ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION M24You GmbH v. Patricie Wolbert Case No. D2024-3502 1. The Parties The Complainant is M24You GmbH, Germany, represented by JBB Rechtsanwälte Jaschinski Biere Brexl Partnerschaft mbB, Germany. The Respondent is Patricie Wolbert, Germany, represented by Rechtsanwalt Dirk Wittstock, Germany. 2. The Domain Name and Registrar The disputed domain name is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2024. On August 28, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 2024, 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 30, 2024, 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 September 3, 2024. 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 September 4, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2024. The Response was filed with the Center on September 23, 2024.
page 2 On September 24, 2024, the Center sent an email regarding possible settlement to the Parties. However, the Parties did not request suspension of the proceeding. The Center appointed Kaya Köklü as the sole panelist in this matter on October 1, 2024. 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 Since 2016, the Complainant is a company with its registered seat in Germany, active in consulting services and the distribution of automation and robotics solutions in the European market. The Complainant is furthermore a licensee of its majority shareholder, Mr. Martin Müller, who is the owner of the German trademark registration 302015212240, registered on October 7, 2015, for M24YOU, covering protection for robots as protected in class 7. The Respondent is reportedly located in Germany as well. She is the wife of the former Chief Executive Officer (CEO) of the Complainant, whose employment contract was terminated by the Complainant in April 2024. The Respondent is also the CEO and owner of a company, who was once instructed by the Complainant to support the promotion of the Complainant’s products and services. The business relation between the company of the Respondent and the Complainant ended in March 2024. The disputed domain name was registered on September 15, 2015. According to documents provided by the Respondent, the Complainant was the registered owner of the disputed domain name until 2018. The disputed domain name was then transferred from the Complainant to the Respondent. Provided documents by the Respondent indicate that this transfer happened with the awareness, if not consent of the Complainant. Since its registration, the disputed domain name has been used by the Complainant for promoting its products and services. In other words, the website linked to the disputed domain name was and is the official website of the Complainant. The Complainant, however, has no control over the general email address associated with the disputed domain name, as the Respondent is the registered owner and contact person with the hosting company. The Respondent showed willingness to transfer the disputed domain name and the control over the email address only under certain conditions (inter alia an apology by the Complainant’s current CEO and majority shareholder). 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. It particularly believes to have unregistered trademark rights in M24YOU based on its company name rights. Furthermore, it is alleged that the Respondent, as the wife of the former CEO of the Complainant, has never obtained permission to register the disputed domain name or to provide related services. B. Respondent The Respondent contends that the Complainant has not satisfied the three elements required under the Policy for a transfer of the disputed domain name. She particularly argues that the Complainant has no relevant trademark rights in the sign M24YOU. Furthermore, it is argued that she has a right to use, while also indicating that she was not even aware until recently that the disputed domain was registered on her behalf. Finally, it is argued that she has not registered nor is using the disputed domain name in bad faith.
page 3 6. Discussion and Findings According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark 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. For the evaluation of this case, the Panel also takes note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and, where appropriate, will decide consistent with the consensus views stated therein. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Complainant has shown that it is the licensee for the German trademark M24YOU of its majority shareholder (and this statement remained undisputed by the Respondent). Hence, the Panel accepts that the Complainant can rely on registered trademark rights for the purpose of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the M24YOU mark is reproduced within the disputed domain name with no amendments or additions. Accordingly, the disputed domain name is identical to the M24YOU mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. However, noting the Panel’s findings in the third element, the Panel need not make a final determination regarding potential rights or legitimate interests of the Respondent. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present case, the Panel notes that the Respondent had a contractual relationship with the Complainant in the past concerning the provision of certain business services. The Panel further notes that the Complainant was the registered owner of the disputed domain name until 2018, as shown by documents
page 4 provided by the Respondent. Additional documents provided by the Respondent (particularly email communications between the Parties in 2018) further indicate that the transfer of the disputed domain name to the Respondent happened with the awareness, if not consent of the Complainant within the frame of said business service agreement. The transfer of a domain name registration from a third party to a respondent is not a renewal and the date on which the current registrant acquired the domain name (here in 2018) is the date a panel will consider in assessing bad faith. WIPO Overview 3.0, section 3.9. The Panel additionally notes that the disputed domain name apparently was and still is linked to the official website of the Complainant for the promotion of its products and services. In light of the above, the evidence in the case file as presented by the Parties does not indicate that the Respondent’s aim in registering the disputed domain name was to profit from or exploit the Complainant’s M24YOU trademark. The Panel also finds that the case file does not indicate that the Respondent registered the disputed domain name in bad faith with the purpose of targeting the Complainant or its company name respectively trademark rights, particularly as the disputed domain name was registered in the name of the Respondent at a time when the Parties were still in an existing contractual relationship. Based on the provided documents by the Respondent, it is even likely that the transfer of the disputed domain name to the Respondent happened with the consent of the Complainant, at least with its awareness. The Respondent’s lack of bad faith registration is further indicated by the fact that the Parties continued to have ongoing business relations after the transfer of the disputed domain name to the Respondent until just recently in 2024. In view of the Panel, this means that the Respondent was at least not in bad faith at the time when the disputed domain name was transferred to her. Whatever the true circumstances were at that time, the Panel does not see sufficient and reliable indications in the case file to find bad faith registration, for the purposes of the Policy, by the Respondent. Consequently, the Panel finds the third element of the Policy has not been established by the Complainant. 7. Decision For the foregoing reasons, the Complaint is denied. /Kaya Köklü/ Kaya Köklü Sole Panelist Date: October 15, 2024
Full & Egal Universal Law Academy