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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Gothaer Versicherungsbank VVaG v. CKV

Case No. D2006-0105

 

1. The Parties

The Complainant is Gothaer Versicherungsbank VVaG, Koeln, Germany, represented by Hцcker Rechtsanwдlte, Germany.

The Respondent is CKV, Hong Kong, SAR of China.

 

2. The Domain Name and Registrar

The disputed domain name <janitos.com> is registered with Nameview Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2006, and the Center acknowledged receipt of this Complaint on January 27, 2006. On January 24, 2006, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On February 3 and 6, 2006, Nameview Inc. 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 10, 2006. The Center verified that the Complaint together with the amendment to 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 March 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2006.

The Center appointed Dina Founes as the sole panelist in this matter on April 13, 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.

In accordance with the Paragraph 11 of the Rules, the language of proceeding shall be in English.

 

4. Factual Background

The Complainant is a Mutual Insurance Association who acquired through one of its subsidiaries on June 2005, an Indemnity and Accident Insurance Company which is a subsidiary of MLP AG. Complainant decided to change the name of the newly acquired company, and entrusted a specialized Agency with the task of finding a new name to the acquired company. On July 26, 2005, the Agency proposed to the Complainant the name “Janitos” among 10 other names for a new company name.

On July 28, 2005, the Complainant filed an application for the registration of the trademark “Janitos” with the German Patent and Trademark Office in class 36 (financial services). The trademark was registered under Reg. No. 30545195.

The disputed domain name <janitos.com> was registered by the Respondent on July 26, 2005.

Complainant operates a portal website under “www.janitos.de”.

 

5. Parties’ Contentions

A. Complainant

Complainant asserts that:

- The disputed domain name is identical to its mark “Janitos”.

- Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) it is not commonly known by this domain name, (2) it is not making a legitimate non-commercial fair use of the disputed domain name, (3) it is not a licensee of Complainant, and (4) it has not made a bona fide offering of goods under the disputed domain name.

- Respondent had “inside knowledge” of the new name and has registered the disputed domain name in bad faith based on the following circumstances: (1) Janitos is a newly created name without meaning and it is unlikely that Respondent incidentally came up with the same name, (2) it was registered by Respondent only few hours before or after it was revealed to the Complainant, (3) Respondent has no business related to the domain name, and makes no use of the disputed name, and (4) Respondent has concealed its own identity.

Considering the above, transfer of the disputed domain name to Complainant is sought.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

In order to obtain the transfer of the disputed domain name, Complainant should demonstrate, in accordance with the Policy, paragraph 4(a), that:

(i) The registered domain name is identical or similar to the trademark or service mark in which the complainant has rights.

(ii) The respondent has no rights or legitimate interests in the domain name.

(iii) The respondent has registered and used the domain name in bad faith.

A. Identical or Confusingly Similar

Under Paragraph 4(a)(i) of the Policy, Complainant should establish that it has rights in the trademark JANITOS, and that the disputed domain name is identical or confusingly similar to its trademark.

1) Complainant’s trademark rights:

Complainant has provided in support of its Complaint a copy of its German registration certificate of the word mark JANITOS which was registered on July 28, 2005, under Reg. No. 30545195 for financial services in class 36. Complainant asserts that a community trademark application for the word mark JANITOS is pending.

The disputed domain name has been registered on July 26, 2005, that is, 2 days earlier than the trademark registration by the Complainant. However, although the trademark registration date is postdating the registration date of the domain name, the trademark registration timing is of no essence and has no consequence when assessing Complainant’s trademark rights under Paragraph 4(a) (i) of the Policy. Indeed, for the purpose of evaluating the Complainant trademark rights, Complainant is required to establish its trademark rights at the date of the Complaint and not at the date of the domain name registration. See Document Technologies Inc. v. International Electronic communications, Inc. WIPO Case No. 2000-0270, stating that: “significantly, the Policy does not require the Complainant to prove that it had rights in a trademark as of the date of the domain name registration”. See also GR8 Industries BV v. Active 8 Partnership, WIPO Case No. 2005-1341 holding that: “the timing difference is not relevant for the purposes of paragraph 4 (a) (i) and it does not require the trademark in question to be registered first”. See also in this regard Digital Vision, Ltd v. Advanced Chemill Systems, WIPO Case No. D2001-0827.

