German Hardcopy AG v. B.E. Derzhavin (Boeder), Votum Mutual Insurance Co.
Case No. D2005-1077
1. The Parties
The Complainant is German Hardcopy AG Brilon, Germany (the “Complainant”), represented by CMS Hasche Sigle, Germany.
The Respondent is B.E. Derzhavin (Boeder), Votum Mutual Insurance Co., St.
Petersburg, Russian Federation, represented by Youri Yasmanov, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <boeder.com> (the “Domain Name”)
is registered with DomReg Ltd. d/b/a LIBRIS.com (“the Registrar”).
3. Procedural History
The Complaint was filed (in the English language) with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2005. On October 14, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 19, 2005, 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 for the administrative, billing, and technical contact. However, the Registrar notified the Center that the language of the registration agreement was Russian, not English. Following further correspondence between the Center and the parties, on October 24, 2005, the parties submitted to the Center their agreement that the language of this proceeding be English instead of Russian.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 31, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2005. By agreement between the parties that date was put back to November 23, 2005. The Response was filed with the Center on November 23, 2005.
On November 23, 2005, the Complainant’s representative emailed the Center asking if the Rules permitted the filing of a reply by the Complainant. On November 25, 2005, the Center responded stating that the Rules made no general provision for the submission of further filings, but that supplemental filings might be accepted at the sole discretion of the Panel. The Complainant’s representative was informed that if the Complainant submitted a supplemental filing, the Panel would be alerted. No further filing has been received by the Center.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 1, 2005. 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.
One procedural matter which has exercised the Panel is the identity of the Respondent. The Whois search conducted by the Complainant at the Registrar’s database on October 11, 2005, identified the Respondent as B.E. Derzhavin (Boeder) Expresspost and it was by that name that the Respondent was identified in the Complaint. By October 29, 2005, however, the Whois record on the Registrar’s database had changed to B.E. Derzhavin (Boeder), Votum Mutual Insurance Co. at the same address. On November 23, 2005, the Respondent emailed the Center seeking to explain the change. According to the Respondent there are two holders of the Domain Name, Boeder, a company, and Votum Mutual, an insurance company, which, from an insurance certificate exhibited to the Response, appears on August 29, 2005, to have insured Boeder against loss of the right to use the Domain Name. According to the Respondent, Mr. Derzhavin is not part of the Boeder Company but is an independent ‘webmaster’ used by the Respondent.
Having read the papers in the case the Panel decided to issue a Procedural Order (directed to the Respondent) in the following terms:
“Rule 15 provides that a Panel shall 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.
In this case there is a Complaint and a Response. According to the Rules both submissions need to be considered by the Panel.
The Respondent has launched a sustained attack on the quality of the Complaint and the Panel has noted the Respondent’s contentions in this regard.
The Respondent has chosen to file a Response and that Response needs to be considered. Suffice it to say that the Panel is left with the distinct impression that the Respondent’s explanation is artificial.
One reason why the Panel has been left with this impression having read the Response is that none of the key elements of the explanation have been supported by any contemporaneous documents predating acquisition of the Domain Name.
Accordingly, the Panel is faced with a Complaint, which is vulnerable to attack, but which is bolstered by an unsatisfactory Response.
Rule 12 of the Rules provides that in addition to the Complaint and the Response, the Panel may request, in its sole discretion, further statements or documents from either of the parties.
The Panel invites the Respondent to file a supplemental submission clarifying its explanation and exhibiting documents to demonstrate that the explanation in the Response is a genuine explanation.
For example it ought not to be difficult for the Respondent to produce copies of pre-January 18, 2005, documents identifying (a) which of the participants has the nickname Boeder and (b) the advice of the professional advisor indicating that Boeder was the most appropriate name for the Organization. Moreover, the Panel would find it helpful to have an explanation as to why a non-commercial Organization expecting to use a name for a web address and email address should select the name several months in advance of acquiring the Domain Name. Further it strikes the Panel as strange that a non-commercial Organization should wish to spend significant time, money and effort on providing a service of the kind contemplated to worldwide holders of the Boeder family name on the basis of a nickname of one of the participants.
