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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Schaum-Chemie Wilhelm Bauer GmbH & Co. KG v. Click Cons. Ltd

Case No. D2007-1299

1. The Parties

The Complainant is Schaum-Chemie Wilhelm Bauer GmbH & Co. KG, Essen, Germany, represented by Bockermann, Ksoll, Griepenstroh, Bochum, Germany.

The Respondent is Click Cons. Ltd, Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <isoschaum.com> is registered with DomainDoorman, LLC, USA.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2007. On September 5, 2007, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On September 5, 2007, DomainDoorman, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 September 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2007.

The Center appointed Anne-Virginie La Spada-Gaide as the sole panelist in this matter on October 22, 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.

The language of the proceedings is English.

4. Factual Background

The Complainant is a manufacturer of foam products used in construction. One line of products is offered under the name ”Isoschaum”. It consists of foam plastics developed especially for mining underground, for use as backfill and for insulation.

The Complainant obtained a German trademark registration for the mark ISOSCHAUM (special writing) in 1994 (reg. No. 2055314). No renewal certificate was provided with the Complaint.

The Complainant also owns an international registration for the same mark ISOSCHAUM (special writing), registered also in 1994 (reg. No. 633 160). The international trademark was registered for a twenty year period and is accordingly in force. The international registration for ISOSCHAUM (special writing) claims protection for goods of classes 1, 7, 17 and 19, all related to building materials and apparatus. The international trademark covers the following countries: Austria, Benelux, Spain, France, Italy, Poland, Czech Republic and Switzerland.

The disputed domain name <isoschaum.com> was registered on July 25, 2007 in the name of the Respondent.

The disputed domain name resolves to an on-line directory, indexing advertising links in various categories such as “travel”, “financial planning”, “beauty”, etc. The directory is available in several languages including German.

The printouts attached to the Complaint establish that when entering “schaum publications” as search terms in the search box provided on the home page of the “www.isoschaum.com” website, the web user was directed to a web page featuring a list of links to other websites related to foam materials.

On July 24, 2007, the Complainant’s counsel sent an email to the address […]@clickconsultingltd.com, with the following text:

“Dear Sirs,

I would like to have the domain isoschaum.com. Can I get it from you?

Please let me know the price for it.

Yours faithfully”.

On July 29, 2007, a message was sent in reply with the following text:

“I am considering offers above 7900 united states dollars

Greeting from the islands.”

A further message followed from the same sender on August 7, 2007:

“6000 united states dollars Greeting from the islands.”

The Complainant provided evidence that the Respondent had been involved in prior domain names disputes, in which it was found to have registered and used domain names identical or similar to trademarks of others (The Paragon Gifts Holdings, Inc. v. Click Cons Ltd, WIPO Case No. D2007-0304 and cited cases).

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to its German and international registration for the mark ISOSCHAUM.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name since its trade name is different from “isoschaum” and it does not own trademarks for “isoschaum”.

Moreover, the Complainant contends that the disputed domain name was acquired by the Respondent solely for the purpose of diverting Internet traffic intended for the Complainant’s website or products, to the Respondent’s website providing links to websites of third parties, advertising or selling products that compete with the Complainant’s products.

The Complainant also contends that the Respondent acquired the disputed domain name for the purpose of selling or otherwise transferring the domain name to the Complainant, or to a competitor of Complainant, or to another potential buyer.

Finally, the Complainant contends that the Respondent is a known serial cybersquatter, citing the case The Paragon Gifts Holdings, Inc. v. Click Cons Ltd, WIPO Case No. D2007-0304.

B. Respondent

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

6. Discussion and Findings

According to the Policy, paragraph 4(a), a complainant must assert and prove each of the following:

(i) 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) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name registered by the respondent has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is identical to the sole verbal element of the Complainant’s registered international trademark ISOSCHAUM (special writing).

Such verbal element is not a dictionary word and must therefore be considered distinctive, even though it consists of the relatively common prefix “Iso” (meaning “equal” in ancient Greek and used in a number of scientific terms) and the generic word “Schaum” (meaning “foam” in German). The graphic element of the mark, consisting in thick lower case letters, is only of secondary importance compared to the verbal element “Isoschaum”. Furthermore, the Panel considers it likely that consumers encountering the Complainant’s mark will recall mainly the term “Isoschaum” and not the graphic aspect of the mark.

Such being the case, the Panel finds that the domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent’s name does not correspond to the domain name, nor does it appear to be making a bona fide offering of goods or services under the domain name. The term “Isoschaum” is nowhere visible on the Respondent’s home page. Also, the categories listed on the Respondent’s home page are not related in any manner to foam products. It is only upon a search using the term “foam” that links for foam products are provided.

