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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ElectronicPartner Handel GmbH v. Antonio Loffredo

Case No. D2007-0380

 

1. The Parties

The Complainant is ElectronicPartner Handel GmbH, Dьsseldorf, Germany, represented by Latham & Watkins, Germany.

The Respondent is Antonio Loffredo, Taranto-S. Vito, Italy.

2. The Domain Name and Registrar

The disputed domain name, <comteam.biz>, (the “Domain Name”) is registered with Go Daddy Software (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2007. On March 15, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 15, 2007, the Registrar 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 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 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2007. The Response was filed with the Center on March 29, 2007.

The Center appointed Tony Willoughby as the sole panelist in this matter on April 12, 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 Complainant is a company incorporated in Germany and is a member of the ElectronicPartner Group of companies, which is engaged in the field of IT and telecommunications.

In the course of its business the Complainant and its associated companies use the trademark COMTEAM. The Complainant is the proprietor of two Community Trademarks and an International Registration, all being device marks, the prominent textual element in each case being the word COMTEAM albeit in two different stylized forms. The registrations are for various communications-related goods and services. The CTM registrations came through on March 22 and August 9, 2004 from applications filed in August and July, 2002 respectively. The International Registration is dated November 9, 2004.

The Respondent, an Italian resident, claims to have served as an examiner in the European Patent Office from 1987 to 1990 in the field of fibre optics and integrated optics. He claims to hold an MSc in electronic engineering and an MBA from the Rotterdam School of Management and to have held various managerial posts within a number of companies. None of this information is verified by any supporting documentation.

The Respondent registered the Domain Name on August 8, 2004.

To date the only use made of the Domain Name has been to connect it to a free parking page operated by the Registrar, which features various advertising links, none of which relate to the Complainant. The Complainant asserts that the Respondent earns revenue from the links. The Respondent denies that he earns anything from the links.

On November 23, 2006 an investigator acting on behalf of the Complainant contacted the Respondent and asked him if he would be prepared to sell the Domain Name. The Respondent said that he might soon be entering the telecommunications market and was not sure whether he would be prepared to sell the Domain Name, but that he would seriously consider doing so for a five figure sum. There then followed a series of email exchanges/correspondence with the Complainant’s investigator and then its lawyers, in the course of which the Respondent offered to sell the Domain Name for 10,000 Euros and which culminated in an email from the Respondent to the Complainant’s lawyers in which he indicated that he would be prepared to sell the Domain Name for 15,000 Euros.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is in substance identical to the Complainant’s registered trademarks, making allowance for the fact that the registrations are device marks, not word marks.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, claiming that none of the examples of rights and legitimate interests set out in paragraph 4(c) of the Policy are applicable. The Complainant contends that to the extent that the Respondent is using the Domain Name at all he is using it commercially to earn pay per click revenue via the Registrar’s parking page.

The Complainant finally contends that the Domain Name was registered and is being used in bad faith. The Complainant points to the correspondence with the Respondent, which it claims indicates that the Respondent registered the Domain Name with the intention of selling it to the Complainant for a sum well in excess of his out-of-pocket expenses. It adds that even if the Respondent did genuinely intend to use the Domain Name in the telecommunications sector, he must have selected the name knowing of the fame of the Complainant in the field and intending to benefit commercially on the back of the Complainant’s reputation.

B. Respondent

The Respondent denies that the Domain Name bears any confusing similarity to the Complainant’s trademarks. The Respondent points to the design elements of the latter which are not present in the former. He contends that domain names are primarily addresses rather than trademarks.

He asserts that the Domain Name cannot sensibly be looked at, stripped of its domain suffix. The domain suffix is crucial in that it is the domain suffix which distinguishes the Domain Name from the other ‘comteam’ domain names, which have been registered. The ‘.com’, ‘.net’ and ‘.org’ versions are in the hands of different third parties and the ‘.info’ version has been registered by the Complainant.

The Respondent contends that he has rights and legitimate interests in respect of the Domain Name. His primary right stems from the fact that he registered the Domain Name. He claims to be known for his link to the Domain Name via the ICANN and Whois databases.

The Respondent states that he registered the Domain Name with the intention of using it for “presenting a new reference info center for business consultancy”. He says that he was employed up until August 2006 and it is only when his employment ceased that he has had the time to develop his various business ideas including his plans for the Domain Name. In the interim the Registrar has parked the Domain Name ‘by default’ on the Registrar’s parking page. The Respondent denies that he earns any income from that source.

