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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bioland e.V v. Lee Yi

Case No. D2002-1147

 

1. The Parties

The Complainant is Bioland e.V., Kaiserstrasse 18, D – 55116, Mainz, Germany, represented in this administrative proceeding by Wendler Tremml Rechtsanwaelte of Germany.

The Respondent is Lee Yi, 4F, No.12, Lane 16, Shuang Ho St, Zung Ho, 234 TW, Taiwan, Province of China. The Complainant indicated as contact for the Respondent, IA Consulting, Inc., 3F, No. 1-2, Alley 23, Lane 10, Bau – Jian Rd., Junghe, 235 TW, Taiwan, Province of China.

 

2. The Domain Name and Registrar

The disputed domain name is <bioland.com>, which is registered with eNom Inc.

 

3. Procedural History

3.1. Issuance of the Complainant

A Complaint was submitted to WIPO Arbitration and Mediation Center pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy"), in electronic format, on December 18, 2002. The original of the Complaint together with 8 annexes were submitted in hard copy, on December 19, 2002.

3.2. Confirmation of registration details

A request for Registrar verification was transmitted to the Registrar eNom on December 19, 2002.

On December 19, 2002, eNom transmitted by email to the Center its verification response confirming:

a) that the domain name specified in the Complaint is registered with the Registrar indicated by the Complainant;

b) that the domain name specified in the Complaint is currently registered by the Respondent;

and providing the contact details for the administrative, billing and technical contact of the Registrant.

3.3. The Appointment of the Case Manager

According to paragraph 6 of the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"), Mr. Felipe Lorenzo has been appointed the manager of the case.

3.4. Notification to the Respondent

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the " Rules"), the WIPO Center issued to the Respondent, according to paragraph 4 of the Rules, on December 23, 2002, a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent.

The Notification specified the date of January 12, 2003, as the date for the submission of the Response.

Paragraph 2(a) of the Rules provides that it is the provider’s responsibility to employ reasonably available means calculated to achieve actual notice to the Respondent. The paragraph further, provides that this responsibility is discharged:

- by sending the Complaint to each of the addresses shown in the Registrar’s WHOIS database for the domain name holder and the Technical and Administrative Contact, and to the address supplied for the Billing Contact, and

- by sending the Complaint in electronic form to the respective e-mail addresses, to the postmaster at the domain name and to any address on an active web page to which the domain name resolves, and to any other address notified to the sender by Respondent or provided by Complainant.

The Panel accepts that, in the light of the information available to it, WIPO has employed all means reasonably available to it to achieve notice to the Respondent and that the Respondent received at least the e-mail delivery of the Complaint.

3.5. Formal Requirements Compliance Check

The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist on December 23, 2002.

The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and the WIPO Supplemental Rules.

3.6. Payment of the Fees

According to paragraph 4(g) of the Policy and paragraph 19(a) of the Rules, the Complainant paid on time and in the required amount the fees for a single-member Panel.

3.7. Filing of Response

The Respondent filed no response. Accordingly, the Center notified the Respondent’s default on January 14, 2003.

3.8. Constitution of Administrative Panel

The Center appointed Beatrice Onica Jarka as the sole Panelist in this matter on January 21, 2003.

The Panelist has submitted according to paragraph 7 of the Rules, a Statement of Acceptance and a Declaration of Impartiality. The notification of appointment of the Administrative Panel and projected decision date were communicated to all parties, by email on January 21, 2003.

The projected decision date is February 4, 2003.

The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and WIPO Supplemental Rules.

3.9. Language of the proceedings

The Panel considers that, according to paragraph 11 of the Rules, the language of the proceedings is English.

3.10. Procedural orders

On January 29, 2003, according to paragraph 8 and 12 of the Rules, the Panel issued the Procedural Order no.1.

By this order the Panel requested from the Complainant a further statement (in English) regarding the exactness of the name and of the address of the Complainant and also further documents supporting any change of the name and address indicated in the Complaint since the establishment of the Complainant.

Such a request was motivated by the fact that the annexes 1-8 to the Complaint, regarding the registration of the trade mark "bioland" indicate that, the trade mark had been registered by different entities with different addresses: as the trademark registered by number 968288 on March 2, 1978, by the entity Fordergemeinschaft organisch - biologischer Landbau e. V. with the address indicated: 7326 Heiningen, Bahnhofstr.1 or as the trademark registered by number 39402959 on October 28, 1996, by the entity Bioland verband organisch - biologischer Landbau e. V. with the address indicated Nordliche Ringstr.91, 73033 Goppingen.

