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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Herbacin cosmetic GmbH v. Access Worldwide Inc.
Case No. D2001-0081
1. The Parties
1.1 The Complainant is Herbacin cosmetic GmbH, a German corporation with its principal place of business at Kahlenberger Strasse 1, 99848 Wutha-Farnroda, Germany.
1.2 The Respondent is Access Worldwide Inc., of 365 Evans Ave., Unit L3, Etobicoke, Ontario M8Z 1K2, Canada.
2. The Domain Name and Registrar
2.1 The domain name upon which this Complaint is based is <herbacin.com>. The registrar of the domain name as at the date of the Complaint is Network Solutions, Inc ("NSI").
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") in hard copy on January 16, 2001 and by email on January 25, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant. The Complaint states that a copy of the Complaint has been sent or transmitted to the Respondent and that a copy of the Complaint had been sent or transmitted to the Registrar of the domain name in dispute, NSI.
3.3 On January 24, 2001, the Center sent the Complainant’s representative an Acknowledgment of Receipt of Complaint.
3.4 The Center sent a Request for Registrar Verification to NSI on January 23, 2001, by email. NSI responded to the Center’s request by email on January 25, 2001, stating:
(a) NSI had received a copy of the Complaint;
(b) that NSI was the registrar for the domain name in dispute;
(c) that the Respondent was the current registrant of the domain name in dispute;
(d) that the domain name <herbacin.com> was "active";
(e) the Respondent’s contact details; and
(f) that Network Solutions’ 5.0 Service Agreement was in effect.
3.6 The Center sent the Complainant’s representative a Complaint Deficiency Notification on January 25, 2001 notifying the Complainant’s representative that paragraph 9 of the Complaint incorrectly identified the registrar of the disputed domain name as Access Worldwide Inc.
3.7 The Amended Complaint was received by the Center by email on
February 1, 2001 and in hard copy on February 8, 2001, in which the registrar of the disputed domain name was correctly identified as NSI.
3.8 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on February 9, 2001 to the Respondent by post/courier (with enclosures), by facsimile (without attachments) and by email (without attachments), and to the Complainant’s representative by email (with attachments).
3.9 A Notification of Respondent Default was sent by the Center to the Respondent and the Complainant’s representative by email on March 1, 2001. This notified the Respondent that it had failed to comply with the relevant deadline for the submission of its Response in the domain name dispute. Although the Notification of Complaint and Commencement of Administrative Proceeding made specific reference to the 20 calendar day period within which the Respondent was entitled to submit a Response to the Complaint, no Response has been received from the Respondent at any time prior to the Panel commencing its deliberations.
3.10 The Center sent a transmission of case file to the Panel by email on
March 16, 2001. The documentation was received in hard copy by the Panel on March 20, 2001 in Sydney, Australia.
3.11 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following information is asserted as fact in the Complaint and remains uncontested.
The Complainant is the sole owner of the registered company name "Herbacin GmbH". The Complainant can look back to a long tradition having conducted business since 1905. Its product range covers a selection of hand, skin, and hair care products for all kinds of requirement.
The Complainant has registered and uses the domain name <herbacin.de>. The website "herbacin.de" provides information on the product range of the Complainant and offers an online shopping list for various products.
4.2 The Complainant’s trade marks
The Complainant is the owner of at least 10 trademark registrations in Germany, Canada, USA, in the European Union, Ireland, Brazil, Hong Kong and China for the word "Herbacin", in international classes 3, 4 and 5. The Complainant uses the trademark "Herbacin" on all product labels. The labels for any hair- or body-care products show the trademark "Herbacin" as shown on the print-outs of the websites provided as Annex 4.
4.3 Activities of the Respondent
As stated above, no Response to the Complaint has been filed by the Respondent. No information has been made available to the Panel concerning the activities of the Respondent.
5. The Complainant’s contentions in the Complaint
5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the disputed domain name, which the Respondent has registered, is identical to the trademarks in which the Complainant has rights. The Complaint asserts that the Top-Level-Domain ".com" may not be considered since this indication has solely an administrative function as a regional criterion to identify the geographic origin.
5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complaint states that to the Complainant’s best knowledge the Respondent is not a proprietor of a trademark "herbacin". The Complainant did not license or in any other way legitimate the Respondent to use its trademarks "Herbacin".
5.4 In reference to the requirements of paragraph 4(a)(iii) of the Policy, the Complaint asserts that the disputed domain name <herbacin.com> has been registered and used in bad faith [by the Respondent]. The Complainant states that there are circumstances indicating that the domain name was primarily registered for the purpose of selling it to the Complainant or disrupting its business.
The Complaint states that after contacting the administrative contact person of the Respondent, who is mentioned in the Whois search result, about the disputed domain name, Mr Basir Ahmad responded immediately and offered the sale of the domain name <herbacin.com> to the Complainant in an email dated October 10, 2000. He also asked for the amount of money the Complainant would be willing to pay for transferring the disputed domain name. This email appears at Annex 5 of the Complaint.
6. Discussion and Panel Findings
6.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.
