Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bernardka Pulko v. Greg Frazier

Case No. D2006-0099

 

1. The Parties

Complainant is Bernardka Pulko, Ljubljana, Slovenia, represented by Patentna Pisarna d.o.o., Slovenia.

Respondent is Greg Frazier, Whole Earth Motorcycle Center, Denver, Colorado, United States of America, represented by Aiken & Fine, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <benkapulko.com>, <benkapulko.info>, <benkapulko.net>, and <benkapulko.org> are registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2006. On January 24, 2006 and January 30, 2006, the Center transmitted by email to Go Daddy Software requests for registrar verification in connection with the domain names at issue. On January 24, 2006, and January 30, 2006, Go Daddy Software transmitted by email to the Center its verification responses confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 22, 2006. The Response was filed with the Center on February 21, 2006.

The Center appointed Peter G. Nitter as the sole panelist in this matter on March 1, 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

Complainant is the owner of the figurative service mark no. 200371665 containing the words BENKA PULKO, registered in Slovenia on November 3, 2003. The service mark covers services in Classes 35, 41 and 42.

 

5. Parties’ Contentions

A. Complainant

Complainant claims to be known as Benka Pulko in the world at large. Complainant is the first human being to travel all seven continents on a motorcycle. She also claims to be the first woman to ride through Saudi Arabia. Complainant holds the Guinness World Record for the longest motorcycle journey by a female. This journey was covered by numerous international media. Complainant was awarded The Slovenian Woman of the Year in 2003. The Guinness Book of World Records documents Complainant’s achievements in the editions for 2004, 2005 and 2006.

Complainant has published a book titled “Around the World Following the Sun”, which has won two prizes.

Complainant has been using BENKA PULKO as her name and mark, particularly in connection with educational services and seminars/lectures.

The domain names at issue repeat in total the verbal element of Complainant’s mark. The domain names also represent the personal name Bernardka Pulko and the nickname Benka Pulko, by which Complainant is known to the global public and under which she appears in the Guinness Book of World Records.

Complainant’s name is in no way related to Respondent, and Respondent is not known under Complainant’s name. Respondent has no legitimate interest to register another person’s name, especially where that name is also the name of a world renowned figure.

The domain names are inactive and are thus not used to offer products and services in good faith.

Complainant alleges that Respondent has earlier, in November 2005, used one of the domain names at issue to publish a text entitled “The Benka Truth Pages”, whereby he tarnished Complainant’s mark and her personal name.

Complainant has never given Respondent any license, authorization or consent to use her name or mark. Respondent’s purpose in registering and using the domain names at issue is damaging.

On January 4, 2006, Complainant sent a warning letter, via her attorney, to Respondent. Respondent did not reply.

Complainant is being deprived of the use of the domain names so that she can no longer promote herself and her mark, and market her book as she has done before. Irreparable damage is being inflicted upon Complainant’s name and reputation since the cover of her book and most promotional material lists the domain name <benkapulko.com> as her web address.

Complainant registered the four domain names at issue in 2002 and 2003. The three other domain names at that stage led to the <benkapulko.com> website, which was her official website.

In the process of registering the four domain names Complainant was assisted by Mr. Daniel Cohen. He registered the domain names in Complainant’s name and paid all the registration fees pursuant to an agreement between him and Complainant.

Complainant got into a dispute with Mr. Cohen, as a result of which Mr. Cohen, who knew Complainant’s password, transferred the domain names to his own name without her knowledge or permission. In exchange for transferring these domain names back Mr. Cohen demanded USD 75,000.

Complainant refused to consent to the request, and tried to deal with the matter with the registrar, but the registrar did not react, and subsequently Mr. Cohen transferred the domain names to Respondent, whom he knew, as they were both motorcyclists.

Respondent also knew Complainant from previous occasions. Respondent has used Complainant’s name on numerous occasions in written articles where she is noted as a reference, being a fellow motorcycle world traveler. Respondent and Complainant were competitors, because they both are motorcyclists and world travelers. Respondent registered and used the domain names in bad faith to disrupt and tarnish the business of Complainant. The domain names were not registered “by mistake”.

Bad faith use also follows from the fact that the domain names are inactive.

Complainant had previously held the domain names and their online locations and used them to promote her past and present activities, until access was incapacitated.

Complainant suspects that the data provided by Respondent to the registrar Go Daddy Software is not true since the data on the address differs very slightly from Respondent’s real address.