The Procedural Order no.1 has requested that the Complainant transmits the statement and the documents to the WIPO Center before February 4, 2003.

On January 31, 2003, following the Procedural Order no.1, the Complainant has submitted to WIPO Arbitration and Mediation Center the requested statement and the following documents: Confirmation Patent Attorney Wolf E Sajda; Office action of GPTO of December 17, 2002; Office Action of Wipo of December 16, 2002; letter to OHIM of November 11, 2002; Confirmation of OHIM of November 13, 2003; Confirmation Committee member Thomas Dosch; Statement Attorney Dr. Henrik Schroeder.

 

4. Factual Background

According to its web site operated mainly in German language, the Complainant Bioland e.V. is an association which promotes and supports the organic-biological methods of cultivation. Also according to the Complainant web site the association currently has around 4000 members and further 700 producing companies member of the association.

As it results from the evidences submitted by the Complainant, as annexes to the Complaint, and following the Procedural Order no.1, and from the check realized by the Panel itself, the Complainant registered the collective trade mark "BIOLAND" for the class 31, under German trademark law on March 2, 1978, under No. DE: 968288 "BIOLAND" and for the classes 4,5,18,19,22,24,29,30,31,32,33 on October 281996, under No. DE: 394 02 959 "BIOLAND."

The Complainant registered also the collective trademark "BIOLAND" under European Community trademark law on July 23, 1999, under No. 000024885.

The products for which the collective trade mark BIOLAND is registered under the European Community law refers to organic - biological goods such as: firewood, leather, animal skins, furniture, raw fibrous textile materials.

As it results from the evidences submitted by the Complainant, as annexes to the Complaint, and from the check realized by the Panel itself, the Complainant is holder of the international gTLD’s: <bioland.org>, <bioland.info> and the ccTLD’s: <bioland.ch> and <bioland.de>. The enumerated gTLD and ccTLD are resolving to the same web site, presenting information mainly in German language about the association and its organic-biological methods of cultivation.

The Respondent is the current registrant of the disputed domain name. The web site to which the domain name resolves displays a prominent statement "for sale, contact us", which leads to the email addresses: Lee.Online@msa.hinet.net; fred@soeasy.net.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

I. the domain name <bioland.com> is identical to the trademark BIOLAND in which the Complainant has rights,

II. the Respondent have no rights or legitimate interests in respect of the domain name <bioland.com>, because:

- there is no relationship between the Complainant and the Respondent;

- the Respondent is not a licensee of the Complainant and no otherwise permission or consent has been granted to the Respondent to use the BIOLAND mark or to apply for any domain name incorporating this mark;

- the Respondent is not commonly known by the domain name <bioland.com>, especially because his name does not include the string BIOLAND;

- the Respondent does not hold a trademark "BIOLAND"; and

- the Respondent did not use or prepare to use the domain name <bioland.com> or a name corresponding to the domain name in connection with bona fide offering of goods.

III. the disputed domain name should be considered as having been registered and used in bad faith because:

- it indicates no reference to the Respondent;

- the Respondent registered the disputed domain name, having knowledge about the Complainant’s trademark BIOLAND, which is famous to the public as a result of its continuous promotion;

- the Respondent primarily registered the domain for the purposes of selling, renting, or otherwise transferring the name registration to customers, as it displays prominently on the web site where the domain name resolves "for sale, contact us." Complainant refers to the decisions: Fortum Corporation v. Li Yen Chun, WIPO Case No. D2002-0324; The British Council v. Li Yen Chun, WIPO Case No. D2001-0097, where Li Yen Chun from the company IA Consulting, Inc. was sentenced twice for "domain grabbing." The Complainant states that the disputed domain name was transferred from the former registrant Li Yen Chu to the Respondent in this case, Lee Yi in order to avoid further sentencing in this case. The Complainant also contends that the former owner Li Yen Chu attempted to sell to the Complainant the disputed domain name for 2,500 US dollars;

- the registration of the disputed domain name was made in order to prevent the Complainant from reflecting his mark in a corresponding domain name and to attract Internet users to his web site by creating likelihood of confusion with the Complainant’s mark.

B. Respondent

Properly notified according to paragraph 2(a) of the Rules, the Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

6.1. Substantive elements of the Policy

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a Complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable."