The Panel gives the Respondent until December 28, 2005, to file a supplemental submission. The Complainant may have until January 6, 2006 to respond to any supplemental submission from the Respondent.
The time for the decision in this case is extended until January 13, 2006.”
The Respondent responded to that Order on December 28, 2005, and the Complainant filed a Response on January 5, 2006. The Complainant’s further submission simply denies that the Respondent’s Response takes the matter any further and reiterates that the Complainant is the entity entitled to the Domain Name. The Respondent’s submission is lengthy and includes a number of attachments. It indicates that Mr. Batasov is the person whose nickname (Boeder) gave rise to the name of Boeder Public Organisation. Significantly, from the procedural point of view, it contains a paragraph seeming to suggest that Mr. Derzhavin, whose name appears as the first-named registrant of the Domain Name in the Registrar’s Whois database, has claimed rights in the name, Boeder, independent of those claimed by Boeder Public Organisation.
Accordingly, on January 6, 2006, the Panel issued a second procedural order directed to the Respondent in the following terms:
“Rule 15 provides that a Panel shall 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.
According to the Registrar’s Whois database, the name of the registrant commences with the name of an individual, B.E.Derzhavin. The Panel had understood from the Response that this was an error, Mr. Derzhavin being a webmaster who had acquired the registration of the Domain Name on behalf of Boeder Public Organisation. On that basis the Panel was prepared to accept that the proper Respondent to the Complaint was in reality Boeder Public Organisation (with or without Votum Insurance Company).
However, the Panel notes in paragraph 2.5 of the Respondent’s Response to Procedural Order No. 1 the following passage:
“About March 2005 there was a funny conflict or incident as a former webmaster Derzhavin claimed to be related to the name Boeder and to the domain name <boeder.com>, and attempted to represent the name Boeder as having relation mostly to himself.”
Mr. Derzhavin’s claim as set out in the above quote is inconsistent with him having registered the Domain Name exclusively for Boeder Public Organisation.
The Panel therefore invites both Mr. Derzhavin and Boeder Public Organisation to file a supplemental submission clarifying in what way Mr. Derzhavin claims to be related and/or has rights in the disputed domain name.
The Panel gives both Mr. Derzhavin and Boeder Public Organisation until January 13, 2006, to file a supplemental submission. The time for the decision in this case is extended until January 20, 2006.”
The Respondent responded on January 13, 2006. This further submission contained documents verifying that Mr. Derzhavin registered the Domain Name as agent for Boeder Public Organisation. One of the documents was signed by Mr. Derzhavin.
The Panel is not entirely happy that he has got to
the bottom of the matter, but given that the Complaint fails (see below) and
the absence of any challenge from the Complainant as to the identity of the
Respondent, the Panel sees no reason not to accept the Registrar’s identification
of the Respondent as it appears in the heading of this decision. In deference
to the Respondent’s explanation, the Panel treats Boeder Public Organisation
as the beneficial owner of the Domain Name and will refer to the Respondent
as “it” rather than “he”.
4. Factual Background
The Complainant is the proprietor of various trade mark registrations of the word mark BOEDER dating back to 1997. The list of registrations includes a registration in the Russian Federation, the country in which the Respondent resides. The Complaint contains next to no information on the Complainant and its business.
The Respondent registered or acquired the Domain Name no later than January 18, 2005, the date when the Respondent states that it purchased the Domain Name from one Leonid Ivanov, the previous owner. The print-out from the Registrar’s Whois database exhibited to the Complaint shows that the record was created on October 30, 2002, which usually means (and which led the Complainant to conclude) that that was the date that the Respondent registered the Domain Name. However, the Respondent has produced to the Panel an English translation of an Agreement for Sale of the Domain Name dated January 8, 2005, whereby Mr. Batasov on behalf of Boeder Public Organisation agreed to purchase the Domain Name from Leonid Ivanov for US$4,000.
