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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Utrecht Manufacturing Corporation v. Web Management S.A.

Case No. D2007-1258

1. The Parties

The Complainant is Utrecht Manufacturing Corporation, of New Jersey, United States of America, represented by Edwards Angell Palmer & Dodge, LLP, United States of America.

The Respondent is Web Management S.A., of Panama City, Panama.

2. The Domain Name and Registrar

The disputed domain name <utrechtblog.com> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on August 24, 2007 and by hard copy on August 28, 2007. On August 28, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On August 29, 2007, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details including as administrative, technical and billing contact Martin Milagros. 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 August 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2007. The Respondent did not submit a response within the time limit. Accordingly, the Center notified the Respondent’s default on September 20, 2007.

Later the same day, September 20, 2007, the Respondent wrote to the Center enquiring “How is this (the notification of default) possible?” and referred to an Acknowledgement of Receipt of Complaint sent by the Center to the parties on August 31, 2007 advising that the Center would analyze the Complaint to determine if it complied with the formal requirements of the Uniform Domain Name Dispute Resolution Policy and the Rules, and that a Complaint that satisfied all of the formal requirements would be notified to the Respondent who would then have 20 calendar days in which to submit a Response. The Respondent stated it received no such notification and had been waiting for it since the Center’s original email dated August 31, 2007. In reply to the Respondent the Center stated that it had notified the Complaint and the Commencement of Administrative Proceeding on August 30, 2007 and that “No bounced back email was received from either admin@wmanage.com or mm@wmanage.com”, that the hard copy of the Complaint and the Administrative Proceeding was sent on August 30, 2007, and delivered to its destination on September 5, 2007, and that accordingly, the Response due date was September 19, 2007. The Center advised the Respondent that the Administrative Panel would be informed of the default and that the Administrative Panel would decide in its sole discretion whether to consider the Respondent’s Response if submitted later.

In response to a request from the Respondent on September 22, 2007, on September 24, 2007, the Center forwarded to the Respondent a copy of the Notification of Complainant and Commencement of Administrative Proceeding dated August 30, 2007.

The Respondent forwarded a Response by email on September 26, 2007.

The Center appointed Joan Clark as the sole panelist in this matter on October 2, 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

According to the WHOIS database of Fabulous.com, the Respondent is the registrant of the contested domain name, <utrechtblog.com>, which was created on July 3, 2007 and has an expiration date of July 3, 2008.

The Complainant is the registered owner of several United States trademarks, including:

(a) UTRECHT AND DESIGN, registered on February 6, 2001, for paint for artists and various art supplies;

(b) UTRECHT in stylized form, registered on April 4, 2000, for paint for artists and various art supplies;

(c) UTRECHT, registered on April 4, 2000, for paint for artists and various art supplies;

(d) a design including the words “SUPREME PROFESSIONAL QUALITY – UTRECHT” registered on March 21, 2000, for paint for artists and various art supplies.

5. Parties’ Contentions

A. Complainant

(a) Complainant’s contentions as to its rights in the Utrecht marks and as to the confusing similarity of the disputed domain name to the Complainant’s marks.

The Complainant avers that since at least as early as 1949, it has been using the mark UTRECHT (word only) and subsequent thereto, with either stylized lettering or a design feature in conjunction with art supplies, paints, mail order catalogues and retail stores, and further that it registered its domain name, <utrecht.com> in 1996 and has been offering its goods over the Internet since that time. The Complainant avers that it has gained a reputation as being a leader in the art supply and art store industry throughout the United States of America and worldwide.

The Complainant maintains that confusion between its marks and the domain name in dispute is unavoidable since the Respondent’s domain name wholly incorporates Complainant’s house marks, and that including the term “blog”, which identifies a website that provides news and/or information on a particular subject in association with Utrecht, is intended to catch unassuming interested parties’ attention and mislead them to believe they are entering a sanctioned site where they can gather information on the Complainant and its goods, art and art supplies.

The Complainant concludes that the domain name in dispute is confusingly similar to Complainant’s Utrecht marks.