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

A. that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

B. that the Respondent has no rights or legitimate interests in respect of the domain name; and

C. that the domain name has been registered and is being used by the Respondent in bad faith.

Paragraph 5(e) of the Rules instructs the Panel to:

"decide the dispute based upon the Complaint" …" if the Respondent does not submit a Respons" and " in the absence of exceptional circumstances."

Further, paragraph 14(b) of the Rules instructs the Panel to "draw such inferences … as it considers appropriate" from the fact that "a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel ."

A. Identical or Confusingly Similar

Based on the evidences submitted in the case, the Panel is satisfied with the fact that the Complainant has registered the trademark BIOLAND not only in Germany but also in the European Union. A search on Community trademark consultation service indicates that the Complainant registered the trademark BIOLAND under the no. 000024885.

BIOLAND is a distinctive mark, which the Complainant states and the Panel accepts, has no common meaning. The word BIOLAND is not found in the Merriam Webster Dictionary.

The relevant part of the domain name <bioland.com> is bioland. The attachment of the suffix ".com" specific to the gTLD, in the Respondent Domain Name, does not render it visually or phonetically different from Complainant’s trademark.

For these reasons, as numerous prior ICANN panels have found in many similar cases (See Telstra Coporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Lufthansa AG v. Jin Wang Huh, WIPO Case No. D2001-1226; eNamix, inc v Li Yen Chun, WIPO Case No. D2001–1499; Fortum Corporation v. Li Yen Chun, WIPO Case No. D2002-0324), the Panel finds that the domain name <bioland.com> is identical to the Complainant’s registered trademark BIOLAND.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides three nonexclusive circumstances that can demonstrate that the Respondent has rights to or legitimate interests in the Domain Names:

(i) before any notice to the Respondent of the dispute, his/her/its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name has been in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) have been commonly known by the domain name, even if he/she/it have acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Names.

As prior ICANN panels have recognized (See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; Chanel, Inc v Estco Technology Group, WIPO Case No. D2000–0413), once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of proof on this element shifts to the Respondent to rebut the showing.

In the same time many prior ICANN panels (see Singapore Airlines limited v. European Travel Network, Wipo Case No. D2000–0641; Bayerische Motoren Weke AG v. Null, WIPO Case no. D2002-0937), have accepted that the silence of the Respondent might be an indication that he has no rights or legitimate interests in respect of the disputed domain name.

Accordingly to the prior practice of ICANN panels, in the present case the Panel finds that the Complainant established a prima facie showing that the Respondent has no rights to or legitimate interests in the disputed domain name.

The Panel, referring to the Respondent, has no indication whatsoever of any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant holds a distinctive trade mark and uses that mark in connection with a web address substantially identical to the disputed domain name registered by Respondent, which displays information about its activity.

The Complainant have not authorized the Respondent to use its mark.

The domain name <bioland.com> is operating a portal site, linking to other categorized sites, according to the Yahoo model. The Panel finds that there are no goods or services offered for sale on Respondent’s website, which demonstrates that the Respondent does not have any intent to use his portal page in a bona fide manner to establish consumer goodwill or trade mark rights in the domain name <bioland.com>.

In the same time, the Panel cannot find that the Respondent was using the domain name not in the trade mark sense, but in the descriptive sense, describing the types of businesses listed on the directory page, as prior ICANN panels have recognized that it may be considered as evidence for legitimate rights and interests of the Respondent in the disputed domain name. (See Sweeps Vacuum & Repair Center. Inc v. Nett Corp Inc., WIPO Case No. D2001–0031), because the disputed domain name is not a generic name and it does not have any meaning, which might be considered descriptive for the Respondent web site activities.

Moreover, related to the fact that the Respondent failed to submit a Response to the Complainant allegations, the Panel will not, in these circumstances, draw an inference that Respondent, prior to notice of a dispute, made demonstrable preparations to use the disputed domain name for a bona fide offer of goods or services.

Furthermore, as the Complainant contends, the Respondent is not a licensee of the Complainant and no otherwise permission or consent has been granted to the Respondent to use the BIOLAND mark or to apply for any domain name incorporating this mark.

Additionally, the Respondent is not commonly known by the domain name <bioland.com>, especially because his name does not include the string BIOLAND, and also because the Respondent does not proved that he holds a trademark "BIOLAND."

As regarding the circumstance provided by paragraph 4(c)(iii), there is no evidence that the Respondent is making a legitimate noncommercial or fair use and is making an educational, political satirical or other use of the disputed domain name that implicates free speech principles or any other recognized category of fair use.