Accordingly, the panel is satisfied that Complainant has established its trademark rights on the word mark JANITOS.

2) Identical or confusingly similar domain name:

The word “Janitos” is entirely incorporated in the disputed domain name and constitutes the principal and sole distinctive element in both Complainant’s mark and Respondent domain name. The sole difference consists of adding the generic top-level domain “.com” to the disputed domain name. Such addition is of no relevant significance or importance when assessing the similarity between the signs in conflict, and does not avoid a risk of confusion in the public’s mind between the word mark JANITOS and the conflicted domain name <janitos.com>.

Based on the above, the Panel finds that the domain name at issue is indeed identical to the Complainant’s word mark “Janitos”.

Complainant has therefore met the requirements of paragraph 4 (a) (i) of the Policy.

B. Rights or Legitimate Interests

Respondent failed to reply to the Complaint and therefore did not provide any evidence supporting a legitimate right or interest in registering and using the disputed domain name.

Even though no reply has been submitted by Respondent, the Panel has to consider whether Respondent has or not rights to or legitimate interests in the disputed domain name under Paragraph 4 c) of Policy.

Having visited Respondent’s website “www.janitos.com”, the Panel notes that this website displays various sponsored links leading to third parties’ sites in connection with janitorial services and supplies. A search engine is also posted by Respondent on this site.

Thus, the content posted on Respondent website differs substantially from Complainant’s line of business which relates to financial and insurance services. In view of that, the Panel considers that Respondent’s website and its current use of the disputed domain name do not resolve to other websites which could directly or indirectly compete with Complainant’s financial services under the mark “janitos”.

Based on the above fact, such registration and use of the disputed domain name by Respondent does not seem to have been made with a purpose to misleadingly divert consumers from complainant’s recently operated website which offers financial services, neither to tarnish Complainant’s mark which is a newly created mark postdating the domain name registration. See in this regard Shirmax Retail Ltd / dataillants Shirmax Lted v. CES marketing group Inc., AF-0104 stating that: “… use on the web merely for the purpose of redirecting visitors to a different site constitutes a legitimate fair use, as long as this use is not misleading to consumers and does not tarnish a trademark”. See also Teranet Land Information services inc. v. Verio, Inc. WIPO Case No. D2000-1123 holding that: “… redirection is not misleading to consumers since the parties are involved in two distinct business undertakings, in two different fields of activities”.

Accordingly, the use of the disputed domain name at issue cannot be considered illegitimate even though Respondent’s use of the domain at issue is apparently to exclusively generate commercial revenue by referring internet users accessing its website to other parties’ websites through the sponsored links posted on it, and not by using the domain name to promote and sell Respondent’s own products or services; See Teranet Land Information Services Inc. v. Verio, Inc, WIPO Case No. D2000-1123, holding that “the use of a website merely for the purpose of redirecting visitors to a different site does not per se create an absence of legitimate interest”. See also Plan.Net Concept Specialagentur fur interactive Kommunikation GmbH v. Murat Yikilmaz, WIPO Case No. D2006-0082 holding that “the problem for Complainant is that such conduct (registering domain names for the purpose of revenue generation through “pay per click” advertising) breaches the Policy only if it is made in bad faith, and in the absence of bad faith, the Respondent conduct is perfectly legitimate”.

Accordingly, given that Respondent is operating its site under the domain name to gain advertising revenues for directing internet users to different sites which are unrelated to and/or non-competing to Complainant’s products and/or services, the Panel concludes that such use can be considered legitimate and would corroborate the existence of an interested right of Respondent in the disputed domain name which is antecedent to Complainant’s trademark rights. Indeed, through such use Respondent does not interfere with nor disrupt Complainant’s financial business. Furthermore, the UDRP Policy does not prohibit the use of sponsored links to derive financial revenues provided such use is not made in bad faith or in the absence of rights or legitimate interests.

Complainant further asserts that Respondent is not a licensee nor has been authorized by Complainant to use the word mark JANITOS. However, considering that (1) the word mark JANITOS is a newly created mark which was registered by Complainant only two days after its registration as a domain name by Respondent and (2) the mark JANITOS has not been used prior to its registration by Complainant, Complainant cannot as a result reasonably invoke holding prior trademark rights entitling him to license or authorize Respondent to use the word mark JANITOS in the disputed domain name.

