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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EURO DATA GmbH & Co. KG v. Excel Signs
Case No. D2009-0465
1. The Parties
The Complainant is EURO DATA GmbH & Co. KG of Saarbrãcken, Germany, represented by Wagner RechtsanwГ¤lte, Germany.
The Respondent is Excel Signs of Quincy, Massachusetts, United States of America, represented internally.
2. The Domain Name and Registrar
The disputed domain name <eurodata.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 8, 2009. On April 9, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 9, 2009, GoDaddy.com, Inc. 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" or "UDRP"), 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 April 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2009. On April 18, 2009 the Respondent submitted an e-mail with attachments. After the Center on April 21, 2009 requested the Respondent to confirm that the e-mail message of April 18, 2009 was to be considered as the complete Response, the Respondent on April 22, 2009 submitted an e-mail with Annexes and indicated that those should be considered as its complete Response. On April 27, 2009 the Complainant submitted a Supplemental Filing by e-mail. On April 28, 2009 the Respondent also submitted a Supplemental Filing by e-mail. On April 28, 2009 the Center acknowledged receipt of both Supplemental Filings.
The Center appointed Alfred Meijboom as the sole panelist in this matter on April 30, 2009. 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.
After the Panel was appointed, on April 30, 2009 the Complainant sent an email to the Center acknowledging the receipt of the Respondent`s Supplemental Filing but rejecting such Supplemental Filing as it was made in the form of a revised Response and claiming that it would not be reasonable for the Complainant to go through the whole revised Response and pick out the revised parts. On May 1, 2009 the Respondent sent an email to the Center asserting that the majority part of the original Response had been revised as a result of the Complainant`s Supplemental Filing of April 27, 2009, and that the revised Response cannot be separated.
4. Factual Background
The Complainant is a company which was established in Germany under the names Euro Data and Eurodata in 1965. The Complainant is supplier of accounting software for filling stations in several European countries.
The Complainant holds the following registered trademarks for goods and services related to, inter alia, software and management services:
- German device mark EURODATA (2089616) filed on August 3, 1994;
- German device mark EURODATA (30083730.5) filed on November 4, 2000;
- German word mark EURODATA (30201625.2) filed on January 15, 2002;
- German word mark EURODATA (30630684.0) filed on May 12, 2006;
- Community device mark EURODATA (based on international trademark 878215);
- International device mark EURODATA (878215) for Bulgaria, Romania, Slovenia and the Slovak Republic registered on December 15, 2005;
- International word mark EURODATA (923863) for Switzerland, Croatia, Montenegro, Serbia and Ukraine, registered on November 10, 2006.
According to the registrar verification the domain name <eurodata.com> (the "Domain Name") was created on July 28, 1995.
The Respondent acquired the Domain Name in 2007 and offered it for sale on the website "www.afternic.com". The Complainant`s subsidiary Infoserve submitted two bids for the Domain Name in February 2008, which did not result in the sale of the Domain Name. Later, the Respondent connected the website under the Domain Name to a third party managed parking site which links to different advertisement sites for car parts.
5. Parties` Contentions
The Complainant contends that the Domain Name is confusingly similar to the trade name and company name of the Complainant, which it has been using since 1965. The Complainant uses the trade name "Euro Data" also as trademark and registered several trademarks with the word component "EURO DATA" and/or "EURODATA". The top level domain ".com" has no distinctive character at all. The sign used for the second level domain "Eurodata" is the only distinctive element of the Domain Name and it is clearly identical to the word component of the Complainant`s trademarks and to his trade name.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name because:
- it does not have prior rights to the Complainant`s trade name and trademarks;
- it uses the website under the Domain Name as a commercial parking page and not to publish its own content;
- there is no evidence of the Respondent using or demonstrably preparing to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; and
- the Respondent (as an individual, business or other organization) has also not been commonly known by the Domain Name. It only obtained the Domain Name in 2007 after it was held by another entity that used the Domain Name for an online magazine providing information about traveling Europe and old fashioned software for Microsoft Windows 3.1 since 1996.
By using the website under the Domain Name solemnly as a parking domain, the Respondent tarnishes the trademarks of the Complainant. The average customer looking for goods and services of the Complainant will confuse the current parking page with the website of the Complainant and will get a bad and wrong impression of the Complainant`s portfolio of services.
