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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Messe Frankfurt GmbH v. Texas International Property Associates

Case No. D2008-0375

 

1. The Parties

Complainant is Messe Frankfurt GmbH, of Germany.

Respondent is Texas International Property Associates, United States of America, represented by the Law Office of Gary Wayne Tucker, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <messefrankfurtusa.com> (the “Domain name”) is registered with Compana LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2008. On March 11, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On March 11, 2008 Compana LLC transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2008. The Response was filed with the Center on April 9, 2008.

On April 11, 2008 the Center received by e-mail a Supplemental Filing lodged by Complainant and acknowledged receipt of this on April 13, 2008. This Supplemental Filing may, at the sole discretion of the Panel, be admitted and taken into account in this proceeding. Initially the Panel was not minded to read and consider the Supplemental Filing. However, for reasons that are apparent below, the Panel has decided that it is appropriate to consider this document.

The Center appointed Clive L. Elliott as the sole panelist in this matter on April 16, 2008. 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

Complainant is based in Frankfurt. It is a large trade fair organizer, active in 150 countries, holding more than 100 exhibitions each year around the world, including in the USA.

Respondent’s identity is not clear. Complainant asserts that it is a known cyber-squatter with a pattern of registering as domain names the trade names and marks, or variations thereof, of third-parties. Respondent neither confirms nor denies this but says it is prepared to transfer the Domain Name to the Complainant and that the Panel needs not concern itself with these issues.

 

5. Parties’ Contentions

A. Complainant

Complainant states that it is the world’s largest trade fair organizer. It is registered in the United States as Messe Frankfurt, Inc, a Delaware Corporation having the registration number 3335423.

Complainant asserts that its fairs served as meeting places for more than 68,000 exhibitors and 2.7 million visitors in 2006 and that it has spent large amounts of money, time and effort to reach the world’s leading position for presenting fairs and has been known for that in the USA and around the world for decades.

It points out that as an important part of its global activities, in excess of 100 trade marks have been lodged and registered around the world, many of them containing the words “Messe Frankfurt”. Examples of these are provided. They include:

German trade mark MESSE FRANKFURT (word) - serial number 1186230; and

US trade mark MESSE FRANKFURT (design + word) - registration number 2466959.

Complainant submits that the Domain Name differs only in the suffix “usa” from the trade marks in question, but that this cannot outweigh the identity of the remaining components.

Complainant further submits that there is no prima facie evidence of Respondent’s 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.

The Domain Name is said to resolve to a website where links are provided to third party services, the website reached opening up with a list of links, the first one being “Messe Frankfurt”, leading to hotel and travel agencies providing their services among others in the Frankfurt area. Other links provide offers of various types (maps, apartments, games and the like). It is contended that the links are generating a profit for Respondent.

Complainant asserts that such link-names must be interpreted as an intention to keep diverted customers on the website, pretending in bad faith to be Complainant’s website or that of its US subsidiary.

Finally, Complainant states that in December 2007, Respondent was contacted by a US attorney on behalf of Complainant and given the chance to transfer the Domain Name voluntarily but it failed to respond.

In the Supplemental Filing referred to above Complainant asserts that the so-called “consent to transfer” was never made and that Respondent was never willing to transfer the Domain Name.

Complainant submits that, irrespective of the transfer, in view of the Respondent’s behavior in the past and the costs involved in the pending case that the Panel should issue a statement concerning the three items of paragraph 4(a) of the Policy.

B. Respondent

None of the above assertions made by Complainant are disputed by Respondent. Instead it states that prior to filing the Response, counsel for Respondent attempted to contact counsel for Complainant to attempt to effectuate a quicker transfer of the Domain Name.

It states that Respondent was always willing to transfer the Domain Name and formally agrees to the relief requested by the Complainant and will, upon order of the Panel, do so. Respondent makes it clear that this is not an admission to the three elements of 4(a) of the Policy but rather an offer of “unilateral consent to transfer” as prior panels have deemed it.

 

6. Discussion and Findings

For the reasons set out below the Panel is of the view that by virtue of Respondent’s unequivocal consent to the transfer of the Domain Name and the Complainant having satisfied the three elements of 4(a) of the Policy that relief be granted and the Domain Name transferred to Complainant.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

- Similar to a trade mark or name in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the domain name; and

- The domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.

Preliminary Comment

Given that Respondent filed no substantive Response and relied instead on its offer to transfer the Domain Name, the Panel is required to first decide whether to consider the merits and if so to assess the evidence and submissions filed by the parties alone. In the absence of any dispute as to the accuracy and correctness of that information, the Panel must decide this proceeding largely on the basis of Complainant’s undisputed representations and draw such inferences as it considers appropriate.

Offer to Transfer

Respondent’s Response suggests that Respondent has no interest in the Domain Name and it has consented to its immediate transfer.

The Panel may find that in a circumstance such as this, where Respondent has unequivocally consented to the transfer of the disputed domain name, it should forego the traditional UDRP analysis and order the immediate transfer of the domain name. See Boehringer Ingelheim International GmbH v. Modern Limited – Cayman Web Development, NAF Case No. 133625 (National Arbitration Forum January 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer). The Panel may alternately find that the efficacy of such consent notwithstanding, there may nevertheless be circumstances in which it is appropriate to proceed to and record its consideration of the case on its merits under the three elements. See e.g. Sassybax, L.L.C. v. Texas International Property Associates, WIPO Case No. D2007-1190; and also Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, which the Panel discusses further below.

