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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

UFA Film und Fernseh GmbH v. COLOMBANI COLOMBANI

Case No. D2006-1610

 

1. The Parties

The Complainant is UFA Film und Fernseh GmbH, Germany, represented by Boehmert & Boehmert, Germany.

The Respondent is COLOMBANI COLOMBANI, France, represented by Bird & Bird Solicitors, France.

 

2. The Domain Name and Registrar

The disputed domain name <ufa.mobi> is registered with Rebel.com Services Corp.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2006. On December 20, 2006, the Center transmitted by email to Rebel.com Services Corp a request for registrar verification in connection with the domain name at issue. On January 9, 2007, after several reminders, Rebel.com Services Corp 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 contact. In response to a notification from the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 10, 2007. 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 January 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2007. The proceedings were suspended on January 31, 2007, and were subsequently recommended on February 13, 2007, at the request of the Complainant. The Response was filed with the Center on February 13, 2007.

The Center appointed Clive N.A. Trotman as the sole panelist in this matter on March 5, 2007. 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 following information is provided by the Complainant. The Complainant is known as UFA and is one of Germany’s oldest, best known and most distinguished entertainment brands, with an artistic heritage of films like “Metropolis”, “Der blaue Engel” and the German Expressionism films. The Complainant describes itself as a highly competent group of production companies, with market leadership among Germany’s film and television producers. UFA produces numerous successful cinema and TV productions, including series such as “Gute Zeiten, Schlechte Zeiten” and “Verbotene Liebe”.

The Complainant owns current trademarks and service marks for UFA word and device including Community Trademark 03133485; International Registration 00669128; Community Trademark 01008077; International Registration 00517297; and US Trademark 78/572222. These marks have been registered for, inter alia:- class 38: telecommunications, including online, on-demand and other electronic media services included in class 38; and class 41: entertainment; providing of training; education; planning, creation and production of films, television programmes, video and sound recordings; rental of motion pictures; film presentations; theatre productions.

The disputed domain name <ufa.mobi> appears to have been created on September 26, 2006 and registered in the name of the Respondent on or about December 1, 2006.

The following information is provided by the Respondent. The Respondent says that he has interests in the adult education business and has been planning an Internet operation called “Universitй de Formation pour Adultes” (UFA). The plans particularly required a website suitable for mobile access and have already involved some liaison with Neresys, a company that specializes in website creation. The Respondent has in mind, among other things, to enable people to access his services at times and in locations to suit themselves, to assist people wanting to sit examinations and those who wish to change their employment and lifestyle.

In December 2006, the Complainant offered the Respondent $US1,000 for the domain name.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the widely registered trademarks or service marks described as “word/device: UFA” in which it has rights.

It is contended that the Complainant is well known for its production of popular films and TV productions and is known as UFA. The disputed domain name <ufa.mobi> is identical to the word element UFA of the Complainant’s trademarks and this creates confusion for the Internet users who will think it is operated by or affiliated to the Complainant. Furthermore the Respondent’s website offers links to other websites offering services in class 38.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name. At the time of the Respondent’s registration of the domain name, no trademark with the component UFA was registered in the name of the Respondent. The name of the registrant suggests that the domain name is held only for sale.

The Complainant contends that the domain name was registered and is being used in bad faith. The website is set to forward visitors to the website of “www.sedo.de”, which is a domain market place and parking program.

The remedy requested is the transfer of the domain name to the Complainant.

B. Respondent

The Respondent denies the Complaint and contends as follows:

The Respondent contends that the acronym UFA means things other than the Complainant’s trademark, for instance: a co-operative with 34 farm supply stores in Alberta (“www.ufa.net”); the Ufa Airport in Russia; the Uniformed Firefighters Association ([corrected to] “www.ufalocal94.org”); United Fathers Inc. (“www.ufa.org”); and others annexed to the Response. The Complainant’s trademarks are for a word and device and it did not register the sole word UFA.