For the above said considerations and taking into account the failure of Respondent to file a Response to the Complainant allegations, the Panel finds that the Respondent has no legitimate rights to and interests in the disputed domain name.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) provides that 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 a domain name in bad faith:

(i) circumstances indicating that the Respondent have registered or have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) the Respondent have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent have intentionally attempted to attract, for commercial gain, Internet users to his/her/its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his/her/its web site or location or of a product or service on your web site or location.

The Panel considers that the provisions of paragraph 4(b)(i) of the Policy are applicable in the present case and it shall not go further in analyzing the remaining circumstances provided by paragraph 4(b).

Considering the Complaint and the evidences submitted in the case, the Panel finds that the Respondent primarily acquired the disputed domain name for the purposes of selling, renting, or otherwise transferring the name registration to customers (Complainant or competitors of the Complainant).

Such an inference may be drawn from the fact that the disputed domain name as currently registered resolves to an web site which displays a prominent statement "for sale, contact us", which leads to the email addresses: Lee.Online@msa.hinet.net; fred@soeasy.net.

Based on the evidences submitted, the Panel finds that the former registrants of the disputed domain name were IA Consulting, Inc. and Lee Yen Chun. The Panel acknowledges that IA Consulting and a certain Li Yen Chun have been associated with WIPO cases regarding registrants and users in bad faith of several domain name, well known trademarks belonging to third parties. (See Fortum Corporation v. Li Yen Chun, WIPO Case No. D2002-0324; The British Council v. Li Yen Chun, WIPO Case No. D2001-0097). As there is a resemblance of the name Lee Yen Chun and Li Yen Chun and having into consideration the association of these persons with IA Consulting and also the silence of the Respondent in the present case, the Panel assumes for the purpose of the present case that Lee Yen Chun and Li Yen Chun are the same persons.

While the disputed domain name was registered under IA Consulting, Inc. and Lee Yen Chun names, the website <bioland.com> displayed the same prominent "for sale, contact us." Following the e-mail contact made by the Complainant under a fictive name, Lee Yen Chun has offered the disputed domain name for sale for consideration of $ 2500 in excess of his out of pocket consideration money (See Fortum Corporation v. Li Yen Chun, WIPO Case No. D2002-0324; The British Council v. Li Yen Chun, WIPO Case No. D2001-0097). This fact represents in the Panel’s opinion a clear case of registration and use in bad faith of the disputed domain name by the former Registrants.

Currently, the disputed domain name is registered under the name of the Respondent Lee Yi. As the Panel has found, the disputed domain name has the same content and same function as it used to have while it was registered under IA Consulting, Inc. and Lee Yen Chun, names. The Panel consider that this is a strong indication that Respondent Lee Yi, took over the disputed domain name from IA Consulting, Inc. and Lee Yen Chun.

Furthermore, the Internet address containing the disputed domain name, "http://www.bioland.com/cgi-bin/tosf.html", resolves to an IA Consulting site. The Panel considers that this fact is an indication that the Respondent is associated with the former Registrants, which have registered and used in bad faith the disputed domain name.

As the Panel has previously accepted, the trademark "BIOLAND" is an unusual one with no meaning in English, which is commonly known for the products of the Complainant. The members, consumers and business partners of the Complainant are expecting to find information of the Complainant under domain names consisting of the trademark of the Complainant as gTLD. In the same time the Complainant already operates the gTLD’s <bioland.org>, <bioland.info> and the ccTLD’s <bioland.ch> and <bioland.de>. In these circumstances it is hard to imagine that the Respondent has acquired the disputed domain name without being aware of the Complainant.

The above factual circumstances combined with the failure of the Respondent to file a response creates a presumption in the favor of the Complainant which leads the Panel to the conclusion that the Respondent acquired the disputed domain name in bad faith.

The Policy requires that the Complainant demonstrate both that the disputed domain name has been registered and that is being used in bad faith. As the disputed <bioland.com> resolves to an active site, albeit which has no obvious connection with the word "bioland", the Panel is prepared to find like other prior ICANN Panels in similar cases (Fortum Corporation v. Li Yen Chun, WIPO Case No. D2002-0324) that this use demonstrates that the disputed domain name was acquired and is being used in bad faith.

 

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 domain name, <bioland.com> be transferred to the Complainant.

 


 

Beatrice Onica Jarka
Sole Panelist

Dated: February 4, 2003

 

Источник информации: https://internet-law.ru/intlaw/udrp/2002/d2002-1147.html

 

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