B. Respondent

Respondent, Dr. Gregory W. Frazier, is the owner and President of the Whole Earth Motorcycle Center (the “WEMC”).

Respondent has met Complainant and they previously had some cooperation regarding motorcycling accessories and traveling. Respondent severed all relations with Complainant when he discovered that she allegedly was committing different sorts of computer crime.

According to Respondent, Respondent legitimately purchased the domain names at issue from the registrar Go Daddy Software in good faith for the business purposes of the WEMC, which include book publishing, audio/visual production, and the sale of products and services related to the motorcycle industry.

Complainant owned no domain names at the time Respondent purchased the domain names at issue. Respondent claims that Complainant filed the Complaint to harass Respondent and the WEMC and to attempt to prevent the marketing of a copyrighted book about Complainant, titled “Benka Pulko”, as well as audio/visual products by the same name. Complainant filed the Complaint in hopes of acquiring the domain names at the lesser expense of the cost of the WIPO filing rather than purchasing them from her former partner for USD 75,000.

Respondent claims that Complainant makes numerous statements and assertions in the Complaint that are known to be false by Complainant, and that the Complaint therefore should be dismissed.

Respondent claims that he never received any warning letter at the addresses mentioned by Complainant.

Respondent states that he does not know Mr. Daniel Cohen, and has never met, spoken to or corresponded with him. Mr. Cohen made no transfer of the domain names to Respondent.

Respondent claims that it is falsely stated that he does not use the domain names, as Complainant does not present evidence to support the assertion, and because she is not a party to the internal marketing and business plans of the WEMC. The websites for the domain names are still under design and construction. Respondent has never used any of the domain names in question to provide access to any other website.

Respondent claims to have legitimate interest in the domain names based on the fact that he is the owner of the WEMC, publisher of the copyright book titled “Benka Pulko”, and through sales of books, DVDs, motorcycling accessories and motorcycling information.

When Respondent registered the domain names he only knew about Complainant’s earlier website, “www.ardi.si/benka”.

Respondent has never offered the domain names at issue for sale.

Complainant does not suffer any irreparable damage because she now uses the website <benka-pulko.com>, which was created on November 8, 2005.

Respondent claims that he, through the WEMC, is the holder of the legal copyright for the title “Benka Pulko”. Respondent refers to the fact that Complainant has no trademark or copyright in the USA.

Respondent claims that the disputed domain names are not confusingly similar to Complainant’s mark.

Respondent has demonstrated, by submitting the attachments to the Response, that the creation, registration and purchase of the domain names was legitimate.

Nothing shows that the domain names are used in bad faith.

 

6. Discussion and Findings

A. Procedural Issue

Respondent claims that Complainant makes numerous statements and assertions in the Complaint that are known to be false by Complainant, and that the Complaint therefore should be dismissed pursuant to the Rules, paragraph 3(b)(xiv).

According to the mentioned paragraph Complainant certified in the Complaint that the information contained in the Complaint is to the best of Complainant’s knowledge complete and accurate, and that the Complaint is not being presented for any improper purpose, such as to harass.

The Panel does not find that Complainant knowingly is in breach of the said certification. Statements in the Complaint will be more closely discussed below.

B. Identical or Confusingly Similar

Complainant is the owner of service mark no. 200371665 BENKA PULKO, registered in Slovenia on November 3, 2003. Complainant has also presented evidence which shows that she has used Benka Pulko as a personal name for years.

The mark is a figurative mark, but the dominating part of the mark is the words “Benka Pulko”. The only difference between the dominant part of the mark and the relevant part of the domain names is that there is a space between “BENKA” and “PULKO” in the mark. This difference has no distinguishing effect.

The Panel concludes that the four domain names are confusingly similar to Complainant’s mark.

C. Rights or Legitimate Interests

Complainant has never given Respondent any license, authorization, permission or consent to use her name and her mark, or to register the domain names at issue.

Paragraph 4(c) of the Policy sets out three non-limiting examples of circumstances which, if established to the satisfaction of the Panel, rebut a complainant’s assertion that the owner of the domain names has no rights or legitimate interests in respect of these.

Firstly, Respondent has not presented any evidence of noncommercial or fair use of the domain names (paragraph 4(c)(iii)).

Secondly, Respondent is not commonly known by the domain names at issue (paragraph 4(c)(ii)).