The Respondent draws attention to the precedent case of the domain name <pi.com> Physik Instrumente GmbH. & Co. v. Stefan Kerner and Jeremy Kerner and Magic Moments Design Limited, WIPO Case No. D2000-1001, in which that Panel found for the particular Respondent.

The Respondent contends that he registered the domain name <ufa.mobi> to develop a website dedicated to adult training to be called in French “Universitй de Formation pour Adultes”, i.e., UFA.

It is contended that the Complainant’s trademark is not well-known, except maybe in Germany, and the Complainant did not provide any documents showing the famous character of the trademark UFA, even in Germany. In the absence of notoriety and the absence of demonstrated risk of confusion, the Complainant cannot prevent any person with justifiable interest from registering a domain name or a trademark made up of the three common letters UFA.

It is contended there is no risk of confusion between the activity planned by the Respondent under the domain name <ufa.mobi> and the activities of the Complainant.

The Respondent contends that he has rights or legitimate interests in respect of the domain name. The Respondent has been interested in adult training for a long time and planned to develop a website dedicated to adult training called “Universitй de Formation pour Adultes”, and this is the reason for registering the domain name <ufa.mobi>. On December 2, 2006, the Respondent placed before Neresys (a website creation company) a project that would involve institutional partners and would offer individualised training of people, of benefit to their careers and employment mobility. The project would benefit from mobile Internet access. A number of emails passed between the Respondent and Neresys relating to this project including a cost estimate from Neresys for the first stage of the development of the website <ufa.mobi>. Thus there were demonstrable preparations by the Respondent, before the Complaint, to use the disputed domain name in connection with a bona fide offering of services. The project has been suspended because of the Respondent’s health and the current proceedings.

The Respondent contends that the domain name has not been registered or used in bad faith. The domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or a competitor. The sole fact of parking the domain name on the “www.sedo.de” webpage while the corresponding website is developed does not constitute bad faith and the domain name is not offered for sale.

The Respondent says the Complainant’s trademark is not known in France. The Respondent composed the acronym in <ufa.mobi> with no knowledge of the Complainant or its activity. It is submitted that for a finding of bad faith, “there must be some evidence of knowledge that the Respondent knew the domain name was identical or similar to the Complainant’s mark, not just “someone’s’ mark”, citing Builder’s Best Inc v. Yoshiki Okad, WIPO Case No. D2004-0748, and Diknah S.L v. WebQuest.com Inc., WIPO Case No. D2005-0573.

The Respondent contends that he has already expended time and money to develop his new project and has not attempted to sell this domain name to anyone, to use it in any manner that would be construed as an infringement of the Complainant’s trademark registrations, or otherwise in a manner which is detrimental to the Complainant’s trademark registrations.

The Respondent says he received an offer of $US1,000 from the Complainant for the domain name shortly after the Complaint was lodged. In reply and in further correspondence the Respondent stated that the domain name was not for sale, had not been purchased to be sold and that a website project was in progress. The offer of $US 1,000 would not cover the expenses already disbursed for the acquisition of the domain name and for the website project.

The Respondent contends that he has not attempted to disrupt the Complainant’s business or to attract, for commercial gain, Internet users to the Respondent’s web site 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 the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.

The Respondent contends that the sole fact of his registering several domain names made up of three letters is not evidence of bad faith. The Respondent selected domain names of three letters because of their length or his interest and not because they correspond to third parties’ trademarks (citing Kis v. Anything.com Ltd., WIPO Case No. D2000-0770).

The Respondent requests that the Complaint be denied.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required:

“to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark 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.”

The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

The Complainant has produced documentary evidence to the effect that it has rights in trademarks comprising UFA with device. The disputed domain name is <ufa.mobi>. The gTLD qualifier, in this case “.mobi”, being an integral part of the domain name, is of no consequence in the determination of whether there is confusing similarity. The remainder of the disputed domain name is “ufa”, and the question is whether this is identical or confusingly similar to the Complainant’s trademark.

