Complainant is Rechtsanwälte Lampmann, Haberkamm & Rosenbaum Partnerschaft, Germany, self-represented.
Respondent is Dieter Spreidler, ETS, Germany, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2020. On November 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2020. The Response was filed with the Center on December 1, 2020; a further email correspondence from Respondent was received by the Center on December 10, 2020. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on December 10, 2020. 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 Complainant is a law firm organized under the laws of and domiciled in Germany. Complainant has evidenced to be the registered owner of the national German trademark (word mark) LHR, German Patent and Trademark Office, registration number: 302014046310, registration date: October 16, 2014, status: active. Complainant operates the domain name Respondent also is a resident of Germany, who registered the disputed domain name on July 5, 2019. By the time of the rendering of this decision, the disputed domain name resolves to a website at “www.lhr-law.info” headed “My Website” which displays a text passage containing critical statements on Complainant as well as other text passages which simply function as placeholders without meaning; an imprint is missing. Complainant has provided further documentary evidence according to which Complainant sent a request to Respondent on September 22, 2020, to voluntarily transfer the disputed domain name to Complainant, which was rejected by Respondent’s attorney-at-law on October 29, 2020, placing in turn an offer to sell the disputed domain name at a price of EUR 20,000, with Respondent re-confirming such offer himself on November 11, 2020, stating that the disputed domain name otherwise would be transferred to a Russian investor within one week’s time, so that Respondent would no longer have access to it, nor to any content provided thereunder. Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant submits that the disputed domain name is confusingly similar to Complainant’s LHR trademark as it contains all of the latter, while the part “law” is merely descriptive. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since there is no evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor is Respondent making a legitimate noncommercial or fair use thereof, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) Respondent contacted Complainant on October 29, 2020, through his attorney-at-law who let Complainant know that the disputed domain name was for sale at a price of EUR 20,000, without explicitly naming its owner at the time; and (2) Respondent again contacted Complainant on November 11, 2020, threatening to sell the disputed domain name to a Russian investor if it was not bought by Complainant within a week’s time. B. Respondent Respondent points to the fact that Complainant only enjoys trademark rights in LHR and not in “lhr-law”, as reflected in the disputed domain name. Moreover, Respondent stresses the fact that it does not aim at any business related to lawyer’s work as does Complainant. Respondent confirms to have offered Complainant to sell the disputed domain name for a normal and fair price that is typically for a domain name of interest, however, only as Complainant was asking the disputed domain name for itself. Respondent proclaims that it wishes to use the disputed domain name for its own business, which is not a lawyer’s business. The remedy requested by Complainant to transfer the disputed domain name is refused by Respondent 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and The Panel concludes that the disputed domain name is confusingly similar to the LHR trademark in which Complainant has rights. The disputed domain name incorporates the LHR trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of other terms (whether e.g. descriptive or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the descriptive term “law”, which even points to Complainant’s core business, does not dispel the confusing similarity arising from the incorporation of Complainant’s LHR trademark in the disputed domain name. Finally, UDRP panels widely agree (see WIPO Overview 3.0, section 1.11) that the applicable Top-Level Domain (“TLD”) in a domain name is generally viewed as a standard registration requirement and as such is disregarded under the first element test, though the meaning of such TLD may be relevant to a panel assessment of the second or third element of the URDP. Accordingly, the existence of the generic TLD “.info” as well is not in contrast to find confusing similarity arising from the entire incorporation of Complainant’s LHR trademark in the disputed domain name. Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of both Parties’ contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent obviously has not been authorized to use Complainant’s LHR trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “lhr” on his own. Moreover, it is undisputed between the Parties that Respondent through his attorney-at-law immediately offered to sell the disputed domain name to Complainant at a sales price of EUR 20,000, when being contacted by Complainant to voluntarily transfer the disputed domain name, and reconfirmed such offer, thereby stressing that otherwise the disputed domain name would be transferred to a Russian investor, thus losing control over it or any content provided thereunder on the Internet. Such making use of the disputed domain per se may neither be qualified as bona fide nor as noncommercial or fair use within the meaning of paragraph 4(c) of the Policy. Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Although Respondent claims that he wants to use the disputed domain name for his own business purposes, the Response as well as any other circumstances apparent from the case file lack any justification or explanation as to why Respondent specifically needed to rely on Complainant’s LHR trademark to create the disputed domain name if not to directly target Complainant, especially since Respondent himself has asserted that he does not aim at building up a “lawyer’s business”, yet using the term “law” in the disputed domain name. Moreover, the disputed domain name follows the same composition in its Second-Level Domain as Complainant’s one (only differing in the TLD), and obviously redirects to a website which displays a text passage containing some critical statements about Complainant as well as other text passages which simply function as placeholders without meaning. Such making use of the disputed domain name, however, still does not rise to the assumption that Respondent e.g. is making use of his right to exercise freedom of speech in a bona fide manner (he does not even invoke this right himself), but rather shows that Respondent is turning against Complainant by registering and using the disputed domain name, and is not pursuing independent interests with it. Accordingly, there is no other way but to find that Respondent has not met the burden to rebut Complainant’s prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name. Therefore, Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. Offering to transfer the disputed domain name, which is confusingly similar to Complainant’s LHR trademark and directly points to Complainant’s law business, only for a sales price of EUR 20.000, thereby threatening that the disputed domain name otherwise would be transferred to a Russian investor within one week’s time, so that Respondent would no longer have access to it, nor to any content provided thereunder, is a clear indication that Respondent primarily registered the disputed domain name for the purpose of selling it to Complainant at a price in excess of its documented out-of-pocket costs. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraphs 4(b)(i) of the Policy. The mere fact that Respondent did not approach Complainant himself with such offer, but rather responded to Complainant’s request to transfer voluntarily the disputed domain name, is not in contrast to such finding. UDRP panels widely agree that e.g. the threat to sell a disputed domain name “to the highest bidder”, or otherwise transfer it to a third party, is generally viewed to point into the direction that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark, thus acting in bad faith (see WIPO Overview 3.0, section 3.1.1). Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 Stephanie G. Hartung
(ii) that 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
Sole Panelist
Date: December 14, 2020
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