Having said this, the Panel is faced with Complainant’s assertion that the alleged “consent to transfer” was never offered by Respondent and that Respondent was never willing to transfer the Domain Name, until now and the request that it look at the wider merits of the situation. For the reasons set out more fully below, principally under the “Bad Faith” ground, the Panel is of the view that the wider merits do need to be considered in this particular case.

The elements of Paragraph 4(a) of the Policy are now considered:

A. Identical or Confusingly Similar

It is clear that Complainant had registered and/or used the trade mark/trade name MESSE FRANKFURT in relation to the organization of trade fairs both globally and more specifically in the USA.

The Panel finds that the Domain Name is substantially the same as Complainant’s trade mark/trade name and comprises a combination of Complainant’s trade mark/trade name differing (apart from the absence of a space) only in respect of the suffix “usa”. Complainant submits that this cannot outweigh the identity of the remaining components. The Panel accepts this submission.

Given that no contest has been raised by Respondent as to the Complainant’s rights to the trade mark/trade name MESSE FRANKFURT the Panel finds that Complainant has protectable rights under the Policy and that the first element of the Policy has been met.

B. Rights or Legitimate Interests

Complainant contends that the Domain Name resolves to a website where links are provided to third party services, the website reached opening up with a list of links, the first one being “Messe Frankfurt” and that this leads to hotel and travel agencies providing their services. It is further contended that other links provide a variety of other offers some of which relate to travel and accommodation.

The Panel concludes that the Domain Name is being used as a means of diverting Internet customers with an interest in trade fairs and related goods and services, including travel and accommodation. In those circumstances it is difficult to see how Respondent’s conduct could be characterized as legitimate. The business model of registering well-known trade marks and names as domain names and deriving revenue from “click through” business is well-known and needs no elaboration. This seems to be what Respondent is doing and in the absence of any explanation or denial it is found that Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

As noted above, it is submitted that the Respondent’s conduct should be interpreted as an intention to keep diverted customers on its website, pretending in bad faith to be Complainant’s website or that of its US subsidiary. This inference is certainly capable of being drawn on the available evidence and in the absence of any explanation or denial from Respondent.

Complainant contends that Respondent has previously been the subject of or otherwise involved in adverse decisions for the transfer of disputed domain names. Likewise, it appears that a pattern of involvement in registering well-known trade marks or names as domain names exists. It is well established that both conduct leading to a likelihood of consumers being misled and a pattern of dubious domain name registrations may be indicative of bad faith.

More specifically, Complainant alleges that Respondent is a known cyber-squatter and that UDRP decisions involving the Respondent have specifically discussed Respondent’s bad faith registration of domain names. Reliance is placed on the decision in United Consumers Club, Inc. v Texas International Property Associates, WIPO Case No. D2007-0987, where the Panel lists dozens of cases in which the Respondent has been ordered to transfer its registrations.

This raises a material issue. By consenting to a transfer of the Domain Name, as it now has, Respondent might be able to avoid possible adverse findings and comments. Complainant disputes that there was ever any real offer to transfer the Domain Name and that Respondent should not be able to benefit from this strategy.

In Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, the Panelist, in dealing with the same respondent, stated:

“Finally, Respondent’s actions during the pendency of this case further indicate bad faith. On September 20, 2007, Respondent filed a Response stating that it was willing to transfer the Domain Name. The WIPO proceedings were then suspended so that the parties could pursue settlement. However, for reasons that are not clear from the record, a settlement was not reached. Thus, Respondent’s alleged offer to transfer the Domain Name resulted in a delay in the proceedings, during which time Respondent’s website continued to be active and hence to generate revenues for the Respondent”.

The factual situation in the Brownells case has a familiar ring to it. In Brownells the Panelist then went on to note that:

“If Respondent had sincerely wished to transfer the Domain Name, it would have been a simple matter for it to do so. Respondent’s failure to follow through on its offer to transfer suggests that Respondent is attempting to delay the inevitable transfer of its Domain Name so as to generate another month or two of revenues. This conduct is inconsistent with the Policy and is resulting in a waste of resources of the Center and of multiple Complainants”.

The Panel agrees with these comments and observes that in cases of this type it would be contrary to the spirit and intent of the Policy for a party to use the expedient of offering to transfer the disputed domain name at the last minute, in order to avoid a decision on the merits and thereby minimize the risk of adverse findings/comments. That is, particularly where that party appears to have done the same previously and where the purpose of the step appears to be to circumvent the Policy. In the instant case the Panel infers that the purpose of this strategy is not only to delay the inevitable (as found in Brownells) but also effectively to thwart the Policy (where patterns of questionable conduct have always been relevant) and that this is an abuse of process and a further indication of bad faith conduct.

The Panel thus has no difficulty in concluding that the third limb of the Policy has been met.

 

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, <messefrankfurtusa.com> be transferred to the Complainant.


Clive L. Elliott
Sole Panelist

Date: April 29, 2008

 

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-0375.html

 

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