The Domain Name has been registered and is, according to the Complainant, being used in bad faith by the Respondent because:
- the Respondent registered the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent`s out-of-pocket costs directly related to the Domain Name;
- by registering the Domain Name, the Respondent prevents the Complainant as the owner of its trademarks from reflecting the trademarks in an international environment; and
- as the Complainant primarily stands in close business relations with filling stations, the Respondent`s choice to host a parking page related to cars, car dealers and car parts is based upon the idea to attract and / or commercially gain Internet users to the Respondent`s website searching for goods and services offered by the Complainant. By using the distinctive and formative elements of the trademarks and trade name of the Complainant, the Respondent creates a likelihood of confusion with the Complainant`s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent`s website or location or of a product or service on the Respondent`s website or location.
The Respondent denies that the Domain Name is identical or confusingly similar to the Complainant`s trademarks because Complainant`s rights in the mark, if any, should be considered to be extremely narrow in view of the widespread use of "euro data" and "eurodata" by numerous third parties and given that both "euro" and "data" are common English words, and combinations of both are widely used terms for many different designations of businesses and occasions, such as information related to currencies and stocks, travel, news, computer data recovery, weather, archived documents, entertainment, telecommunications, technical data, politic, immigration and many more.
A basic search on the United States Patent and Trademark Office`s website yields four trademarks, dead and alive, containing the keyword "eurodata". Another basic search on "www.google.com" yields over 148,000 results for the words "euro data", and 272,000 results for the term "eurodata". The top 5 results from each search do not include any website that Complainant owns.
The Respondent continues that the Complainant has only registered its "eurodata" trademark in Germany, and has never filed for any trademark registration in the United States. The Respondent has never heard about the Complainant or any of its operations until the Respondent was notified of the Complaint. The Complainant is not well-known globally as it has never operated its business outside of Europe. The Complainant`s trademark, not being fanciful or arbitrary, is not globally well known as an exclusive brand name and has not gained powerful second meaning, either. Therefore, the scarcely appealing name gives the Complainant no ground to claim rights to the Domain Name.
The Respondent holds that the Complainant`s business relationship with filling stations does not indicate it offers same goods or services that a filling station may offer. In fact, the Complainant does not offer any product or service that a regular filling station offers. Therefore, the Complainant made such claim in bad faith with the intention to mislead the Panel in hope to reverse hijack the Domain Name. As a matter of fact, Complainant`s own publication on its website at <eurodata.de> clearly states that it offers nothing other than accounting software, which the Respondent`s services have no connection with.
The Respondent has rights or legitimate interests in respect of the Domain Name because it is legal to park a Domain Name, which should be considered a bona fide offering of advertising services for auto parts dealers and technicians.
During November 17, 2008 and December 15, 2008, the Respondent initiated an Internet search marketing campaign to promote the auto parts and services advertised on the website under the Domain Name. As a result, thousands of people around the world learnt about Respondent through the Domain Name. By now, millions of people know the Respondent by the names of Eurodata and the Domain Name, and the Domain Name has generated substantial revenue for the Respondent and its advertisers through the Respondent`s own effort and expenses. No one in North America knows the Complainant by "Eurodata", <eurodata.de> or the Domain Name. Therefore, the Respondent`s use of "Eurodata" and the Domain Name is overwhelmingly more famous and well-known globally than the Complainant.
Respondent has been developing the Domain Name by itself since 2007. The Respondent is not required to publish any content to the Domain Name at all. The progress of the development is a business secret, and Respondent is under no obligation to display it to anyone.
The Complainant`s purpose to use the Domain Name is to advertise its software and IT services, as it claimed. The Respondent is utilizing the Domain Name to promote auto parts for its sponsors. If the Complainant`s proposed interest in the Domain Name is legitimate, there is no reason why Respondent`s similar interest in the Domain Name is not legitimate.
The Respondent further claims that it has not registered and used the Domain Name in bad faith. According to the Respondent there are no laws or regulations in the world against the sale of domain names or websites for any amount of money that their owners desire. The Respondent has never offered the Domain Name to the Complainant, and the Respondent has never promoted the sale of the Domain Name with the intention to sell it to the Complainant or its competitors.