In light of the above, the Panel considers that Complainant did not establish that Respondent has no legitimate rights or interests in the domain name and accordingly did not demonstrate the second requirement under paragraph 4 (a) (ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the Panel’s above finding in respect of Respondent’s legitimate rights or interests in the domain name, it is not necessary for the Panel to proceed further to determine bad faith use and registration by Respondent. However, the Panel deems it advisable to complete its determination on this last factor.

Complainant asserts that Respondent has registered and used the domain name at issue in bad faith based on the following facts:

- The word mark JANITOS is particularly distinctive and fanciful. It seems accordingly unlikely that Respondent could have created the same name (and register it) only a few hours before or after it was revealed by the name-finding agency in charge of creating such mark for Complainant. Complainant deduces that Respondent had probably inside knowledge through an employee of Complainant or of the agency.

- Respondent concealed its identity when registering the domain name by using an identity shield service and is offering the domain name for sale since the contact address for such domain name is sales1@domaindeluxe.com.

- CKV is probably not the true domain name holder, but domaindeluxe.com which happens to have the same address as CKV address in Hong Kong.

To support its contentions, Complainant declares that at the time it registered the domain name at dispute, Respondent had prior knowledge of Complainant’s intentions to use and register the word mark JANITOS.

However having assessed Complainant’s submissions in this regard, the Panel considers that the evidence is insufficient to establish that Respondent had indeed prior knowledge of the JANITOS mark and of Complainant’s future plans in respect of this trademark. Indeed, except for an email sent on July 26, 2005, to Complainant by the CEO of the name-finding agency transmitting its final result listing the “janitos” name, Complainant did not submit, to support such assertions, any other documentary evidence showing for example effective business or personal contacts or exchange of correspondence and emails which might have taken place between the employees of Complainant and/or Respondent’s and/or the Name finding Agency’s shortly prior to the domain name registration. See in this regard Document technologies Inc v. International Electronic communications Inc, WIPO Case No. D2000-0270 holding that: “The Complainant has not shown evidence of such circumstances (revealing Respondent’s bad faith). For example, there is no documentary evidence that someone associated with the Respondent actually did visit, or is likely to have visited the Complainant’s website in the period prior to the registration of the domain name, or that the Complainant’s promotional literature actually was or is likely to have been received by the Respondent during that period. The Panel finds that Complainant has failed to demonstrate that Respondent registered and is using the domain name <htmlease.com> in bad faith”.

Accordingly, and based on the lack of evidence in this regard, the Panel cannot conclude that Respondent was aware at the time of the domain name registration of Complainant’s future projects in relation with the word mark JANITOS.

Complainant contends further that there are strong indicators supporting Respondent’s bad faith due to a possible connection or affiliation of Respondent with the entity “domaindeluxe.com”. The Panel notes that both Respondent and domaindeluxe.com seems to indeed share common elements such as 1) using the same registrar, 2) both companies are located in Hong Kong, 3) usage of identity shield services, and 4) similar look and layout for both Respondent and domaindeluxe.com websites. Although the above elements seem to indicate the possibility of such interrelation between both companies, the Panel considers that they do not necessarily establish Respondent’s bad faith in registering and using the disputed domain name.

Considering the Panel’s above findings, the Panel considers that due to the fact that 1) Complainant could not establish Respondent’s prior knowledge at the time of the domain name registration of Complainant’s newly created word mark JANITOS and its imminent plans to use it to designate its financial and insurance services, and 2) considering that Complainant’s word mark was registered two days after the domain name registration by Respondent, the Panel can only conclude that, based on the above elements, Respondent did not register the domain name <janitos.com> in bad faith.

Accordingly, the Panel considers that Complainant has failed to demonstrate that the Respondent has registered and is using the disputed domain name in bad faith as required by Paragraph 4 (a) (iii) of the Policy.

 

7. Decision

For all the foregoing reasons, and pursuant to Paragraph 4 of the Policy and Paragraph 15 of the Rules, the Complaint is denied.

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Dina Founes
Sole Panelist

Dated: April 27, 2006