The Complainant is J.S. Staedtler GmbH & Co. KG of Nürnberg, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
The Respondent is Edward Michalski, doing business as Projekt Pro of Pionki, Poland. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2011. On January 26, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On January 26, 2011, Tucows Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2011.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on February 25, 2011. 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.
Regarding the language of the proceeding, the Center ascertained from the Registrar that the language of the Registration Agreement is English. Accordingly, the Panel determines that pursuant to paragraph 11(a) of the Rules the language of the proceeding is English, i.e. the language of the Registration Agreement. 4. Factual Background
The Complainant, which is a German company, is the owner of a well-known trademark, STAEDTLER, which is registered as a word mark in several classes in many countries, including Poland (registration number 61907 of February 26, 1988, retroactive to October 18, 1985). The Complainant is distributing its fine writing instruments in more than 150 countries worldwide (including Poland since 1991, with an annual sales volume of EUR 1.7 million in 2010). The Complainant or its predecessors have first registered the STAEDTLER trademark in 1912 and it has been used extensively and continuously worldwide since then. In addition, the Complainant is the owner of more than 50 domain names containing the STAEDTLER trademark (including ).
The disputed domain name was registered on July 27, 2010. 5. Parties’ Contentions A. Complainant
(i) The Complainant contends the STAEDTLER trademark is a famous mark as was acknowledged in J.S. Staedtler GmbH & Co. KG v. David Fishman, ADR Case No. 02727 – (regarding the domain name ).
(ii) The Complainant submits that the disputed domain name is identical to the STAEDTLER trademark and that the use of the country code “.co” does not have any impact on the overall impression of the dominant part of the disputed domain name.
(iii) The Complainant contends since the Complainant’s adoption and extensive use of the STAEDTLER trademark predates the registration date of the disputed domain name, the burden is on the Respondent to establish rights or legitimate interests in the disputed domain name, and that the Respondent has no registered trade marks or trade names corresponding to the disputed domain name nor any rights or legitimate interests in respect of the disputed domain name.
(iv) The Complainant submits that because STAEDTLER is a famous trademark which has been used in commerce in the Respondent’s home country Poland for more than twenty years with substantial annual sales, it is inconceivable that the Respondent could have registered the disputed domain name unaware of the Complainant’s rights in its STAEDTLER trademark.
(v) The Complainant contends that the Respondent’s bad faith registration and use of the disputed domain name is established by the fact that the Respondent had received no authorization, license or permission to use it, that the Respondent had constructive notice of Complainant’s STAEDTLER trademark due to its famousness, and by the fact that the disputed domain name, by the mere possibility of attracting Internet users to the Respondent’s parking web site, creates a likelihood of confusion with the Complainant’s famous STAEDTLER trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s parking web site, and that passive holding amounts to bad faith use.
(vi) The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions in a Response but sent an email to the Center on March 7, 2011, declaring therein, inter alia: “I sent a letter to the company . In the letter, please release domain. I admit that I did not know of infringement of the domain”. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant has the burden of establishing that all three of the required criteria for a transfer of the disputed domain name or other remedy have been met. A. Identical or Confusingly Similar
In comparing the STAEDTLER trademark to the disputed domain name, it is evident that the latter, , consists solely of the STAEDTLER trademark, followed by the country code of Columbia, i.e. “.co”. The addition of generic terms does not ordinarily serve to distinguish a domain name from registered marks. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor,WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672 and Allianz AG v. Marian Dinu,WIPO Case No. D2006-0318.
The Panel finds that the disputed domain name is identical to the STAEDTLER trademark, which it incorporates in its entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing (as it has in this case). See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
As previously noted, the Respondent did not submit a formal Response, thus offering no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or a corresponding name or uses a corresponding name in a business. The web site associated with the disputed domain name is a parking web site with click-through possible selections of goods and services, and is not providing any information on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent is not (i) making a bona fide use of the disputed domain name; (ii) making a fair or legitimate noncommercial use of the disputed domain name; or (iii) commonly known by the disputed domain name.
The Respondent did not submit a formal Response or provide any evidence or arguments in this proceeding, but in his email of March 7, 2011, he agrees to release the disputed domain name, thus impliedly conceding that he has no rights or legitimate interests in the disputed domain name. The Panel concludes that the Complainant has established the second requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As noted before, in his email of March 7, 2011, the Respondent admitted he “did not know of infringement of the domain”.
The Panel does not consider such an admission as providing sufficient exculpatory information or rising to the level of a persuasive reasoning which might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by (i) failing to obtain the Complainant’s authorization despite being likely aware of the Complainant’s exclusive rights to the STAEDTLER trademark; (ii) redirecting Internet traffic, intended for the Complainant, for the Respondent’s commercial gain; and (iii) disrupting the business operations of the Complainant.
Also, the Respondent stated intent of a “release” of the disputed domain name was directed (if at all, as no writing is submitted in evidence by the Respondent) to the parking web site and not to the registrar Tucows Inc., thus raising doubts at its sincerity and effectiveness.
Moreover, the Respondent is holding passively the disputed domain name. It is well established since Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003, that the mere passive holding of a domain name may in appropriate circumstances constitute bad faith use.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name indicates opportunistic bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case. 7. Decision
For all 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.
Louis-Bernard Buchman
Sole Panelist
Dated: March 11, 2011
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