Although not disclosed in the Complaint, the Respondent has produced evidence to show that on more than one occasion a German patent agent acting on behalf of the Complainant has sought to purchase the Domain Name from the Complainant, but without eliciting any reply from the Respondent. The Panel accepts the Respondent’s evidence on this as fact, because the allegation has been clearly set out in the Respondent’s response to the first procedural order, duly backed by documentary evidence and unchallenged by the Complainant despite the Complainant having been given an opportunity to respond.
As at the date of the Complaint the Domain Name was
not in active use save for an email address, email@example.com.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to its registered trade mark BOEDER.
The Complainant recites the various elements of paragraph 4(c) of the Policy, proof of the existence of any of which shall demonstrate the Respondent’s rights or legitimate interests in respect of the Domain Name, and asserts that from its investigations (a Google search) none of those circumstances appears to be present in this case.
Finally, the Complainant asserts that because the Domain Name has not been used since its acquisition by the Respondent (believed by the Complainant to have been over two years ago), therefore the Respondent registered the Domain Name with the intention of selling it to the Complainant or a competitor of the Complainant at a profit.
The Respondent does not deny that the Domain Name is identical to the Complainant’s trade mark.
However, the Respondent’s principal position is that the Complaint is fundamentally flawed in that no attempt has been made to prove the second and third elements of paragraph 4(a) of the Policy. The Respondent asserts that the Complaint is so flawed that it (the Respondent) should not be required to provide any explanation for its selection of the Domain Name.
The Respondent’s secondary position is that contrary to the Complainant’s belief, it did not register the Domain Name in October 2002. The Respondent states that it acquired the registration from the previous owner on January 18, 2005, and produces documentary support for that claim, none of which has been challenged by the Complainant. Accordingly, the basis for the Complainant’s allegation of bad faith, (namely over two years of non-use of the Domain Name) is misconceived.
The Respondent’s tertiary position is that as at the date of its acquisition of the Domain Name in January 2005, it was wholly unaware of the existence of the Complainant and its trade mark; accordingly, there is no way in which registration of the Domain Name could be held to be a bad faith registration under the Policy.
Nonetheless, the Respondent elected in its Response to provide an explanation for its choice of Domain Name. The Respondent’s stated position is as follows:
1. In August 2004, a group of people in St. Petersburg (Valeri Sparish, Dimitri Batasov and Olga Larionova) got together and decided to form an organization to provide email addresses and websites for people around the world with particular family names.
2. The surname they decided to start with was Boeder, a name known in the Russian language and several other European languages. They selected the name because among the various names they were considering it was a nick name for one of their number (now known to be Dimitri Batasov) and it was also the name recommended to them by an independent expert, Alexander Osipov.
3. Boeder Public Organization was duly formed under the law of the Russian Federation.
4. Under Russian Federal Law Boeder Public Organization is not permitted to trade so there is no possibility of the Respondent using the Domain Name for commercial gain.
5. The Respondent has brought in Votum Insurance Company as a co-registrant of the Domain Name, the Respondent having insured with Votum Insurance Company against the risk of the Respondent losing its right to use the Domain Name.
6. Since acquisition of the Domain Name the Respondent has made preparations to use the Domain Name for legitimate purposes consistent with the objects of Boeder Public Organisation.
Thus, the naming of Boeder Public Organization and
the subsequent selection of the Domain Name owed nothing to the Complainant
or its trade mark. The choice was entirely independent.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
It is not in dispute that the Domain Name is identical to the Complainant’s trademark and the Panel so finds.
B. Rights or Legitimate Interests
The Respondent has provided an explanation for its selection of the Domain Name (set out in section 5B above) which, if true, certainly provides a basis for a finding in favour of the Respondent under this head.
However, the explanation raises questions such as: why would a non-commercial organization want to pay US$4,000 for a domain name? Why would such an organization wish to insure against the risk of losing its right to use that domain name? Is not the provision of email addresses for persons having a particular surname a somewhat unusual activity for a non-commercial organization?