(b) Complainant’s contention that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant states, upon information and belief, that the Respondent is not commonly known by the <utrechtblog.com> domain name and is not making legitimate fair use of Respondent’s domain name. The Complainant states the Respondent describes itself on its website as Web Management S.A., “a domain, investment and Website development company located in Panama that buys, holds, develops and sells domains”. The Complainant avers that the Respondent’s only interest is to profit from Complainant’s good will established in the UTRECHT marks.

The Complainant maintains that the sole purpose of the Respondent’s domain name and website is to divert customers to websites competing with Complainant, and further that no goods are specifically offered at the Respondent’s website.

The Complainant avers that Respondent does not own any trademark or service mark encompassing the <utrechtblog.com> domain name, is not commonly known by the domain name and is not making a legitimate non-commercial or fair use of the domain name.

The Complainant claims that the Respondent is using its domain name with intent for commercial gain to misleadingly divert customers from Complainant’s goods offered under the UTRECHT marks, by virtue of links to other art or art supply sites.

(c) Complainant’s contention that the domain name was registered and is being used in bad faith

The Complainant notes that the Respondent registered its domain name on July 3, 2007, long after Complainant had acquired its rights in and to the UTRECHT marks.

The Complainant complains that the website hosted at the Respondent’s domain name includes links that lead the consumer to websites offering products and services which compete with those of the Complainant.

The Complainant, upon information and belief, states that the Respondent’s use of its domain name causes redirection to competitive sites and is an intentional attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s UTRECHT marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Complainant claims this is an attempt to increase the value of Respondent’s domain name in order to attempt to sell it for profit.

The Complainant maintains that the Respondent’s conduct directly disrupts the Complainant’s ability to conduct business whereby consumers looking for Complainant’s products may guess at the domain name and be diverted to the Respondent’s linked sites, which are not affiliated with or sponsored by the Complainant.

The Complainant notes that the Respondent’s domain name was registered less than two months ago using the Complainant’s trademarks registered in 2000 and 2001 and in use since the 1940s, which suggests that the Respondent knew of the Complainant’s use of the UTRECHT marks and that the Respondent’s actions were intentional.

The Complainant has requested that the disputed domain name <utrechtblog.com> be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions within the time limit proscribed by the Center on August 30, 2007 in the Notification of Complaint and Commencement of Administrative Proceeding. The Panel notes that the Respondent filed an email (without as required by the Policy providing hard copies) purporting to be a Response on September 26, 2007, albeit without the certification that the information is complete and accurate as proscribed in paragraph 5(b)viii of the Policy. The Panel has taken note of the Respondent’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name, <utrechtblog.com>, is confusingly similar to the Complainant’s Utrecht trademarks. The addition of the word “blog” to the Complainant’s trademark “Utrecht” does not serve to distinguish the domain name from Complainant’s trademark. As the Complainant has noted, the term “blog” identifies a Website that provides news and/or information on a particular subject and where interested parties can read information and leave comments, in this case, relating to UTRECHT, a trademark of the Complainant.

The Panel finds for the Complainant under the first element of the Policy.

B. Rights or Legitimate Interests

The Respondent’s press releases provided by the Complainant state clearly that the Respondent is a domain, investment and website development company located in Panama that buys, holds, develops and sells domains. In fact, in the Respondent’s press release dated May 11, 2007, Martin Milagros, the Respondent’s contract, waxes enthusiastic about the market for premium financial domain names heating up as <e-money.com> is put on public auction. According to the Respondent’s press releases, “domain name investing” appears to be the principal business of the Respondent.