The Respondent denies that the Domain Name was registered and is being used in bad faith. He registered the Domain Name in good faith. Until he received the letter from the Complainant’s lawyer in February 2007 he had never heard of the Complainant. He has visited the Complainant’s Italian website and is unable to find any reference to the Complainant’s COMTEAM brand.

He says that if he had not been approached by the Complainant, he would never have thought of selling the Domain Name to the Complainant. He had never heard of the Complainant. The Respondent asserts that when approached by the Complainant’s investigator he was pressed to give a figure and deliberately gave a high figure which he hoped would act as a deterrent. He says that he mentioned ‘telecommunications’ in that conversation, because he is an electronics engineer and it is an industry with which he is familiar, but he reiterates that his intention all along has been to use the Domain Name for “presenting information about communication, communicating and people in communication”. He did not have the Complainant in mind, because he had not heard of the Complainant.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name features the textual element of the Complainant’s trademarks in the only way that that element can appear in a domain name, namely in plain text devoid of any design characteristics.

It is now well-established that in assessing identity/confusing similarity for the purposes of paragraph 4(a)(i) of the Policy the generic domain suffix may be ignored. Were it otherwise and were the Respondent’s argument that the suffix is a crucial distinguishing factor correct, the Policy would be rendered ineffective. Few if any complaints would succeed.

The Panel accepts that the Domain Name is substantially identical and confusingly similar to the Complainant’s trademarks, the textual element of which is very prominent. Phonetically, the trademarks are identical to the Domain Name.

The Panel finds that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Registration of a domain name cannot of itself give rise to a relevant right in respect of that domain name for the purposes of paragraph 4(a)(ii) of the Policy. If the Respondent’s argument to this effect were correct, again the Policy would be rendered nugatory. On that basis all respondents would have rights in respect of their domain names.

If it is the case that the Respondent has all along had bona fide plans for the Domain Name, then he certainly has a legitimate interest in respect of the Domain Name, but for the purposes of proceedings under the Policy he has to produce some form of evidence in support. A bare assertion will rarely suffice. The Respondent has produced no evidence at all.

Accordingly, on the evidence before the Panel, the Respondent has not used the Domain Name in any relevant sense (parking it on the Registrar’s parking page will not suffice), nor has he demonstrated any plans for any relevant use, nor is he known by the Domain Name, nor does he have any rights (registered or otherwise) in respect of the Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

For the complaint to succeed under this head, the Complainant has to satisfy the Panel that at time of registration of the Domain Name the Respondent had the Complainant in mind. The Respondent has to have registered the Domain Name knowing of the Complainant’s trademark, which is featured in the Domain Name. Innocent inclusion of a third party’s trademark in a domain name is not an abusive registration of the kind at which the Policy is directed.

The Respondent denies that he was aware of the Complainant and its trademark at time of registration of the Domain Name. Indeed, he says that the first time he became aware of the Complainant and its rights was when he received a letter from the Complainant’s lawyers in February, 2007.

If the Panel accepts the Respondent’s denial, the complaint must fail. In assessing denials of this kind there are various factors which need to be considered, including the nature of the Complainant’s trademark, the fame of that trademark, the respective fields of activity of the parties, their geographical locations, the use made of the Domain Name, the behaviour of the Respondent and, generally, his credibility.

The nature of the Complainant’s trademark. For present purposes, the trademark (a device mark) is COMTEAM. Unlike COCA-COLA, for example, it is a trademark susceptible of use in many different industries by many different people. The Respondent has produced evidence as to the differing activities of the registrants of the ‘.com’, ‘.net’ and ‘.org’ versions of the Domain Name. Accordingly, it is not of itself a trademark that is only sensibly referable to one party, the Complainant.

The fame of the Complainant’s trademark. Again, unlike COCA-COLA, COMTEAM is not a trademark, which is a household name. Is it nonetheless well-known in its field? The Panel is unable to assess. There is no evidence before the Panel as to the significance of the brand. The Panel might have inferred that the mark has been in use since 2002 (the date of the trademark applications), but such evidence as there is about the brand (and there is very little of it) comes from (a) a report prepared by the Complainant for the Press and headed Annual Report 2006 and (b) an extract (in German) taken from the Complainant’s website in 2007. At most, the Panel is prepared to accept that the Complainant is a large and successful company and that COMTEAM is one of its three principal trademarks, the others being EP and MediMax. Of assistance to the Respondent is the fact that the Complainant’s Italian website apparently makes no reference to COMTEAM. Certainly, the Italian webpages exhibited by the Complainant make no reference to the brand.