The Respond discovered that, when it offered the Domain Name for sale on "www.afternic.com", Infoserve, which made a bidding, was actually a subsidiary of the Complainant. It is therefore clear that it was the Complainant who approached the Respondent to try to purchase the Domain Name, and only after it decided to abandon the negotiation, it initiated the Complaint in bad faith to retaliate the Respondent with the hope to reverse hijack the Domain Name. On the other hand, "www.afternic.com" provided a convenient way to communicate among its users. The Respondent has used this service to send Infoserve a request for a buy-it-now offer, to which Infoserve has never responded. In addition, the Complainant has never attempted to contact the Respondent, instead, claiming that it was unable to contact the Respondent at all.
The Complainant had only operated its business in certain European countries, and had not sought trademark registrations in the United States at the time the Respondent purchased the Domain Name for approximately USD 2,200 from the previous owner in 2007 for future developments. To this date, the Complainant`s business activities are still limited to some parts of Europe, and it still has not attempted to register any trademark in the United States. The Complainant has not advertised, nor marketed in the Unites States, and the Respondent has never been to any country that the Complainant operates in. There was no way for the Respondent to know the existence of Complainant, nor its trademarks until it received the Complaint.
After the Respondent connected the Domain Name to a paid search site managed by a third party, the Respondent did not advertise any product or service offered by the Complainant, nor its direct competitors.
The Complainant does not own <eurodata.net>, <eurodata.org>, <eurodata.us>, <eurodata.co.uk>, or <eurodata.hu>, even though it operates business in United Kingdom of Great Britain and Northern Ireland and Hungary.
The Complainant claimed that "[r]egistering domain names in order to sell them for valuable consideration in excess of out of pocket costs is evidence of bad faith within the ICANN provisions. Policy 4(b)(i)." According to the Respondent, the Complainant took the Policy quote out of context. The complete language of paragraph 4(b)(i) of the Policy reads "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." It is extremely important to note that the Policy requires the Respondent to be intentionally offering the domain name to the trademark or service mark owner or to a competitor of that complainant in order to qualify as evidence of registration and use in bad faith. According to the Respondent, the fact that the Complainant intentionally left out this requirement, further proves that the Complainant made such claims in bad faith and aimed at confusing the Panel into believing that simply offering a domain name for sale would be sufficient to find the Respondent registering and using the Domain Name in bad faith.
The Complainant has never provided any evidence to prove that the Respondent was offering the Domain Name for sale at a price in excess of its out-of-pocket costs, despite the fact that the Respondent has not even set an asking price for the Domain Name.
C. Reverse domain name hijacking
The Respondent claims that the Complainant filed the Complaint knowing that it did not have any legal or moral ground to succeed, but rather filed the Complaint attempting to reverse hijack the Domain Name to fulfill its financial desire. Without any reasonable statement to support its claim, the Complainant elected to mislead the Panel into believing that products and services that a filling station offered would be considered as its own offering, merely due to the filling station being its client, despite the fact that the Domain Name apparently has not even advertised fuel, which a filling station sells.
Even though it was the Complainant who approached the Respondent to try to acquire the Domain Name, and it knew that the Respondent had never promoted the Domain Name in a way that would confuse it with Complainant`s trademark, yet, it claimed that the Respondent registered the "Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of that Complainant." According to the Respondent, such claim is hypocrite and nothing better than an awful attempt to reverse hijack the Domain Name, for which reason the Respondent request that the Panel finds the Complaint was brought in bad faith and constitutes reverse domain hijacking.
In its Supplemental Filing of April 27, 2009 the Complainant refutes the Respondent`s allegation of reverse domain name hijacking, using the following arguments in addition to those set forth in the Complaint.
According to the Complainant the Respondent obscured the Complainant`s arguments when it pretended that the Complainant claimed to offer the same goods and service as filling stations. The Complainant`s main areas of business cover all kinds of IT services for filling stations. Complainant is market leader with specialized IT services for filling stations within Germany and serves more than 7,000 filling stations in Germany alone, holding a market share of over 50% within Germany. And the Complainant has strong relations to the automotive sector in general. Some of the biggest automotive brands and major filling stations, such as Peugeot, CitroГ«n, BP, Shell, Q8, Eni, Total and Aral, belong to the Complainant`s customers. The Complainant never tried to mislead the Panel and made any claims in bad faith.
Further, the Complainant claimed that the Respondent cannot argue in all seriousness that the Domain Name is more well-known than Complainant`s business with more than 500 employees and revenue of almost 1 billion euro per annum. The Respondent does not even sell used car parts on the website under the Domain Name as the website is only used for displaying sponsored links.