Variously in its responses the Respondent has asserted on the one hand that under Russian Federal Law it is unlawful for Boeder Public Organisation to trade and on the other hand that Boeder is in the process of applying for trade mark registrations for BOEDER. How can that be? Who or what was Expresspost, whose name featured in the first Whois search result conducted by the Complainant?
These and other unanswered questions render the Panel unable to make a positive finding that the Respondent has rights or legitimate interests in respect of the Domain Name, but it is unnecessary for the Panel to address this issue further in light of his finding under the next heading.
C. Registered and Used in Bad Faith
The substantive part of the Complaint dealing with bad faith is very short. It reads in full as follows:
“Since the Domain Name was registered on 30 October 2002 and is not used yet, the Domain Name was registered primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the owner of the trade mark, or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket expenses directly related to the Domain Name”.
Rarely, will mere non-use of a domain name over a two year period constitute sufficient evidence of bad faith. Ordinarily, there will have to be other circumstances helping to reach that conclusion e.g. a relationship between the parties or a particularly famous and/or distinctive domain name. Here, Boeder is a surname familiar in several European countries and it is relevant to note that the Complaint contains absolutely no information about the Complainant beyond the fact that it owns relevant trade mark registrations.
The Complainant asserts that the period of non-use leads to the inescapable conclusion that the Respondent registered the Domain Name in order to sell it to the Complainant or a competitor of the Complainant at a profit. That allegation might have been helped by evidence to show that the Respondent had contacted the Complainant with a view to selling it. The Complaint contained no such evidence.
The only evidence as to prior contact between the parties was produced by the Respondent. It appears that on several occasions the Complainant’s Patent agent contacted the Respondent with a view to acquiring the Domain Name, but failed to elicit a response. The Complainant has not challenged this evidence despite having had an opportunity to do so. Given the nature of the Complainant’s bad faith allegation, the failure of the Complainant to disclose this relevant information in the Complaint is, to say the least, most unfortunate.
However, as already pointed out, the Respondent’s evidence (not challenged by the Complainant) is that as at the date of the Complaint the Respondent had only been in possession of the Domain Name for less than 10 months.
In the result the Panel finds that the Complainant has failed to satisfy the Panel that the Domain Name was registered and is being used in bad faith.
While that disposes of the Complaint, two other matters need to be addressed, namely:
1. In one of its submissions the Respondent asserts that “due to financial dependence of WIPO on a complainant, there may be observed a clear tendency to decide the disputes without a proper analysis of the situation, to presume Respondent’s burden of proof”. The allegation is utterly misconceived. It is the panelists who apply the Policy when it comes to the decisions, not WIPO. The panelists are independent. Their fees, which are modest, are paid by WIPO, a not-for-profit organization, out of the funds received from the parties. The panelists have no interest in the matter other than to do their best to arrive at a just result within the terms of the Policy. Their professional reputations depend upon an honest, independent, unbiased approach to their task as evidenced by the published decisions.
2. The Respondent’s primary position (as set out in section 5B above) is that the Complaint is fundamentally flawed in that it does not begin to address in any proper form the second and third elements to be proved by a Complainant under paragraph 4(a) of the Policy. Thus, the Respondent argues, the Complainant never got off first base and what the Respondent did or did not say in response is irrelevant.
As is apparent from the procedural history of this case (see section 3 above)
and in particular the procedural orders issued by the Panel, the Panel takes
a broader view. It should not be forgotten that panelists in performing their
duties under the Policy are required to take into account all the submissions
put in by the parties. Had the Respondent not filed a Response, the Panel would
have dismissed the Complaint on the same basis, namely that it has not proved
bad faith registration and use. However, by filing a response featuring an explanation
which on its face, in the view of the Panel, lacked credibility, the Respondent
bolstered the Complaint to a material degree. Had the Respondent not produced
documentary evidence pre-dating the registration of the Domain Name to support
the Respondent’s story, the Panel would have concluded on the balance
of probabilities that the explanation was not true. Why would a respondent produce
a false response if it were not to defeat a well-founded (albeit badly expressed)
For all the foregoing reasons, the Complaint is denied.
Dated: January 19, 2006