WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION GmbH v. Alan Lin Case No. DME2009-0008 1. The Parties
The Complainant is GmbH of Berlin, Germany, represented internally.
The Respondent is Alan Lin of California, United States of America, represented by Law Office of Howard M. Neu, PA, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2009. On September 15, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On September 15, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 18, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”) (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 September 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response October 12, 2009. The Response was filed with the Center October 11, 2009.
The Center appointed Andrew Frederick Christie, Luis Larramendi and Ross Carson as panelists in this matter on October 27, 2009. The Panel finds that it was properly constituted. Each member of 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 was founded on July 10, 2008 in Berlin, Germany. It is registered under the company name “” in the German commercial register (Reg. No. HRB 114731 B in Berlin). The Complainant is a software development company. It has been registered to the iPhone Developer Program since August 13, 2008, and proposes to publish software globally under its name in the iTunes App Store of Apple, Inc. The Complainant owns German trademark registration No. 30 2008 045 973 for PROJECT.ME. This trademark registration was entered in the German trademark Register on October 7, 2008, following an application made on July 16, 2008.
The Respondent is in the business of buying Internet domain names and developing them into active websites. The domain name in dispute was registered by the Respondent on August 17, 2008. This registration followed an application by the Respondent on June 26, 2008 for the disputed domain name and 241 other generic .me domain names, during the Land Rush application period for the .me domain. On a date not specified, the Respondent parked the disputed domain name at , with a webpage header reading
– project Resources and Information. This website is for sale!” and link stating “Buy this domain The domain may be for sale by its owner!”. At a subsequent date not specified, removed the webpage header at the request of the Respondent.
On August 28, 2009 the Complainant requested a quote to purchase the disputed domain name via “”. The quoted price was USD 27,500. On September 1, 2009 there was a series of email communications between the Complainant and the Respondent, in which the Complainant offered USD 3,000 to purchase the domain name and the Respondent responded with a revised quote of USD 18,500. A sale price was not agreed between the parties, and the Complainant filed this Complaint 13 days later. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its German registered trademark PROJECT.ME.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has never used “” either as a legal or business name, and has no registered trademarks similar to the disputed domain name. The Complainant never authorized, licensed or permitted the Respondent to use the trademark PROJECT.ME. The Respondent makes no legitimate noncommercial or fair use of the disputed domain name. There is no Mail Exchange Resource Record or any other record showing use of the domain name for email or any other purpose.
The Complainant contends that the disputed domain name was registered and is being used in bad faith by the Respondent, because it was acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to interested parties for valuable consideration in excess of the out-of-pocket costs directly related to the domain name. This is evidenced by the fact that the Respondent offered the domain name for sale via “”. B. Respondent
The Respondent contends that the Complainant is unable to establish that the Respondent has engaged in bad faith registration and use of the disputed domain name. The Respondent did not have any knowledge of the Complainant's trademark rights at the time of registration of the domain name. There is no proof that the Complainant's trademark was in use and well-known in Germany at any time since foundation of the Complainant. The Respondent's registration of the domain name resulted from the Respondent's Land Rush application, which was made over three weeks before the Complainant's trademark was registered. The Respondent did not register the domain name with intent to sell it to the Complainant, to disrupt the business of the Complainant, to prevent the Complainant from registering its trademark as a domain name, or to confuse consumers. The Respondent, whose business includes the development of websites, acquired the domain name because it comprises a common word that has a meaning appropriate for use as a site for and about developing projects online. 6. Discussion and Findings A. Identical or Confusingly Similar
When considering the issue of identicalness or similarity of a disputed domain name to the complainant's trademark, previous panel decisions under the UDRP for the ccTLD .me have ignored the TLD identifier – that is, they have undertaken the comparison using only that part of the domain name that precedes the “.me” suffix. An example is Mozilla Foundation and Mozilla Corporation v. Limpkin Walker,WIPO Case No. DME2008-0007, in which it was stated: “the addition of the ccTLD “.me” is without legal significance from the standpoint of comparing the Domain Name to the [trademark] because use of a ccTLD (or gTLD) is required of domain name registrants, “.me” is one of only a few such ccTLD's, and “.me” does not serve to identify a specific enterprise as a source of goods or services”.