Dealing with the specific circumstances described in paragraph 4(c) of the Policy, the Panel concludes that the Respondent has not used, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services or indeed with a “blog” about the City of Utrecht. The most the Respondent has apparently done to date, with respect to the instant domain name, is to indicate on its website recommended links to other sites where the products listed on the Respondent’s website can be found. It appears that the Respondent is in the business of domain name registration and commercialization, and that the “goods or services” which the Respondent appears to be making preparation to offer at some time in the future is the domain name itself. While the domain name at issue contains the word “utrecht” which is also a city in the Netherlands, as well as the word “blog”, the domain name is not currently being used either in relation to the city Utrecht, or in relation to any blog. As at the time of this Panel Decision, the disputed domain name does not resolve to any active web page, and the Complainant has provided evidence indicating that it was previously used merely for the purpose of pay-per-click advertising. While it is conceivable that the disputed domain name could be used for a legitimate purpose such as providing a blog about Utrecht the city, it would not be enough merely to claim such intent – actual evidence would be required. Such evidence would presumably also provide an explanation as to this very particular choice of a domain name by a Panama-based web registration company. The Respondent has not seen fit to provide any such evidence establishing its bare claim that the domain name as a blog related to the Dutch City of Utrecht was set aside for future development. Instead a more likely motivation seems implied in one of the Respondent’s press releases stating that: “[w]hile waiting for the right buyer, domain investors can monetize their domains with relevant Pay Per Click (PPC) ads provided by Google and Yahoo”.

There is no indication that the Respondent has been commonly known by the domain name.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

As noted the Respondent’s press releases produced by the Complainant indicate the Respondent to be a domain, investment and website development company that buys, holds, develops and sells domains. The Respondent’s own press releases indicate “domain name investing” to be the principal business of the Respondent. It seems unlikely that a professional investor in domain names would choose to invest in a domain name without verifying on the Internet if such a name is already employed in third party domains or otherwise subject to third party rights. It also seems unlikely that the professional investor in domain names would know the city Utrecht in the Netherlands but not the trade mark UTRECHT subject of several registrations in the United States. The Panel notes that in typing the word “utrecht” into a Google search, the first hit is the Complainant’s site, and the second is to an entry in the online information resource Wikipedia relating to Utrecht the city.

The Panel has little hesitation in concluding that the Respondent, when acquiring the domain name in dispute, intended to sell it at a later time for financial gain. There is no direct evidence in the material produced by the Complainant that the Respondent’s purpose was to sell the disputed domain name to the Complainant or to a competitor of the Complainant, but it is fair to presume that the Complainant would be a logical potential purchaser of the domain name. Utrecht is an unusual name and is the distinctive part of Complainant’s name and trade marks. The Panel notes that while at the time of drafting this decision the disputed domain name currently appears to be blocked or not in use, there have been no demonstrated preparations to use the domain name as a blog about the city of Utrecht. The Panel considers it highly unlikely that Utrecht would be included in the choice of the Respondent’s domain name, whose site lists some products similar to those sold by the Complainant, without knowledge of the Complainant and its trademarks. Furthermore, it is in this Panel’s view not unreasonable to expect that a professional investor entity in domain names that wishes to rely on a defense that it was unaware of any conflicting trade marks at the time of registering a particular domain name has a corresponding responsibility of taking at least some steps towards verifying the absence of conflicting trade marks at such time. The Panel notes in this regard that a brief search on the Internet can in this day and age readily be conducted from virtually any corner of the globe. Had the Panama-located Respondent done so in this case, it would have discovered the Complainant’s name and marks prominently displayed. Previous panels have found that failure by an investor in domain names to conduct such a search may in certain circumstances result in a bad faith registration when the domain name chosen is found to be confusing with another’s trade mark, particularly where there appears to be an element of wilful blindness on the part of a web-savvy respondent. See e.g. Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006.

The Complainant has provided evidence indicating that the disputed domain name has previously (at least on August 22, 2007) been used to post a number of what appear to be “art” and “blog” related popular links to other sites where the products merely listed on the Respondent’s website can be accessed. Such use appears consistent with an arrangement under which revenue is typically generated either from hits on the webpage itself or on the “sponsored links”, or both. Taking into account all apparent circumstances, the Panel is satisfied that, despite the Respondent’s bare claims regarding an intended blog site, the Respondent knew or should have known of the Complainant’s trade mark and the registration and subsequent use of the domain name were thus in bad faith.

The Panel concludes that the domain name <utrechtblog.com> was registered and at the time of the filing of the Complaint was being used in bad faith.

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 <utrechtblog.com> be transferred to the Complainant.


Joan Clark
Sole Panelist

Dated: October 20, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1258.html

 

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