The Complainant’s trademarks exhibited in evidence are a word with device in two different forms. One is a series of lines joined angularly above a smaller typing of UFA. The other is a bold square standing on its point, within it the letters UFA (or ufa) in a stylised and continuously-joined manner and touching the sides, the “f” being about twice the size of the other letters.

The Respondent points out that the Complainant has not trademarked the sole word “UFA”, and argues inter alia that there is not confusing similarity because the letters “UFA” are widely used by other unconnected parties, of which he produces seven examples. The Respondent cites the case of the domain name <pi.com> (Physik Instrumente GmbH. & Co. v. Stefan Kerner and Jeremy Kerner and Magic Moments Design Limited, WIPO Case No. D2000-1001), which was decided in favour of its Respondent. The Panelist in that case took into account that the word “PI” or “Pi” was used by other parties and had other meanings, and took the view that the Complainant had not established that it had rights in the trademark “PI” standing alone.

In Giga-Byte Technology Co. Ltd. v. Alan Coughlin, doing business as Gigabyte (WIPO Case No. D2005-1229), the three Panelists agreed that: “The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of other marketing and use factors...”, and decided that “Despite the stylized nature of Complainant’s marks ... the disputed domain name is virtually identical and confusingly similar to Complainant’s registered marks”. In the present case the distinctive element “UFA” of the disputed domain name is identical to the word element that is clear in the Complainant’s trademarks. The argument that the letters “UFA” are in wide general use is more pertinent to the consideration of paragraph 4(a)(iii) of the Policy below. The Panel finds confusing similarity between the domain name and the Complainant’s trademarks in the terms of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has conducted searches of registered trademarks and has asserted that the Respondent has no known interest in any trademark related to the acronym UFA. That is insufficient to constitute a prima facie case as the Respondent could have other defences such as being commonly known by a name corresponding to the domain name.

The Respondent may seek to prove rights or legitimate interests in the domain name in accordance with the provisions of paragraph 4(c) of the Policy, which in part reads:

“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 noncommercial 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 Respondent has mounted a detailed defence in the terms of paragraph 4(c)(i) above. Copies of communications between the respondent and Neresys, a website designer, portray the Respondent as making demonstrable preparations to use the domain name in connection with a bona fide offering of services in the sphere of adult education. According to the evidence, on December 2, 2006, being one day after acquisition of the domain name and before any notice of the dispute, the Respondent outlined to Neresys plans for a website named “Universitй de Formation pour Adultes” (UFA) related to adult education.

The Respondent, when contacted after the filing of the Complaint and before the filing of the Response, had given genuine contact details and replied to messages. The Complainant therefore could have instituted prior enquiries as to the Respondent’s plans. The Complainant could have made submissions as to their credibility or whether they might seem contrived and more directed towards establishing a paper trail and giving the domain name a token content, for future sale, rather than the establishment of anything on the scale of an adult education service. The Complainant has not done so and the Panel must treat the Parties with equality and, in the absence of compelling evidence to the contrary, on the basis of their certified statements. The Respondent’s evidence of demonstrable preparations, taken at face value, is found to have more substance than the Complainant’s refutation of any Respondent rights. The Complainant has failed to tip the balance in its favour and accordingly the Panel finds for the Respondent in the terms of paragraph 4(a)(ii) of the Policy.

Of course, in the circumstances, should the website over time not provide material confirmation of the Respondent’s aforementioned preparations, the balance between the parties under the Policy might well shift.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your 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 trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have 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.”

The Complaint is essentially under paragraph 4(b)(i). The Complainant submits evidence in the form of a screen capture to the effect that the disputed domain name is parked on “www.sedo.de”, which acts as a domain market place, and claims that the domain name is therefore for sale, and that this is evidence of bad faith. The Respondent says that the domain name is not for sale and is merely parked at “www.sedo.de”, which advertises domain names for sale.

The screen capture provided in evidence tends in the Panel’s view to support the Respondent by showing that entering the disputed domain name into the Internet leads to “www.sedo.de” as a parking place, but shows no direct evidence that the domain name is offered for sale.