The Respondent admits in his Response that he only purchased the Domain Name in 2007. The Respondent then immediately tried to sell it on the marketplace "afternic.com", thereby showing that it never intended to use the Domain Name for commercializing its own goods and services. Furthermore, the Respondent admits that it does not use the Domain Name for anything else that just holding and parking it. The Respondent`s failure to offer any bona fide services in connection with the Domain Name - other than his belated allegation that it was planning to do so as well as its "parking" of the Domain Name for almost two years - is further evidence of bad faith (Alpine Electronics, Inc. v. AlpineSys, NAF Case No. 94972).
Offering the Domain Name at a domain market place like "afternic.com" implies the motive to sell the Domain Name to the legitimate holder of the trademarks. It is no more necessary to directly contact right holders but cybersquatters can wait until the legitimate trademark holder feels impelled to contact the domain holder. As bad faith is an inner motive, it is very hard to prove the existence of bad faith. According to the Complainant it is therefore accepted in UDRP cases that bad faith in the sense of paragraph 4(b)(i) of the Policy is given if Respondent`s offer to sell the domain name (either to the Complainant or to the public at large) was made on Respondent`s website or on another website, such as an auction website (DaimlerChrysler Corporation v. Brad Bargman,
WIPO Case No. D2000-0222; Oxygen Media, LLC v. Primary Source,
WIPO Case No. D2000-0362; Steven Rattner v. BuyThisDomainName (John Pepin),
WIPO Case No. D2000-0402; Wal-Mart Stores, Inc. v. Kenneth E. Crews,
WIPO Case No. D2000-0580; Phat Fashions, LLC v. Internet Max, NAF Case No. 495040; Hewlett-Packard Company v. Posch Software, NAF Case No. 95322; Internet Security Systems, Inc. v HLC Enterprises, NAF Case No. 95493 and Businessway Computer Centers Inc. v. Logo Excellence, Case No. AF-0217).
The Complainant further acknowledges that Infoserve belongs to the group of Complainant. However, the Complainant had no knowledge about the activities lnfoserve carried out in January 2008 in order to acquire the Domain Name. The activities of lnfoserve in January 2008 cannot lead to failure of the Complaint, as Infoserve did not try to trick Respondent into selling the Domain Name just for the purpose of winning this procedure. The Complainant did not even mention activities of Infoserve in the Complaint. This clearly shows that activities of Infoserve are not relevant at all in this procedure.
Further, the Complainant claims that the Respondent`s intent to sell inferred from the facts that Complainant had prior ownership of an identical trademark registration, that the dominating element in the corporate name and the Domain Name at issue were identical, that this element had a high degree of individuality and distinctiveness, that it was highly improbable that the Respondent selected the name without knowledge of Complainant`s trademark registrations and their wide reputation, and due to the non-contested statements in the Complaint (Siba AB v. TorbjГ¶rn Hellerstad,
WIPO Case No. D2000-0146; Arla, ekonomisk fГ¶rening v. P D S and Tony Lennartsson,
WIPO Case No. D2000-0151 and Union des associations européennes de football v. Alliance International Media,
WIPO Case No. D2000-0153), and for the reason that the Respondent registered the Domain Name in the face of Complainant`s trademark application, that Respondent had made no legitimate use of it, that it had no business relating to the Domain Name, that it did not respond to inquiries of the Complainant, the registrar or the Center, and that Respondent appeared to be in the business of selling domain names for profit (Soundscape, Inc. vs. Soundscape, NAF Case No. 94323).
Further, the Complainant claims that the Respondent should know that bad faith is generally inferred where a respondent registers a domain name incorporating the complainant`s mark, even where such complainant already owns a domain name reflecting his trademark in a different top level domain. Complainant`s ability to obtain domain names in another top level domain should not prohibit a finding of bad faith. Otherwise, paragraph 4(b)(ii) of the Policy (which considers registration of 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 has been engaged in a pattern of such conduct, evidence of bad faith) would almost always be inapplicable since it is frequently possible for the Complainant to register the same name in another top level domain.
Furthermore, the Complainant submits it is irrelevant if the Respondent ever travelled to Europe or if the Complainant holds trademarks in the United States in order for the Panel to establish if the Domain Name is identical or confusingly similar to the trademarks of the Complainant.
6. Discussion and Findings
Supplemental Filings and subsequent correspondence
Both the Complainant and the Respondent filed unsolicited Supplemental Filings and e-mails to the Center. As these Supplemental Filings and e-mails were not requested by the Panel pursuant to paragraph 12 of the Rules, the Panel has the sole discretion to accept such filings.