The parties’ fields of activity. The Complainant is engaged in the field of IT and telecommunications. The Respondent claims to have a scientific background in the field of fibre optics, describes himself as an electronic engineer and admits to familiarity with the telecommunications sector.

The parties’ geographical locations. In the telecommunications field geographical location is unlikely to be a determining factor. However, both parties are Europeans and the Complainant has a presence in Italy, the Respondent’s home country.

The use made of the Domain Name. It appears to have been used solely to default to a parking page of the Registrar. The Complainant asserts that the Respondent has been earning revenue via the advertising links on the site. The Respondent acknowledges that the Registrar may have been earning money via those links, but denies that he has earned anything. The Panel is inclined in the circumstances to accept the Respondent’s denial on this point. Of greater interest to the Panel in the present case is the nature of the advertising links featuring on the Registrar’s parking page. Ordinarily, the principal links are selected to match the Domain Name. Accordingly, if the domain name in question is a name such as <xyzinsurance.com>, one would expect the principal links to be insurance-related links. In the case of the parking page connected to the Domain Name the links most prominently featured are almost all sports-related links. None of those links are related to IT/telecommunications.

The behaviour of the Respondent. When first approached by the Complainant’s investigator the Respondent indicated that he was thinking of using the Domain Name in the field of telecommunications. On its face this was a very suspicious response. On the other hand, as he points out, the Domain Name had been sitting on the Registrar’s parking page for the previous 2 years, he had made no approach to the Complainant and his claimed expertise lies in a telecommunications-related area. It should be observed, however, that there is no independent documentary support for the Respondent’s claims about himself.

As to the Respondent’s willingness to sell the Domain Name, he says that he was putting a high price on the Domain Name to deter the Complainant’s investigator. The Complainant asserts that the price is indicative of bad faith. The Panel is not impressed with the Respondent’s explanation. The simplest way of deterring a would-be purchaser is to tell him that it is not for sale at any price. Moreover, the Panel would be surprised if the Respondent could not have been induced to part with the Domain Name at some price. Indeed, he ultimately indicated that he would accept 15,000 Euros. However, trading in domain names is not per se an unlawful activity. The Respondent denies that he registered the Domain Name with the intention of selling it to the Complainant or a competitor of the Complainant at a profit. Here, the fact that the Respondent was willing to sell it at a profit to someone who approached him over two years after the domain name was registered is not of itself in the Panel’s view evidence of an abusive registration.

The Respondent’s credibility, generally. Ironically, the aspect of all this which gives the Panel the greatest concern is that the Response, which is a very detailed and fully argued document, including some documentary evidence, features no evidence whatsoever supporting the Respondent’s bare assertions about himself and his plans, particularly his plans for the Domain Name. The Panel is concerned that the true position could be very different. Perhaps it is the case that in the telecommunications field, with which the Respondent is familiar, the COMTEAM trademark is very well-known, perhaps he registered the Domain Name knowing of the Complainant and has just been waiting for an approach from the Complainant. After all, while COMTEAM is a brand susceptible of several meanings/interpretations, it is a somewhat strange name to select for a domain name without some clear idea of what it is to be used for and how. If he did have some plans of the kind he intimates, from the style of the Response one would have expected him to produce some demonstrable evidence of those plans.

Conclusion. The matter is evenly balanced. While a number of the Respondent's explanations strike the Panel as somewhat convenient, they are not inherently implausible. Moreover, while the Respondent can be criticized for failing to produce supporting evidence, so can the Complainant. As the Panel has already observed, there is nothing in the evidence to indicate the fame/notoriety of the Complainant’s brand and it did not help the Complainant’s case to exhibit webpages from the Complainant’s Italian website, which made no reference to the brand in question. In sum, the Panel is not satisfied that the Complainant has succeeded here in tipping the balance of probabilities on bad faith decisively in its favour. That being so, the Complaint must fail. It is for the Complainant to prove its case, not for the Respondent to prove his defence.

To have rejected the Respondent’s denial of knowledge of the Complainant and its COMTEAM trademark with any confidence, the Panel would have wished to have been provided with more information on when the Complainant started using the trademark (the evidence in Annex 6 starts in 2006, two years after registration of the Domain Name) and the extent of the use of that mark at the date of registration of the Domain Name. The Panel has no information before him on either of those matters.

The Panel is not satisfied that the Domain Name was registered and is being used in bad faith.

The Panel notes that it is of course open to the parties to pursue the matter further in an appropriate court in which a more detailed presentation of the evidence may be made and subject to cross-examination.

7. Decision

For all the foregoing reasons, the Complaint is denied.


Tony Willoughby
Sole Panelist

Date: April 24, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0380.html

 

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