks corresponds to that description.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Preliminary Matters - No ResponseAs the Respondent did not file any Response in this case, the Panel has closely examined the manner of notification of the Complaint. The Panel notes that there appears to be a minor typographical error in one of the addresses to which notification of the Complaint was sent by courier, in that the element “5th Ave", as provided in the Registrar-supplied verification address, was truncated to “5h Ave”. Nevertheless, delivery took place successfully and was signed for by a named individual. A second set of Respondent contact details was provided in the Complaint, the origins of which are not clear to the Panel. These details contained the same building address, correctly specified as “5th Ave”, but with a different apartment number and a partially truncated zip code. Notification of the Complaint was also couriered to the latter address.
According to the courier’s delivery receipts for each of the written notifications, the two packages were delivered and signed for by the same individual at the same time. This indicates to the Panel that delivery was completed successfully to the Respondent’s address as verified by the Registrar and that said minor typographical error is of no significance. Furthermore, the Panel notes that no delivery failure was indicated when the Center sent the electronic form of the Complaint by email to the email address specified for the Respondent in the Registrar verification. In all of these circumstances, the Panel considers that the Center has discharged its responsibility under Paragraph 2(a) of the Rules “to employ reasonably available means calculated to achieve actual notice to Respondent”.
In the above circumstances, the Panel is of the opinion that it may proceed to a decision in this Complaint and to draw inferences from the Respondent’s failure to file any Response. While such failure does not automatically result in a decision in the Complainant’s favor, the Panel may draw appropriate inferences from the Respondent’s default (see, for example, Visma AS v. Domain Admin, Whois Privacy Corp.,
WIPO Case No. D2019-1339 and Verner Panton Design v. Fontana di Luce Corp,
WIPO Case No. D2012-1909 and the further cases there cited).
The Panel is satisfied that the Complainant has rights in its STÖBICH registered trademark as noted in the factual background section above. The Panel acknowledges that the Complainant’s international registered trademark appears to have expired as far as its United States designation is concerned, while noting that it remains otherwise in force for multiple other territories. This is of no significance for the first element analysis (see section 1.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The generic Top-Level Domain (“gTLD”), in the case of the disputed domain name, “.com”, is not normally to be taken into consideration in the determination of identity or confusing similarity (see section 1.11 of the WIPO Overview 3.0). Comparing the Complainant’s trademark to the second level of the disputed domain name, the Panel notes that this is identical with the exception of the addition of the umlaut to the letter “ö” in the Complainant’s trademark. For technical reasons, an umlaut cannot be reproduced in domain names of the disputed domain name’s type, being a non-internationalized domain name, and is of no distinguishing effect (see, for example, the analysis in Dürr Aktiengesellschaft v. Rob Monster, Digital Town, Inc.,
WIPO Case No. D2018-0757).
In all of these circumstances, the Panel finds the first element under the Policy to be established.
C. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 trademark 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 trademark or service mark at issue”.
The record before the Panel does not indicate that any of the above circumstances apply in this case. The Complainant contends that it has not licensed the use of its STÖBICH registered trademarks to the Respondent; that the Respondent has no trademark rights in the word “stobich”; and that the Respondent acquired the disputed domain name after the Complainant’s said trademarks came into force, with a view to selling the disputed domain name back to the Complainant, following the Complainant’s failure to renew the same. The Panel is of the opinion that the Complainant has thereby established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the burden of production shifts to the Respondent to demonstrate its rights or legitimate interests in respect of the disputed domain name (see, for example, Do The Hustle, LLC v. Tropic Web,
WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003‑0455).
The Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name in that it has not filed any Response or otherwise answered the Complainant’s contentions. The Panel has identified the possibility from the Complainant’s website that the STÖBICH mark may be derived from the surname of its eponymous founder. Although the Respondent advanced an argument in Damsté, supra, that it was engaged in the registration of domain names corresponding to surname, no such argument has been put forward here. In any event, there are a number of significant differences between the case in which such argument was advanced and the present case, which will be discussed in the next section.
In all of these circumstances, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case that it has no rights or legitimate interests in the disputed domain name and accordingly that the second element under the Policy has been established.
D. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(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 trademark 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 trademark 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 on line 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”.
In the present case, the Complainant contends that the Respondent has targeted it and its mark through the registration of the disputed domain name after it was inadvertently allowed by the Complainant to lapse. The Complainant goes on to argue that it was further targeted via the Respondent’s subsequent offer of the disputed domain name for sale at a price of USD 5,000. It appears from the historic WhoIs records that the Respondent has indeed engaged in the practice of registering a domain name upon its lapsing through failure on the part of the previous registrant to renew it, sometimes described as “drop catching”. The Complainant asserts that the Respondent did so in bad faith, primarily for the purpose of selling the disputed domain name to the Complainant for an amount in excess of the Respondent’s out-of-pocket costs. The Respondent has not answered such contention and, notably, has not taken the opportunity to deny this allegation.