In principle, supplemental filings are only permitted if they provide information which the Complainant was unable to provide in its Complaint. In this case the Respondent asked the Panel to decide that the Complaint was filed in bad faith in an attempt to reverse domain name hijacking as meant in paragraphs 1 and 15 (e) of the Rules, which could be regarded as a counterclaim to which the Complainant has the right to reply by filing a supplemental filing. The Panel therefore accepts the Complainant`s Supplemental Filing. As the Complainant`s Supplemental Filing provides more information than strictly necessary as a defense against the Respondent`s allegation of reverse domain name hijacking, the Panel also accepts Respondent`s Supplemental Filing. As Respondent chose to amend its original Response rather than filing a separate Supplemental Filing which only addresses the Complainant`s Supplemental Filing, the Panel shall consider the Respondent`s revised Response having replaced the Respondent`s original Response. Consequently, the Panel rejects Complainant`s claim that the revised Response should be rejected.
Language of annexes to the Complaint and Supplemental Filing
In its e-mail of April 27, 2009 the Complainant asked the Center if it would be requested to submit the annexes to its Complaint and Supplemental Filing in English translation in accordance with paragraph 11(b) of the Rules. The Panel does not require such translation as the Respondent did not complain about the annexes being in German and did not seem to be hindered in its defense, and the Panel has sufficient understanding of German.
Assessment of the case
According to paragraph 4(a) of the Policy, the requested remedy can be granted if the Complainant asserts and proves each of the following:
A. that the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
B. the Respondent has no rights or legitimate interests in respect of the Domain Name; and
C. the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant claimed that the Domain Name is confusingly similar to the trade name and company name of the Complainant, as well as to the registered trademarks which Complainant owns and which are listed in paragraph 4 above.
As paragraph 4(a)(i) of the Policy requires a Domain Name to be identical or confusingly similar to a trademark or a service mark in which the Complainant has rights, the Complainant did not successfully prove the first element of paragraph 4(a) of the Policy insofar as it relied on its trade name and company name, which appear not to be registered trademarks or service marks and do therefore not give rights under the Policy (e.g. Enmersan Granit Mermer ve InЕџaat Taahhut Sanayi ve Ticaret A.S. v. Ibrahim Sahin,
WIPO Case No. D2004-0439 and Inter IKEA Systems B.V. v. InterikEA.com, INC.,
WIPO Case No. D2006-1379).
The Complainant is, however, owner of several German, International and Community trademark registrations for the word and device marks EURODATA. In order to establish if the Domain Name is confusingly similar to the Complainant`s trademarks paragraph 4(a)(i) of the Policy does not specify the territory of the trademark protection, nor the goods and services for which the trademarks are registered. The Panel agrees with the consensus view amongst panelist in UDRP cases that the requirement of paragraph 4(a)(i) of the Policy is met if the complainant owns a registered trademark, just as the Panel agrees more particularly with the Complainant that the fact that it does not have a registered trademark in the United States is irrelevant.
If the Panel should understand the Respondent`s argument that "eurodata" exists of the common English words "euro" and "data" which, in combination, is a widely used term so that the term "eurodata", and therefore the Complainant`s trademarks, lack distinctive nature, it rejects such argument for the reason that it is sufficient under the Policy that the Complainant, as it does in this case, can rely on at least one registered trademark. This is not different if the Respondent`s argument should be understood that other parties also use trademarks and signs existing of the term "eurodata".
For the purpose of assessing whether the Domain Name is identical or confusingly similar to the trademarks in which the Complainant has rights, the top level domain ".com" is disregarded, being a necessary element of domain names.
Consequently, comparing the Domain Name with the Complainant`s registered trademarks, the Panel finds that they are identical or confusingly similar.
B. Rights or Legitimate Interests
In order to satisfy the second element of paragraph 4(a) of the Policy the Complainant must provide prima facie evidence that the Respondent lacks rights or legitimate interests in the Domain Name. The Panel agrees with the panel in Belupo d.d. v. WACHEM d.o.o.,
WIPO Case No. D2004-0110, which decided that, "While the overall burden of proof is on Complainant, the element of possible rights or legitimate interests of Respondent in the disputed domain name involves Complainant proving matters, which are peculiarly within the knowledge of Respondent. It involves the Complain[an]t in the often impossible task of proving the negative. This should (вЂ¦) be approached as follows: Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, Respondent has no rights to the name of which he is aware, he has not given any permission to Respondent). Unless the allegation is manifestly misconceived, Respondent has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4(c) of the Policy."
