Tipp 24 AG v. Tipp24 S.A.
Case No. D2005-1312
1. The Parties
The Complainant is Tipp 24 AG, Hamburg, Germany, represented by JBB Rechtsanwaelte, Germany.
The Respondent is tipp24 S.A., Miami, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <tipp24.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2005. On December 20, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On December 21, 2005, eNom 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 December 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2006.
The Center appointed Kristiina Harenko as the Sole
Panelist in this matter on January 26, 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 an online broker of state-owned lottery products in Germany and the proprietor of the registered trademark TIPP24 in Germany with a priority of March 15, 2000. The trademark covers Nice classifications 9, 16,25, 28, 35, 36, 38, 41 and 42.
The disputed domain name <tipp24.com> is registered
on February 16, 2000.
5. Parties’ Contentions
The Complainant was founded in 1999. With total billings of EUR 154.1 million in 2004, Complainant has a leading market position as an online broker of state-owned lottery products in Germany. Complainant has also been present in other major European lottery markets, including Spain since 2002 and Italy since 2005.
Complainant acts as a broker, enabling its customers to participate in almost all games of chance offered by state-owned and-licensed lotteries in Germany via its website “www.tipp24.de”. Since 2002, the number of Complainant’s registered customers has increased t more than 1.2 million.
The trademark registration covers an extensive range of goods and services. Tipp 24 is, furthermore, Complainant’s international trade name. The Complainant’s name and its service are well-known in Germany.
The current holder of the disputed domain name is unregistered business name “tipp24 S.A.”. The legal form of the “S.A.” does not exist in the United States of America. The website accessible through the Internet domain name <tipp24.com> is empty. There is no postal address or any phone number of the domain name holder.
The Complainant contends that the disputed domain name <tipp24.com> was earlier registered to Mr. Klaus Rieder, Dachau, Germany. As a result of a prior action of the complainant before a German court, Mr. Rieder has been ordered to desist using the expression “tipp24” as a domain “no matter in what TLD or in which spelling, especially in the combination of words tipp24.com” and has been ordered to cancel his registration of the domain name <tipp24.com>. The decision of the district court of Hamburg was pronounced on May 29, 2002.
The Complainant contends that the relevant part of the disputed domain name <tipp24.com >is tipp24, which is identical to the Complainant’s registered trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name. The word “Tipp24” is an invented word, and as such not one the traders would legitimately choose unless seeking to create an impression of an association with the Complainant. The Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Finally the Complainant contends that the domain name is registered and used in bad faith. The word “tipp” is not known in the English language. It is clearly aimed at the German market. The combination tipp24 does not have a direct meaning. The Respondent has intended to block the domain name and prevent the Complainant from offering services under this domain name. The concealment of identity and contact information also evidences bad faith. Furthermore, the fact that the creation date of the domain name, as provided by a Whois-Search of the current registration, is still the same as the original registration of Mr. Rieder indicates that the domain name has been acquired by a domain name transferal. If the domain name had been freely available to the Respondent a new creation date would have been issued. This indicates that the transferal has solely been pursued for the purpose of evading the scope of German jurisdiction to avoid the enforcement of the court decision referred to above. The Complainant also contends that one may also infer that the domain name was registered primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s out –of-pocket costs directly related to the domain name.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Pursuant to Policy, Complainant must prove the following elements.
(i) The domain name is identical or confusingly similar to a trademark in which it holds rights; and
(ii) Respondent has no right or legitimate interests in the domain name; and
(iii) The domain name was registered and used in bad faith.
Under paragraph 15(a) of the Rules, this Panel must “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 view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules state the Panel’s findings under each heading with reference to the parties’ contentions, the Policy, the Rules, the Supplemental Rules and the applicable substantive law.
A. Identical or Confusingly Similar
The Complainant has registered trademark TIPP24. The Panel finds that the domain
name <tipp24.com> is identical or confusingly similar to a trademark TIPP24.
The mere addition of the gTLD “.com” is not a distinguishing feature
and does not change the likelihood of confusion (Telstra Corporation Ltd
v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the domain name pursuant to the Policy Paragraph 4(a)(ii).
