DEG - Deutsche Investitions- und Entwicklungsgesellschaft mbH v. Mr. Kim Hong
Case No. D2005-1280
1. The Parties
The Complainant is DEG - Deutsche Investitions- und Entwicklungsgesellschaft mbH, Cologne, Germany, represented by Freshfields Bruckhaus Deringer, Germany.
The Respondent is Mr. Kim Hong, Boothwyn, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed domain name <deginvest.org> is registered with Direct Information
Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2005. On December 12, 2005, the Center transmitted by email to Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On December 22, 2005, Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com 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. 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 January 5, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2006.
The Center appointed Willem J. H. Leppink as the sole
panelist in this matter on February 17, 2006. 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 large German development finance institution for long-term project and company financing and member of the KfW banking group.
The Complainant is the registered owner of the following German trade mark registrations:
- German trade mark registration no. 39961097.9 “DEG-Wir unternehmen Entwicklung”, registered on November 18, 1999;
- German trade mark registration no. 39822523.0 “DEG”, registered on July 24, 1998.
The Complainant is the registrant of the domain name <deginvest.de>. Under this domain name Complainant presents itself and its business.
The Respondent is an individual domiciled in the United States of America.
The website connected to the Domain Name of the Respondent is almost identical to Complainant’s homepage. There is one little difference between the original website of the Complainant and the website of Respondent. Besides the “normal” categories on the Complaint’s website, which are “home”, “emails”, “technicals”, “search” and “sitemap” there are two categories added to website of Respondent, “faq” and “join us”.
When opening these added categories the user of the website of Respondent is asked to become an “agent of the organisation”. The agent’s job is to accept cashier cheques to transfer the funds to the “organisation”. This way, private person are requested to collect cheques that are sent to them by email, cash them and transfer the money to a specified bank account somewhere in the world. According to the Complainant this appeal constitutes a criminal offence of money laundering. The Complainant has reported this to the German police.
The Complainant sent a dissuasion letter to the Respondent and asked the registrar of the Domain Name to suspend the Domain Name. The Respondent did not respond to the dissuasion letter and the registrar refused to suspend the Domain Name. However, on November 28, 2005, the Complainant found out that the Domain Name does not lead to the look-a-like website anymore.
Although the Domain Name does not lead to the look-a-like website anymore, the Domain Name is still held by the Respondent.
The Complainant was also confronted with similar websites
connected to <deginvest.com> and <deginvest.net>. These domain names
are or have been registered with other parties than the Respondent.
5. Parties’ Contentions
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
The Complainant contends that the Domain Name is identical and confusingly similar to Complainant’s trade marks.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Domain Name. There is no other company or organisation that is known by the name “deginvest” and the Respondent could not be commonly known by the Domain Name before, as the Respondent registered the Domain Name in issue not until October 31, 2005.
Furthermore the Respondent is not making a legitimate non-commercial or fair use of the Domain Name. The Respondent was not using the disputed Domain Name in connection with a bona fide offering of goods or services, nor had it made preparations to do it. The Respondent’s aim is to mislead consumers and to abuse the good reputation of the Complainant. Copying the Complainant’s homepage demonstrates that a bona fide use does not come into consideration.
Complainant contends that the Domain Name was registered and is being used in bad faith. The fact that the Respondent has copied the Complainant’s homepage perfectly points out that the only aim of the Respondent is to create a likelihood of confusion with the Complainant’s mark and website. The Respondent pretends that its website is operated by the Complainant and therefore his system of money laundering is legal. The Complainant alleges that by doing this the Respondent takes advantage of the Complainants good reputation. Furthermore the Complainant points out that by asking private persons to accept cashiers cheques, to cash them and to transfer the money to a specified account is dubious, probably criminal and underlines the use in bad faith of the Domain Name.
The Respondent was duly notified of the administrative
proceedings as stipulated under paragraph 2(a) of the Rules but did not reply
to the Complainants’ contentions.
6. Discussion and Findings
Since the Respondent has not submitted a response, the Panel has no alternative but to accept as true all the factual supported contentions made by the Complainant in accordance with the Rules, paragraph 5(e):
“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the Dispute based upon the Complaint.”