6.2 Domain Name identical or confusingly similar to Complainant’s trade mark
The domain name in dispute is <herbacin.com>. The Complainant has trade mark registrations in several countries around the world for the word "Herbacin". Therefore, the only difference between the disputed domain name and the Complainant’s "Herbacin" trade mark is the gTLD suffix forming part of the domain name. This and other Panels have consistently held that an open gTLD does not have a relevant distinguishing function in determining whether domain names are identical or confusingly similar to a trademark or tradename.
The Panel finds that the Complainant has proven paragraph 4(a)(i) of the Policy.
6.3 The Respondent has no rights or legitimate interests in the Domain Name
The Complaint asserts that the Respondent has no rights or legitimate interests in the disputed domain name because to the Complainant’s best knowledge the Respondent is not a proprietor of any trademark of the word "herbacin", and because the Complainant did not license or in any other way legitimate the Respondent to use its trademark "Herbacin".
In the email from Mr Basir Ahmad, the primary contact at the Respondent, to
Mr G. Thien of the Complainant, referred to in paragraph 12 of the Complaint, Mr Ahmad states:
"Currently I, Basir Ahmad, am the rightful owner of the domain <herbacin.com>. This name was registered with the proper authorities almost three years ago as an investment.
Presently, I am considering selling the name to any interested parties".
Other than the above, the Respondent has asserted no rights or legitimate interests in the disputed domain name. The Panel can envisage no reason whatsoever why the Respondent would choose the word "herbacin" in a domain name it has registered, other than through a desire to cause confusion between the domain name and the Complainant’s trade mark. In the panel’s view, the word "herbacin" was chosen by the Respondent to cause Internet users to believe that the Complainant endorses or is associated with the Respondent’s web site.
Paragraph 4 (c) of the Policy lists a number of circumstances which, if proven to exist by the Respondent, can be taken to demonstrate a Respondent’s rights or legitimate interests in the domain name. Despite having had the opportunity to provide evidence or make assertions to this Panel, no Response to the Complaint has been submitted by the Respondent. Certainly there is no evidence whatsoever before the Panel that any of the situations described in paragraph 4(c) of the Policy apply in the case of the Respondent.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven paragraph 4(a)(ii) of the Policy.
6.4 Domain Name has been registered and is being used in bad faith
The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith. Paragraph 4(b) of the Policy provides:
"The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith".
In this case, although NSI has confirmed that the domain name <herbacin.com> is currently active, the disputed domain name does not currently resolve to an active web site. In the Panel’s view it would normally be advisable to separately consider the two limbs of paragraph 4 (a) (iii) of the Policy. However, in some cases, it has been found that it is unnecessary to consider the two limbs of the provision separately, as the "use" requirement has been found not to require positive action, inaction being within the concept. As such, bad faith use can be found to follow bad faith registration without more, if the Complainant can prove registration in bad faith with respect to the particular circumstances of the specific case. In the interests of consistency of interpretation of the Policy, the Panel proposes to follow the above approach in this decision.
6.5 The Complainant alleges that the fact that Mr Ahmad offered the disputed domain name for sale to the Complainant indicates that the domain name was primarily registered for the purpose of selling it to the Complainant. In this case the question before the Panel is therefore, "did the Respondent register the domain name for the primary purpose of selling, renting or otherwise transferring it to a third party with an interest in that name?" The Complainant is required by the Policy to prove that this is the case.
It is clear from the undisputed evidence in the Complaint that such an intention existed after the date of registration, but this does not automatically lead to the conclusion that this intention existed at the time of registration. However, in this case, the Panel infers that such an intention existed at the time of registration, for the following reasons. First, the Respondent’s contact, Mr Ahmad, offered to sell the domain name to the Complainant as soon as he was contacted by the Complainant. Secondly, the fact that Respondent has provided no evidence that since registering the domain name it has made any meaningful use of it leads the Panel to conclude that the Respondent’s purpose for registering the domain name was, at the time of registration, to sell it for consideration in excess of the out-of-pocket expenses directly related to the domain name. Thirdly, for the reasons set out in paragraph 6.2, it is plain that the domain name was chosen to trigger recognition of the Complainant and its business. Fourthly, the Panel infers from the Respondent’s admission (see para 6.3 above) that the domain name in dispute was registered "as an investment", that the Respondent had in mind an increase in value attributable to a resale in excess of its acquisition costs, such increase not being attributable to any goodwill generated by the conduct of any legitimate business using the domain name.
6.6 Paragraph 4(b)(i) of the Policy also requires that the consideration demanded by the Respondent for the domain name be in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name. In this case, in his email to Mr G. Thien of the Complainant of October 10, 2000, Mr Ahmad states:
"I understand that your company is interested in obtaining this name. Please reply to this message to confirm this, and please indicate how much you would like to offer. We will proceed as appropriate."
Notwithstanding that Mr Ahmad does not directly demand any particular sum for the domain name in dispute, the Panel infers from the way the above question was phrased that the consideration that the Respondent hoped to be offered by the Complainant was necessarily more than any out-of-pocket costs that the Respondent might have incurred directly relating to the domain name.
6.7 The Panel is of the view that the domain name in dispute was registered and is being used in bad faith by the Respondent at least at the time of the Complaint. Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(iii) of the Policy.
7.1 The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel orders that the domain name <herbacin.com> be transferred by NSI to the Complainant, Herbacin cosmetic GmbH.
Philip N. Argy
Dated: April 3, 2001