In this case, the Panel is satisfied that the Complainant provided sufficient information in support of his burden to prove the second element of paragraph 4(a) of the Policy.
The Respondent did not show any of the circumstances mentioned in paragraph 4(c) of the Policy, but rather claimed that it is not illegal to offer a domain name for sale or to connect the Domain Name to a commercial parking site. As such these arguments may be correct, but do not create a right for the Respondent in the Domain Name, nor do they explain why the Respondent would have a legitimate interest in the Domain Name as a result thereof. Similarly, the Respondent`s assertion that the words "euro" and "data" are common words in English and the combination "eurodata" being widely used and hardly distinctive does not per se create a right or legitimate interest of the Respondent either.
The Complainant has therefore successfully proved the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy the Complainant is required to show that the Respondent registered and used the Domain Name in bad faith.
In this respect, the Complainant provided different arguments and referred to several earlier cases which were decided under the Policy, thereby seeking to show Respondent`s bad faith pursuant to paragraph 4(b)(i), (ii) and (iv) of the Policy. In essence, the Complainant must show that the Respondent`s registration of the Domain Name and the use thereof has the intention to profit from or harm Complainant`s trademarks. The Complainant has not succeeded in proving such intention for the following reasons.
It is not disputed that the Respondent, after it acquired the Domain Name, offered the Domain Name for sale via a third party website. This would constitute registration and use in bad faith if such offer was directly aimed at the Complainant or its competitors, and the asking price exceeded or was likely to exceed the out-of-pocket expenses of the Respondent. Parties agree that the offer to sell the Domain Name was, however, not made to the Complainant. The Panel considers the fact that Complainant`s subsidiary Infoserve made an offer of ultimately USD 1,050 (that was not accepted by the Respondent) non-dispositive, noting that the offer was made on Infoserve`s initiative (not the Respondent`s), and it was seemingly lower than the not-disputed out-of-pocket costs of approximately USD 2,200 for which the Respondent is said to have acquired the Domain Name.
The Panel appreciates that offering a domain name for sale to the general public may in some cases constitute proof of bad faith, but generally only if the Complaint shows some form of additional "wrongdoing" or mala fide intent on the part of Respondent, such as knowledge of the trademarks of the Complainant, or evidence of the Respondent habitually selling domain names which incorporate third parties` trademarks. The Respondent does not appear to have had findings of abusive registration practices made against it in previous WIPO UDRP decisions. The Complainant argued that the Respondent should have known of the Complainant`s trademarks, but failed to show how exactly the Respondent should have known, in view of the Respondent`s claim that the term "eurodata" is not very distinctive, fanciful or arbitrary as such, is widely used by many others than Complainant and that the Respondent is unfamiliar with the Complainant and its trademarks. Although the Panel accepts that the Complainant is a significant player in its field, and its business - given its annual turnover - is probably better known than the business of the Respondent under the Domain Name, this does not in this case lead inexorably to the conclusion that the Respondent was or should have been aware of the Complainant in particular, or that Respondent was necessarily acting in bad faith when it registered the Domain Name. The record in this case is insufficient to enable the Panel to each such conclusion. Further, the Panel did not find any dispositive support for the Complainant`s assertions in the panel decisions which were mentioned by the Complainant.
The Panel finds that the fact that the Domain Name is presently connected to a commercial parking site and offers links to advertisements for car parts is also not of itself sufficient proof of bad faith in this particular case, as they do not appear to be directly competitive with or trading off the reputation of the Complainant`s trademark, and the requirement for use and registration under the Policy is in any event conjunctive.
The Complaint has therefore failed to prove the third element of paragraph 4(a) of the Policy.
Reverse Domain Name Hijacking
To establish reverse domain name hijacking, the Respondent must show knowledge on the part of the Complainant of the Respondent`s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the face of such knowledge (e.g. Sydney Opera House Trust v. Trilynx Pty. Limited,
WIPO Case No. D2000-1224 and Plan Express Inc. v. Plan Express,
WIPO Case No. D2000-0565).
The Respondent has not succeeded in showing either element and the Panel does therefore not find that the Complainant attempted to obtain the Domain Name in bad faith through reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
Dated: May 5, 2009