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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Gerling Beteiligungs-GmbH (GBG) v. World Space Corp

Case No. D2006-0223

 

1. The Parties

The Complainant is Gerling Beteiligungs-GmbH (GBG), Cologne, Germany, represented by Loschelder Rechtsanwдlte, Germany.

The Respondent is World Space Corp, New York, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <gerling.net> is registered with Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2006. On February 21, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On February 21, 2006, Intercosmos Media Group d/b/a directNIC.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 March 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2006. The Respondent did not submit a response by the Response due date. Accordingly, the Center notified the Respondent’s default on April 3, 2006.

However, on April 5, 2006, the Respondent submitted an email communication to the Center informing that it had not received a “written communication” and was thus unable to respond to the Complaint.

The Center informed the Respondent that the Notification of Complaint was forwarded to the Respondent in accordance with paragraph 2(a) of the Rules and indicated that should the Respondent wish to submit a late response, the Panel would be informed of such submission.

The Respondent filed a late response on April 26, 2006.

The Center appointed Ms. Nathalie Dreyfus as the sole panelist in this matter on April 19, 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 well-known financial service company based in Germany. The Complainant is the owner of the following trademarks:

- German wording trademark “GERLING” n° 30066361.7 registered on November 23, 2000.

- German wording/device trademark “GERLING” n° 39742684.4 registered on November 19, 1997.

- German wording/device “GERLING” n°39742683.6 registered on November 19, 1997.

- German wording/device “GERLING” n°39742670.4 registered on November 13, 1997.

- German wording trademark “Gerling INSight” n°30558200.3 registered on November 28, 2005.

The domain name <gerling.net> was registered on June 2, 1998.

 

5. Parties’ Contentions

A. Complainant

The Complainant argues that the domain name is identical to its trademarks “GERLING” and that the Complainant and its group of companies are owners of a number of trademarks which contain the word “Gerling”.

The Complainant considers that the disputed domain name displays a web page which contains English and German terms which, put together, have no signification in either language.

With regard to the bad faith and lack of rights elements, the Complainant contends that Respondent does not use the domain name in a way which would indicate a bona fide offering of goods and services nor does the domain name refer to the Respondent’s name. Furthermore, Complainant contends that the word “gerling” has no meaning in any language except of being the name of the Complainant’s company. Furthermore, the Complainant contends that the Respondent attempted to sell the domain to the Complainant for the amount of 10,000 €.

B. Respondent

The Respondent defaulted as it did not file a timely response to the Complaint.

 

6. Discussion and Findings

Before examining the Complaint, the Panel must determine whether to consider the Respondent’s late response of April 26, 2006.

Paragraph 5(a) of the Rules provides that the response is due within 20 days of the commencement of the proceeding.

The Panel notes that the Complaint was duly notified to the Respondent and that the Respondent has failed to demonstrate exceptional circumstances which could justify the delay of the response.

In accordance with paragraphs 10 and 14 of the Rules, the Panel decides not to consider the late response. The Panel notes, however, that even if it would have taken into account the late response, it would not have affected the findings the Panel has made in this case.

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) That the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has demonstrated that it is the owner of trademark rights on the sign “GERLING”.

The domain name <gerling.net> is identical to the trademark “GERLING” with the inclusion of the “.net” suffix. Such an inclusion is due to the current technical specificities of the domain name system. Therefore, this inclusion should not be taken into account in evaluating the identity or similarity between the disputed domain name and the Complainant’s trademark (New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 or A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc., WIPO Case No. D2003-0172)

As a result, the Panel finds that the domain name is identical to the trademark “GERLING” owned by the Complainant. Therefore, the Panel considers that the condition set out by Paragraph 4(a)(i) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out examples of what a respondent may demonstrate to show that it has rights or legitimate interests in respect of a domain name.

“Any of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel finds, based on the case file, that there is no use or preparations for use of the domain name in connection with a bona fide offering of goods and services.

The Respondent has no relationship with the Complainant, and the Complainant has not granted the Respondent the right to use this trademark in the disputed domain name or otherwise.

Besides, the Respondent does not appear to be known under the name “Gerling”.

The Panel notes that the website with the disputed domain name displays a “warning” (“ACHTUNG!!”) containing English and German words/terms which seem to have no signification in either of these languages.

In the specific circumstances of this case, the Panel is of the opinion that the Respondent has no rights or legitimate interests in the disputed domain name. Consequently, the Panel considers that the condition set out by Paragraph 4(a)(ii) of the Policy has been met by the Complainant.

C. Registration and Use in Bad Faith

For the purpose of paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel agrees with the Complainant’s contention that the word “gerling” has no meaning neither in English nor in other languages. Besides, GERLING is a known trademark for financial services. Consequently, it cannot be a mere coincidence that Respondent has chosen this domain name (F. Hoffmann-La Roche AG v. MedCenter Canada, WIPO Case No. D2005-1291).

As a result, the Panel finds that the domain name has been registered in bad faith.

In order to meet the requirement of paragraph 4(b) of the Policy, it is not sufficient to prove that the domain name is registered in bad faith, it is necessary to prove that the domain name is also used in bad faith.

Complainant argues that the Respondent is in bad faith as it proposed a high price for the transfer of the domain name “although it was the Complainant who initiated the correspondence, bad faith has to be assumed because the immediate response of the Complainant’s request was the offer to transfer the domain name for the mentioned amount of 10,000€”.

Prior WIPO UDRP panels have found that offering the domain name to sell for high price may not always constitute bad faith when complainant initiates contact with the respondent (see for example Tvist Giyim Sanayi Pazarlama Ve Ticaret A.S. v. Machka Company C/O YenidьnyaYasin, WIPO Case No. D2005-0957 or Internationale Spar Centrale B.V. v. Scientific Process & Research, Inc, WIPO Case No. D2005-0603).

It appears that the Complainant contacted anonymously the Respondent to acquire the domain name.

However, the Panel finds that the overall circumstances of this case, on the balance, suggest that the Respondent registered the domain name for the purpose of selling it to the Complainant or to a competitor of the Complainant.

This is supported by the fact that the disputed domain name points to a web page which contains a number of German and English terms which have no signification, neither in English nor in German. The Panel finds that this use is in bad faith and may hurt the image of the company Gerling as it directs Internet users who seek Gerling’s website towards a page which contains words having no significance.

Further, GERLING is a known trademark especially in Germany and the United States where both Complainant and Respondent are located. Consequently, the Respondent could not have ignored that the disputed domain name imitates the Complainant’s mark.

As a result, the Panel finds that the contested domain name <gerling.net> has been used in bad faith.

Taking into account the above-mentioned elements, the Panel concludes that the domain name <gerling.net> is registered and used in bad faith and consequently the Complaint meets the requirements foreseen by the Policy, 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 name, <gerling.net> be transferred to the Complainant.


Nathalie Dreyfus
Sole Panelist

Dated: May 3, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0223.html

 

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