It rather seems that the Respondent has parked the disputed domain name on a website where the Respondent can generate click-through revenues from third parties advertising their own goods or services.

Panels have found that the use of domain names to publish advertising links is a normal legitimate enterprise, in the absence of evidence suggesting that the domain names were selected because of their correspondence with trademarks (Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964). In other words, as long as the domain names have been selected because of their attraction as dictionary words, and not because of their value as trademarks, their use to generate pay-per-click revenue may be legitimate (see HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062, Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304). The Panel in Media General Communications, Inc. v. Rarenames, WebReg, proposed that such a practice may be deemed legitimate when:

- the respondent regularly engages in the business of using domain names to display advertising links,

- the domain name is a generic or dictionary word,

- the domain name is not identical or confusingly similar to a famous or distinctive mark,

- there is no evidence that the respondent had actual knowledge of the complainant’s mark, and

- the respondent makes good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others.

The determination of legitimacy is very closely related to the issue of bad faith, which will be better addressed in connection with the requirement of paragraph 4(a)(iii) of the Policy.

Insofar as the requirement of paragraph 4(a)(ii) of the Policy is concerned, the Panel considers that the Complainant has established this second element.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), lists circumstances that constitute evidence of registration and use of a domain name in bad faith. This list is however not exhaustive. The Respondent’s disregard for a likelihood that the domain name infringes upon the trademark rights of another may be evidence of bad faith in the registration and use of the domain name (Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964).

In the present case, the application of the criteria devised by the Panel in Media General Communications, Inc. v. Rarenames, WebReg leads to the following results:

It is likely from the record that the Respondent engages regularly in the business of using domain names to display advertising links.

On the other hand, the disputed domain name is not a dictionary word or generic expression. The term “isoschaum” is a coined word made of the prefix “iso” (meaning “equal”) and the German word “Schaum” (meaning “foam”). Even though it can be said to be allusive for foam products, this term is not a generic expression or dictionary word, but must be considered distinctive.

There is no direct evidence that the Respondent had actual knowledge of the Complainant’s mark. However, as again the domain name does not correspond to a dictionary word, it is unlikely that the Respondent could have selected it by sheer coincidence.

Finally, nothing on the record indicates that the Respondent might have made a good faith effort to avoid registering a domain name that corresponds to the trademark of another. The Policy, paragraph 2, requires a good faith effort to avoid registration of domain names that infringe upon the rights of a third party. Even in the hypothesis of an independent creation on the part of the Respondent, the Respondent should have made basic verifications to ensure that the domain name did not reproduce the protected trademark of another. A simple Google search would have revealed at once that “Isoschaum” is the name of a product commercialized by the Complainant, which should in turn have led the Respondent to conduct a trademark search.

In view of the above, the Panel considers that the Respondent’s disregard for the likelihood that the disputed domain name corresponded to a distinctive trademark, and the Respondent’s use of the domain name to generate pay-per-click revenues from advertising links (some of them concerning goods competing with the Complainant’s products) constitute evidence of registration and use of the domain name in bad faith within the meaning of the Policy, paragraph 4(a)(iii).

The Respondent’s bad faith is further evidenced by the fact that the Respondent has been involved in several cases in which it was found to have registered and used domain names identical or similar to trademarks of others, thus appearing to engage in a pattern of registering and using domain names in disregard of the rights of others (The Paragon Gifts Holdings, Inc. v. Click Cons. Ltd, WIPO Case No. D2007-0304, Publix Asset Management Co. v. Click Cons Ltd, NAF Claim No. 874479, Enterprise Rent-A-Car Co. v. Click Cons Ltd, NAF Claim No. 869453 and TB Proprietary Corp. c/o Toll Brothers Inc. v. Click Cons Ltd, NAF Claim No. 858828).

In view of the above, it is not necessary to determine whether, as alleged by the Complainant, the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant or to a competitor of Complainant within the meaning of the Policy, paragraph 4(b)(i). In the present case, the Respondent did mention a price much in excess of its out-of-pocket expenses (USD 7,900, and then USD 6,000) when the Complainant’s counsel requested a quote, but the Respondent did not spontaneously approach the Complainant with an offer for sale, nor did it post any such offer on the website to which the domain name resolves. It is therefore not certain that Respondent’s primary purpose was to sell the domain name (see Gateway Inc. v. Domain Car, WIPO Case No. D2006-0604). As said, this issue need not be resolved, as the Panel finds that the domain name was registered and used in bad faith for the reasons set forth above.

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 <isoschaum.com> be transferred to the Complainant.


Anne-Virginie La Spada-Gaide
Sole Panelist

Dated : November 5, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1299.html

 

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