The principles to be applied in such a situation are outlined in the recent case of Christopher Lane v. JInsoo Yoon (Kukmin),
WIPO Case No. D2019-1388, in which the observations of the panel in Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com,
WIPO Case No. D2018-0540 were quoted and adopted. The central tenet is that in a “drop catching” scenario, the knowledge and intention of a respondent should be judged objectively.
Objective considerations may include, for example: (i) whether the domain name concerned has been registered without regard to whether it will abuse the trademark rights of a third party and without any apparent effort to avoid so doing; (ii) whether such registration abuses the trademark rights of the immediately-prior registrant, namely, in this case, the Complainant; (iii) whether the value of such domain name derives primarily from the fact that it represents the Complainant’s trademark, rather than from the fact that it contains arguably a descriptive term, such that the Respondent may be considered to have registered the disputed domain name for the primary purpose of selling it to the Complainant; and (iv) whether the Respondent may be considered to have registered such domain name to prevent the Complainant from reflecting its trademark in a corresponding domain name, so long as the Respondent is found to have engaged in a pattern of such conduct.
In the present case, there is no indication that the Respondent made any effort to avoid third party trademark rights in the “drop catching” of the disputed domain name. Had it performed any search for the Complainant’s marks in its own jurisdiction, for example, this would have identified both the Complainant’s international mark, as it was still in force in the United States at that time, and the Complainant’s other United States registered trademark, as noted in the factual background section above. In Damsté, supra, the Respondent focused upon the fact that the complainant in that case was only active in its home country and not in the United States where the Respondent is based. The same could not be said in the present case and, in any event, the Respondent has not attempted to advance any such argument. The Panel makes the reasonable inference from the lack of a Response that such argument is not available to the Respondent in this case.
The Panel notes that there is a reasonable indication from the record that the registration of the disputed domain name by the Respondent abuses the trademark rights of the immediately-prior registrant. While the Panel would have preferred to see a greater volume of independent evidence from the Complainant as to the extent of its reputation and the nature and value of its trading activities1, or alternatively the Respondent’s willful blindness thereto, there is nevertheless sufficient material before the Panel showing, on the balance of probabilities, that the Complainant has reasonably substantial rights of a global nature in the STÖBICH mark which were likely to be, and are being, negatively impacted by the Respondent’s registration of the disputed domain name. These rights are sufficiently extensive and relate in part to trading activity where the Respondent is based, such that it is reasonable to infer the Respondent’s knowledge of the Complainant and its rights at the point of registration of the disputed domain name.
In failing to provide any Response, the Respondent has also failed to advance any case that the value which it has ascribed to the disputed domain name derives primarily from a descriptive term and not from any trademark value. This is an argument which the Respondent did put forward in Damsté, supra,regarding its alleged registration of surname domain names for a genealogy project and, for that reason, the Panel will for completeness examine this possibility insofar as it may relate to the present case.
The Respondent asserted in Damsté that the surname concerned was “fairly common” and appeared to provide corresponding evidence. Both such assertion (if available to the Respondent) and corresponding evidence are lacking here. The three member panel in Damsté agreed that such surname was indeed “reasonably common” and “part of a pattern of other surname domains owned by [the Respondent]” on the basis of the record before it. No evidence of any such pattern of surname-related domain name registrations has been placed before the present Panel. Furthermore, there is no evidence that the Respondent has developed any genealogy‑related business since it first made such an assertion in 2017, and the Panel considers that the offering for sale of the disputed domain name in the present case is not consistent with such assertion and indeed casts doubt on its veracity. As outlined above, the Panel has noted that there is some indication, derived from the Complainant’s own website, that “Stöbich” is likely to be a surname. There is, however, no suggestion before this Panel that it is a common or popular name, while on the other hand there is reasonable evidence that it is in extensive use as a trademark by the Complainant in multiple locations across the globe, including in the Respondent’s location, to promote the Complainant’s award-winning products and services.
In conclusion, considering the record objectively, and in particular noting that the Respondent has failed to answer the Complainant’s clear allegations that its trademark rights have been targeted knowingly by the Respondent, the Panel considers it to be probable that the Respondent registered the disputed domain name in order to sell it back to the Complainant for an amount in excess of its out-of-pocket costs and not for any purpose which the Respondent previously outlined in Damsté or for any other legitimate purpose. This points in the direction of registration and use in bad faith in terms of paragraph 4(b)(i) of the Policy.
In all of the above circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and accordingly that the third element under the Policy has been established.
7. DecisionFor 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
Andrew D. S. Lothian
Sole Panelist
Date: January 29, 2020
1 Indeed, the Panel has relied largely upon the terms of the Complainant’s corporate website, which was entered into the record in this case via a hyperlink in the Complaint. The Panel considers that, typically, the more reliable course is to produce third-party materials, such as independent media coverage, together with financial performance data, along with a complainant’s website. In the present case, however, the Complainant’s global activities, history and locations, and notably the third-party awards which have been received for the Complainant’s products and services, were comprehensively detailed on its website.