If that approach were to be adopted in this case, the relevant part of the disputed domain name would be “project”, and the question would be whether “project” is identical or confusingly similar to the Complainant's trademark PROJECT.ME. For the reasons given below, however, this Panel does not need to decide that question here.
This Panel considers that the appropriate approach in this case to determining identicalness or similarity of the disputed .me domain name with the Complainant's trademark is to not ignore the ccTLD identifier “.me”. The reality is that, unlike most ccTLD identifiers, the TLD identifier “.me” can be seen to have a meaning beyond being the International Standards Organization (ISO) two-letter code for the country Montenegro – in particular, it has the additional meaning of being the common English objective pronoun for oneself. This fact is well understood by doMEn, the Registry for the .me ccTLD, which promotes .me registrations by stating “.ME is expected to be utilized as both a personalized Web address and as a catchy business marketing tool around the world … So some “premium” names – including verb-oriented domains, such as “Contact.ME,” “Drive.ME” or “Fly.ME,” – will be held back for auction after Open Registration.” In this Panel's opinion, to ignore the ccTLD identifier in all cases when considering identicalness or similarity of a .me domain name to a trademark is to ignore the commercial reality that, in the .me domain name space, the ccTLD identifier is likely to be a key part of the domain name. Thus, it is this Panel's view that a determination of identicalness and similarity of a .me domain name may in appropriate cases be based on a consideration of the domain name as a whole – that is, of the domain name including the “.me” suffix.
Adopting that approach in this case, this Panel finds that the disputed domain name is identical to the Complainant's trademark PROJECT.ME. B. Rights or Legitimate Interests
The Respondent has not expressly contended that it has rights or legitimate interests in the disputed domain name; rather, it has chosen to defend this Complaint on the basis that the Complainant cannot establish that the Respondent registered and is using the domain name in bad faith. Because of the conclusion drawn by this Panel on the issue of bad faith, discussed below, this Panel does not need to reach a view on whether the Respondent has rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
In this Panel's view, the Complainant has failed to establish that the Respondent registered and is using the domain name in bad faith. The Respondent applied for registration of the disputed domain name during the Land Rush application period for the .me domain, on June 26, 2008 – three months before the Complainant's trademark registration was entered in the German trademark Register, three weeks before the Complainant even applied for its trademark registration, and two weeks before the Complainant even came into legal existence. The Respondent could not, therefore, have been aware of the Complainant's existence, let alone aware of the Complainant's trademark rights, at the time the Respondent applied for registration of the disputed domain name. It is true the domain name was not in fact registered to the Respondent until August 17, 2008, but the delay between application and registration was a result of the timing of the .me Rollout Schedule adopted by the .me Registry to execute the Land Rush applications. The Complainant has not provided any evidence to show that the Respondent was, or should reasonably have been, aware of the Complainant and its trademark rights on August 17, 2008, when the domain name registration took effect. Furthermore, given the timings of activities and the different geographical locations of the parties, this Panel considers that the Respondent was not, and could not reasonably have been, aware of the Complainant and its trademark rights when registration took effect.
Although this Panel recognizes that there are some cases in which bad faith registration and use can be made out even when the disputed domain name is registered before the Complainant's trademark rights came into existence or before the Respondent was aware of the Complainant's trademark rights, this is not one of them. The factual record before this Panel does not disclose any of the four circumstances specified in paragraph 4(b) of the UDRP as being evidence of the registration and use of the domain name in bad faith. Furthermore, the totality of the facts of this case (including, in particular, the common word nature of the disputed domain name) do not otherwise indicate that, in all the circumstances, the Respondent by holding the domain name is acting in bad faith. Thus, this Panel finds that the Complainant has failed to establish that the Respondent registered and is using the domain name in bad faith – and, hence, has failed to establish circumstances entitling it to a transfer of the disputed domain name. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Full & Egal Universal Law Academy