Even though there has been no response the Panel must, under the Rules, paragraph 14(a) “…proceed to a decision on the Complaint”.
For the Complainant to succeed, it must show that the Respondent meets each of the criteria in the Policy, paragraph 4(a):
(i) your Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the Domain Name; and
(iii) your Domain Name has been registered and is being used in bad faith.”
A. Identical or Confusingly Similar
The Domain Name <deginvest.org> combines the
undisputed trade mark “DEG” in its entirety with the suffix “invest”.
The suffix and dictionary word “invest” does not render the disputed
Domain Name significantly different from the Complainant’s DEG trade mark.
As set forth in numerous cases the mere addition of a descriptive word as suffix
(i.e. the word “invest”) to a trade mark does not prevent confusing
similarity between the Domain Name and the trade marks (See Dow Jones &
Co., Inc. v. Dow Jones Update, WIPO Case
No. D2000-0495 (August 14, 2000) (<dowjonesonline.com> held confusingly
similar to DOW JONES mark); Edgar Rice Burroughs, Inc. v. Adtel Communications,
WIPO Case No. D2000-0115 (April 21, 2000)
<tarzanonline.com>, <tarzanonline.net>, and <tarzanonline.org>
held confusingly similar to TARZAN mark). The addition of the word “invest”
to the Complainant’s trade mark DEG does even increase the likelihood
of confusion among the public as the Complainant has registered its trade marks
for investment services.
Therefore, under the Policy, paragraph 4(a)(i) the Panel considers the Domain Name confusingly similar to the trade mark in which the Complainant has exclusive rights. Therefore, there is no need to assess the Complainant’s unregistered rights.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the following circumstances can demonstrate rights to and legitimate interests of the Respondent in a Domain Name:
(i) before any notice was given to the Respondent of the dispute, the Respondent used, or demonstrably made preparations to use, the Domain Name or a Name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organizations) has been commonly known about the Domain Name, even though it has not acquired any trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the Domain Name without intent for commercial gain to misleading the divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
Before notice to the Respondent of the dispute, there is no evidence of his use, or demonstrable preparations to use the Domain Name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. To the contrary the Respondent is using the domain name in connection with illegal activities whilst using Complainant’s reputation.
The Respondent has not been previously known under the disputed Domain Name. To the contrary, the Respondent has created the impression that his website is the website of the Complainant.
The Respondent is not making a legitimate non-commercial or fair use of the Domain Name. The website associated to the Domain Name is an almost identical copy of the homepage of the Complainant. The sole reason of Respondent to register and use the Domain Name is to mislead consumers by giving the false impression that consumers are dealing with the Complainant and to abuse the good reputation of the Complainant and its trade marks.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
By failing to file a response, the Respondent has done nothing to contest the allegations of the Complainant that it has registered and is using the Domain Name in bad faith.
The Policy, paragraph 4(b) sets out the ways in which the Complainant can show the Domain Name is registered and used in bad faith:
“(i) circumstances indicating that you have registered or you 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 trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess if you documented out-of-pocket costs directly related to the Domain Name; or
(ii) you have registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that you engaged in a pattern of such conduct; or
(iii) you have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you have intentionally attempted to attract, for commercial gain, internet users to your website 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 your website or location or of a product or service on your website or location”.
Based on the facts the registration and use of the Domain Name by Respondent in bad faith is evident.
The Respondent has copied the Complainant’s homepage “www.deginvest.de” entirely and registered an identical domain name, save for the suffix “.de”, for the sole purpose to attract for commercial gain internet users to the Domain Name by creating a likelihood of confusion with the Complainant’s mark and domain name.
The only intention the Respondent could have, is to have internet users think that they are dealing with the Complainant and subsequently give the impression that the system of money laundering mentioned on the site is legal. This clearly indicates bad faith.
The Panel therefore concludes that the Respondent registered and is using the
Domain Name in bad faith and that the requirements of paragraph 4(a)(iii) of
the Policy are satisfied.
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 <deginvest.org> be transferred to the Complainant.
Willem J. H. Leppink
Dated: March 3, 2006