The Complainant is a.n.d. Internet Services GmbH & Co. KG of Kassel, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
The Respondent is Brian Whelan of Donnybrook, Ireland, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Ascio Technologies Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2013. On September 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 9, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2013. On October 10, 2013 the Center received an informal Response from Respondent. On October 11, 2013 the Center received two informal Responses from Respondent, where Respondent stated in its last communication that it should be regarded as its definitive Response.
The Center appointed John Swinson as the sole panelist in this matter on October 22, 2013. 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 a.n.d. Internet Services GmbH & Co. KG of Kassel, Germany. Founded in 1999, it provides a worldwide online network for connecting registered au pairs with families seeking childcare services. At the end of 2012, there were 206,800 au pairs and 56,700 host families using the Complainant’s network (including 10,215 au pairs and 10,415 host families from the United Kingdom of Great Britain and Northern Ireland). The Complainant has operated a website at “” since 1999 and owns several other “aupair-world” domain names.
The Complainant owns registered trademarks for AUPAIRWORLD and AUPAIRWORLD WE CONNECT – WE CARE in various countries. The Complainant provided evidence of these registrations. It first applied for registration of the word/figurative mark AUPAIRWORLD (Registration No. 302011022184) in Germany on April 16, 2011 (the “Trade Mark”).
The Respondent is an individual, Brian Whelan of Ireland.
The Disputed Domain Name was first registered on February 22, 2011 and was transferred to the Respondent on July 13, 2012. The website at the Disputed Domain Name displays pay-per-click (“PPC”) links to various services, predominantly relating to childcare. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Complainant submits that according to the Policy, the “figurative, stylized or design” elements of the Trade Mark are disregarded for the purpose of assessing confusingly similarity. It submits that Disputed Domain Name is confusingly similar to the “dominant textual components” of the Trade Mark (i.e. AUPAIRWORLD).
Rights or Legitimate Interests
The Respondent has used the Disputed Domain Name to provide PPC links that relate to the Complainant’s industry, including links to the Complainant’s competitors. Therefore, the Respondent is earning PPC revenue by capitalizing on the Complainant’s Trade Mark. Using a domain name to trade off the goodwill of another’s trade mark is not a bone fide commercial use, or a legitimate non-commercial or fair use of a domain name.
There is no evidence that the Respondent is known by a name corresponding to the Disputed Domain Name. The Respondent has no connection to or authorization from the Complainant to justify his use of the Trade Mark.
Registered and Used in Bad Faith
The Complaint has been using domain names incorporating “aupair-world” internationally since 1999 and has a substantial worldwide reputation. The Trade Mark was registered in April 2011, a year before the Disputed Domain Name was transferred to the Respondent. It is inconceivable that the Respondent was unaware of the Complainant’s rights when he registered the Disputed Domain Name.
The Respondent is using PPC links to generate revenue through diverting Internet users searching for the Complainant’s official website. Previous panels have found this to be an indicator of bad faith under paragraph (b)(iv) of the Policy. B. Respondent
On October 10, 2013 the Center received an informal Response from the Respondent. On October 11, 2013 the Center received two informal Responses from the Respondent, where the Respondent stated in its last communication that it should be regarded as its definitive Response.
In his second Response, the Respondent states that he is unhappy with the way the Complainant has raised this issue. He submits a series of comments and questions for the Complainant’s consideration.
The Respondent submits that he has not earned any revenue in relation to the Disputed Domain Name. The Respondent submits that he registered the Disputed Domain Name and parked it with a registration company. The Respondent submits that he intended to develop a website, but has not done so yet due to time constraints. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to one of the Complainant’s trade marks.
The design elements of the Trade Mark may be disregarded for the purpose of assessing confusingly similarity (see paragraph 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). Further, top level domains (i.e. the “.co” suffix) may be disregarded when comparing the similarities between a domain name and a trade mark (see e.g. Incase Designs Corp. v. Juliane Kuefer,WIPO Case No. D2012-2020 and cases cited therein). Therefore, the comparison is between Disputed Domain Name and the textual elements of the Trade Mark (i.e. “AuPairWorld”).
The Panel finds that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The first element of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case for the following reasons:
- the Complainant has not licensed or otherwise authorized the Respondent to use the Trade Mark;
- there is nothing to suggest that the Respondent is commonly known by the Disputed Domain Name; and
- the website that the Disputed Domain Name resolves to seems to be commercial in nature. It is a “link farm” website which directs Internet users to goods and services of the Complainant’s competitors. This is not a fair commercial use of the Trade Mark, nor does it constitute a bona fide offering of goods or services.
The burden shifts to the Respondent to provide evidence of his rights or legitimate interests under paragraph 4(c) of the Policy (see e.g. Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,WIPO Case No. D2004-0753). The Respondent has not provided sufficient evidence to demonstrate his rights or legitimate interests in the Disputed Domain Name.
In light of the above, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith. Paragraph 4(b)(iv) is particularly relevant here and provides that there is evidence of bad faith where a domain name is “used to intentionally attract, for commercial gain, internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location”.
The transfer of a domain name can amount to a new registration (see paragraph 3.7 of the WIPO Overview 2.0). From the available record, it appears that the Respondent became the owner of the Disputed Domain Name on July 13, 2012. The Complainant’s business was well established by this time.
The Respondent’s registration of a domain name that wholly incorporates the Trade Mark, indicates that the Respondent was aware of the Complainant and registered the Disputed Domain Name to mislead Internet users into thinking that the Respondent is some way connected, sponsored or affiliated with the Complainant and its business or networking service, or that the Respondent’s activities are approved or endorsed by the Complainant.
As stated above, the website operated by the Respondent at the Disputed Domain Name displays “click through” links (sometimes called PPC links) to third party websites offering goods and services which compete with the Complainant’s networking service. It is reasonable to infer that when some Internet users arrive at the Respondent’s website they will follow the provided links and “click through” to the third party websites. If this happens, “click through” linking revenue will be generated. It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the association of the domain name with a complainant, such use amounts to use in bad faith (see e.g. The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyP, Domain Admin, ID # 10760,WIPO Case No. D2012-0924 and the cases cited therein). The Respondent has submitted that he is not profiting from the PPC links. The Panel finds that the Respondent has used the Disputed Domain Name in bad faith, irrespective of whether he (or some other party) ultimately profits from his bad faith use.
In light of the above, the Complainant succeeds on the third element of the Policy. 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.
John Swinson
Sole Panelist
Date: October 27, 2013
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