Lastly, Respondent can demonstrate rights or legitimate interests if, before any notice of the dispute, Respondent’s use of the domain names is made in connection with a bona fide offering of goods or services (paragraph 4(c)(i)).

At present the website of the domain name <benkapulko.com> leads to a commercial website. The website is a portal, which includes links to web pages where motorcycle products can be ordered. The three other domain names at issue direct to the home page of Google.

Respondent claims that he has rights and legitimate interests in the domain names because he is the owner of the WEMC, the publisher of the book “Benka Pulko” and because he is in the business of selling books, DVD’s, motorcycle accessories and information.

The Panel finds that these activities do not make the use of the domain names legitimate. “Legitimacy” presupposes that there must be some justification in the choice or adoption of the domain names, in the present case, such a justification seems lacking. See Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406. The fact that Respondent has published a book called “Benka Pulko” cannot be sufficient to make the registration and use of the four domain names legitimate.

All four domain names at issue represent the personal name which Complainant uses, and by which she is known to the global public. The domain names at issue were previously registered by Complainant. The <benkapulko.com> domain name was also used on the cover of Complainant’s published and awarded book “Around the World Following the Sun”.

All four domain names also represent Complainant’s registered mark. In this situation it cannot be legitimate for Respondent to use the domain names without permission from Complainant.

All four domain names give, because of the strong similarity to Complainant’s name and mark, the false impression of being associated with Complainant. Due to this there is potential for customers and for the public to be misleadingly diverted.

In addition, the Panel finds that Respondent’s offering of goods by using the domain name <benkapulko.com> is not a good faith offering, see section 6D below.

In light of the above, the Panel concludes that there is insufficient evidence to show that Respondent can assert a right or legitimate interest in the disputed domain names by reference to the various criteria referred to in paragraph 4(c).

D. Registered and Used in Bad Faith

Respondent did not himself register the disputed domain names, and is only the transferee. It has, however, been held in prior Panel decisions that “registration” extends to subsequent acts of acquisition. See Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406. The question, then, is whether the acquisition of the disputed domain names by Respondent can be said to have been done in bad faith. The following evidence is presented by Complainant:

- The domain names at issue were transferred from Complainant, against her will, to a prior registrant.

- On or before October 24, 2005 this prior registrant sought to transfer one or all of the domain names to Complainant for USD 75,000.

- Subsequent to the failure of this attempt the domain names were transferred to Respondent.

No offer has been made by Respondent to Complainant to sell the domain names. Nonetheless, all four disputed domain names are confusingly similar to Complainant’s registered Slovenian mark and to the name Complainant uses as her personal name. It is also clear that Complainant is well known by the name Benka Pulko in several countries and in particular by motorcycle enthusiasts. In addition, it is a fact that Complainant and Respondent know each other, and that they are competitors and former collaborating partners in different businesses related to motorcycles. In light of these facts it is difficult to believe that Respondent, without Complainant’s permission, made the acquisitions in good faith.

On January 4, 2006, Complainant sent, via her attorney, a warning letter to Respondent at two of his email addresses. One of the addresses is the one stated as Respondent’s valid email address with the registrar Go Daddy Software. It seems unlikely that Respondent never received the warning letter at this email address. The letter contained information about Complainant’s rights to the BENKA PULKO name and mark, and that all four domain names were illegally alienated from Complainant. Complainant never received a reply to the warning letter.

The domain name <benkapulko.com> is used for commercial gain, namely to sell different products or advertisements connected with motorcycling. This reflects Respondent’s attempt to attract users to its website by improperly associating itself with Complainant’s mark and name and misleadingly suggesting an affiliation with, or sponsorship by, Complainant.

Complainant and Respondent have presented contradictory statements regarding different issues, including the publishing in November 2005 of the text entitled “The Benka Truth Pages” at one of the domain names at issue, in which Complainant’s mark and personal name were tarnished. No clear evidence is presented for the Panel regarding this matter. It is however not necessary for the Panel to conclude on this issue as the other facts mentioned above are sufficient proof that the domain names were acquired and used in bad faith by Respondent.

The Panel therefore concludes that Complainant has proved the requirements in paragraph 4(a)(iii).

 

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 names <benkapulko.com>, <benkapulko.info>, <benkapulko.net>, and <benkapulko.org> be transferred to Complainant.

---

Peter G. Nitter
Sole Panelist

Dated: March 15, 2006