Respondent is not affiliated with the Complainant and has not received any permission or consent to use the TIPPipp24 trademark.
The Policy paragraph 4(c) lists three nonexclusive circumstances for the Panel to conclude that Respondent has rights or legitimate interests in the domain name. The Respondent has not replied to the Complainant’s contentions and therefore has failed to invoke any right or legitimate interest it might have in respect of the disputed domain name. The arguments by the Complainant, as summarized here above under paragraph 5A, supported by means of proof submitted by the Complainant, have convinced the Panel that the Respondent has not had, nor has, any rights or legitimate interest in respect of the domain name <tipp24.com>
C. Registered and Used in Bad Faith
The final issue is that of bad faith registration and use by the Respondent. For paragraph 4(a)(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.
According to the Whois-Search of the registration the domain name was created on February 16, 2000. The Complainant’s trademark is registered on March 15, 2000. However, the Complainant has stated that the domain name was originally registered to Mr. Rieder. This statement is supported by a court decision of a German Court. The court ordered Mr. Rieder to desist from the use of words “tipp24”as a domain especially in the combination of words “tipp24.com”. This decision was given on May 29, 2002. The German decision was attached to the Complaint only in German language. According to paragraph 11(b) of the Rules the Panel could have ordered the Claimant to submit an English translation of this decision. The Panel has been able to verify that the statements in the Complaint are accurate without ordering such translation.
The fact that the creation date of the disputed domain name <tipp24.com> is still the same of the previous registration of Mr. Rieder, indicates that the domain name has been acquired by a domain transfer. The Panel is convinced that the transfer has solely been pursued for the purpose of evading the scope of German jurisdiction to avoid the enforcement of the court decision. If the domain had been freely available to the Respondent a new creation date would have been issued. In this case the better priority of the Claimant’s trademark right would have been clear.
The Panel finds that the relevant point in time when assessing whether the Respondent has registered the domain name in bad faith or not is the time when the domain name registration was transferred to the Respondent, not the original registration date of the domain name. The Panel finds that the Complainant had already established its trademark right to the trademark TIPP24 when the domain name was transferred to the Respondent.
The Respondent has concealed its identity and contact information. This evidences also bad faith especially in the circumstances described above.
The website “www.tipp24.com” is empty. The passive holding of a
domain name can in certain circumstances be evidence of the registration and
use of a domain name in bad faith for the purposes of paragraph 4(a)(iii). Only
one of these circumstances (paragraph 4(b)(iv), by necessity, involves a positive
action post-registration undertaking relation to the domain name (using the
name to attract customers to a website or other on-line location). The other
three circumstances contemplate either a positive action or inaction in relation
to the domain name. That is to say, the circumstance identified in paragraphs 4(b)(i),
(ii) and (iii) can be found in a situation involving a passive holding of the
domain name registration. Of course, these three paragraphs require additional
facts (an intention to sell, rent or transfer the registration, for paragraph 4(b)(i);
a pattern of conduct preventing a trademark owner’s use of the registration,
for paragraph 4(b)(ii); the primary purpose of disrupting the business of a
competitor, for paragraph 4(b)(iii),). Furthermore the circumstances identified
in paragraph 4(b) are “without limitation”. Paragraph 4(b) expressly
recognises that other circumstances can also be evidence that the domain name
was registered and is being used in bad faith (Telstra Corporation Ltd v.
Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel has considered whether, in the circumstances of this particular Complaint, the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith. It concludes that it does. The particular circumstances of this case which lead to this conclusion are:
- The transfer of the domain name from Mr. Rieder to the Respondent seems to have solely been pursued for the purpose of evading the scope of German jurisdiction to avoid the enforcement of the court decision against Mr. Rieder.
- The Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered name.
- The Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement.
- The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name.
- Taking into account all of the above, it is not possible to conceive of any actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
In light of these particular circumstances, the Panel concludes that the Respondent
registered and used the disputed domain name <tipp24.com> in bad faith.
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 <tipp24.com> be transferred to the Complainant
Dated: February 9, 2006