Furthermore, according to evidence submitted by the Respondent, an offer originating from the Complainant (shortly after the Complaint was lodged) to buy the domain name for $US1,000 was rejected by the Respondent. The Respondent’s rejection was outright, stating that the domain name was not for sale, and was not made in the form of a counter-offer, an offer to sell or a direct invitation to the Complainant to make a higher offer to buy. On the other hand in a protracted correspondence the Respondent did say that he preferred an amicable settlement, and that the $US1,000 offered was less than the price he paid for the domain name from “pool.com”. Ultimately the Complainant enquired whether the price the Respondent had paid for the domain name had been about $US1,500 to $US1,800, with obvious implications, but did not make such an offer, and the correspondence evidently ended.

One inference from the correspondence could be that the Respondent was unwilling to sell but conciliatory if he could recoup the purchase price and cover the costs of starting again. On the other hand an inference could be that the Respondent’s ploy was to motivate the Complainant into making a grand gesture while the Respondent carefully avoided any accusation of making an unreasonable demand. Once again it was for the Complainant to pursue (before the Complaint) further enquiries.

The Respondent says he made up the acronym “ufa” with “no knowledge of the Complainant or its activity”. The Complainant is based in Germany and the Respondent is in France. These two countries have different languages, on the other hand they are adjacent countries within the European Community and some of the Complainant’s trademark registrations are Community Trademarks. The Respondent claims he did not know of the trademark. The Complainant’s statement that it is well known through the popularity of its productions, “at least in Germany”, at best might balance but does not outweigh the Respondent’s assertion.

The Respondent states that he conducted a Google search and submits the following examples of other entities or domain names embodying the acronym or name UFA: (1) a co-operative with 34 farm supply stores in Alberta (“www.ufa.net”); (2) the Ufa Airport in Russia (mentioned in Wikipedia); (3) the Uniformed Firefighters Association [of Greater New York] (www.ufalocal94.org); (4) University of the First Age (www.ufa.org.uk); (5) United Fathers Inc. (www.ufa.org); (6) an Icelandic website (www.ufa.is); (7) UFA - The Experts in Air Traffic Control Simulation. The Respondent showed only the first page of search results. Within the accepted limits of independent enquiries, the Panel readily found, before ceasing enquiries: (8) United Flower Auctions (www.ufa.co.nz); (9) United Fishermen of Alaska (www.ufa-fish.org); (10) UFA Ventures Inc., (rock and soil testing) (“www.ufaventures.com”); (11) University Fusion Association (depts.washington.edu/ufa); (12) Urban Forestry Administration, Washington DC (“www.ddot.dc.gov/ufa”); (13) UFA Assurances (“www.ufaassurances.com”).

In the terms of paragraph 4(b)(i) of the Policy, there is no proof that the domain name was acquired primarily to sell to the Complainant or a competitor, or to anyone specifically, as the letters “ufa” are in such wide use. The Complainant does not succeed under paragraph 4(b)(i) of the Policy.

In a copy of an email from the Complainant to the Respondent, written after the Complaint was filed, provided in the Respondent’s evidence and not by the Complainant, the following comment appears: “[Complainant has] collected substantial evidence that you have registered numerous other .mobi domain names, of which some you have already offered for sale”. The Complainant did not elaborate and has not offered any such evidence in the Complaint, or based any part of the Complaint upon it. The Respondent denies that the fact indicates any impropriety. The Panel sees no basis for a finding under paragraph 4(b)(ii) of the Policy that the Respondent has attempted to block the Complainant from using its trademark in a domain name and engaged in a pattern of such conduct.

There is no claim, or evidence, that the Respondent has shown bad faith in the terms of paragraphs 4(b)(iii) or (iv) of the Policy and the Panel finds accordingly that the Complainant has failed to establish these paragraphs of the Policy.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Dr Clive N.A. Trotman
Sole Panelist

Date: March 19, 2007