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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

s. Oliver Bernd Freier GmbH & Co. KG v. Su Chin Tsai

Case No. D2009-1202

1. The Parties

The Complainant is s. Oliver Bernd Freier GmbH & Co. KG of Rottendorf, Germany, represented by Weber & Sauberschwarz of Germany.

The Respondent is Su Chin Tsai of Lisle, Illinois, United States of America.

2. The Domain Name and Registrar

The disputed domain name <comma-shop.com> is registered with 1&1 Internet AG.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 10, 2009. On September 11, 2009, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On September 14, 2009, 1&1 Internet AG 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 September 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2009. The Response was filed with the Center on October 13, 2009.

The Center appointed David J.A. Cairns as the sole panelist in this matter on October 21, 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.

4. Factual Background

The Complainant is an international fashion company. It owns various registered trademarks for figurative trademarks consisting of the word "comma" and different figurative representations of the comma punctuation mark. The Complainant`s trademark registrations include German trademarks (such as registration Nº 1187654), international registrations pursuant to the Madrid system (such as registration Nº 611635; filing date September 21, 1993) and Community Trademark registration Nº 004492815 (date of registration, July 3, 2006).

The Complainant operates websites for the promotion of its fashion items at the domain names <comma-fashion.com> and <comma-fashion.de>.

The disputed domain name was registered on June 23, 2007. The Panel entered the disputed domain name on his Internet browser on October 23, 2009, and received an error message and was unable to access any website.

5. Parties` Contentions

A. The Complainant

The Complainant states that the disputed domain name is identical or confusingly similar to its registered trademarks.

The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not associated with the Complainant, nor is authorised to use the Complainant`s marks, and is not commonly known by the name "comma". Further, the Complainant alleges that the Respondent has used the disputed domain name as a linking site, with links to other shopping websites. Whether the Complainant uses the disputed domain name to exploit the good reputation of the Complainant`s trademarks or to block the domain name in order to offer it later to the trademark owner, it only has illegitimate interests in the disputed domain name.

The Complainant also states that the disputed domain name was registered and is being used in bad faith. The word combination "comma-shop" does not have a specific meaning and the only rational explanation is that the Respondent registered the disputed domain name because of its similarity with the Complainant`s well known trademarks. The Complainant alleges that the Respondent intended to exploit the reputation of the marks in order to generate Internet traffic to other shopping domains.

The Complainant requests that the disputed domain name be transferred to the Complainant.

B. The Respondent

The Respondent made the following statements in response to the statements and allegations made in the Complaint:

"The Respondent owns domain name www.comma-shop.com is easy to identify the difference with Complainant`s domain name www.comma-fashion.com…. The Respondent denies the www.comma-shop.com was used as a linking side. The Respondent has no intention to generate any internet traffic from Complainant`s web www.comma-fashion.com. The fact, it never happened also. Complainant points ‘comma-shop`.com does not have a specific meaning. Please explain ‘comma-shop`.de with the specific meaning…. The disputed domain name is ".com" not ".de". The Complainant has no rights to claim under the domain name rules which is on ‘first come first serve basis.` There is a Korean website ‘commashop.com` which is a fashion clothing retail website. The fact reinforce our argument that ‘comma` is not a international brand and has no rights to the domain name." [sic]

The Respondent requests that the Panel deny the remedies requested by the Complainant.

6. Discussion and Findings

The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.

Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant owns the German and international registrations for the COMMA trademarks referred to above.

The disputed domain name is not identical with the COMMA trademarks. The disputed domain name differs in two respects. Firstly, the trademarks include a design element of the punctuation mark of a comma, in addition to the word "comma". Secondly, the disputed domain name has the suffix "-shop" which is not part of the trademark registrations.

The significance of the design elements of a registered trademark for the purposes of the comparison required under the first element of the Policy was considered in Mondial Assistance S.A.S. v. Compana LLC, WIPO Case No. D2007-0965, where the Panel stated:

"There is the question of the significance of the design elements of a registered trademark for the purposes of determining confusing similarity under the Policy. As a matter of logic, the design element is a part of the ‘trademark or service mark in which the complainant has rights` for the purposes of paragraph 4(a) of the Policy, and therefore should be considered for the purposes of determining ‘confusing similarity`. However, there is no doubt that the practice of panels has often been to concentrate only on the word element of the trademark for the purposes of comparison with the disputed domain name."

In the present case the word "comma" is the predominant feature of the registrations. The design element complements the word "comma" by being a visual representation of this word. Accordingly, it is appropriate to concentrate on the word element in this case.

The similarity of a trademark and a domain name depends on many factors, including "the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin" (See Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870).

In the present case, the disputed domain name is confusingly similar to the COMMA trademarks for the following reasons: (i) the disputed domain name fully incorporates the word element of the COMMA trademarks; (ii) "shop" is an ordinary descriptive word; (iii) "shop" describes a place of sale, and in the disputed domain name suggests a place where COMMA products are sold, and as such confirms rather than detracts from the function of the trademarks as indications of origin; and (iv) furthermore, Internet users will associate the disputed domain name with the Complainant`s trademarks, and assume that the Respondent`s website offers COMMA products for sale.

On this basis, the addition of the suffix "-shop" does not therefore avoid a confusing similarity between the COMMA trademarks and the disputed domain name, and so the first element of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent owns or has contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondent is not authorised or licensed by the Complainant to use the COMMA trademarks or to register and use the disputed domain name; (iii) the Respondent in its Response has not suggested that it is commonly known by the name "comma" or "comma-shop", and there is no other evidence to suggest the circumstances referred to in paragraph 4(c)(ii) of the Policy exist in the present case; (iv) the Respondent has not submitted any evidence of its proposed use of the disputed domain name, and the Panel concludes that the circumstances described in paragraph 4(c)(i) and (iii) of the Policy do not exist in the present case.

The Respondent asserts that rights in the disputed domain name are on a "first come first serve[d] basis". It also asserts that there is a Korean website at "www.commashop.com", and that the Complainant`s trademarks do not constitute an international brand. These assertions do not establish any rights or legitimate interests within the meaning of the Policy. Domain names are available on a first come first served basis only subject to submission to a mandatory administrative proceeding where another party (such as the Complainant) asserts the domain name infringes its rights under the Policy. Further, the Respondent was not the "first come" to the distinctive element of the disputed domain name as the Complainant`s rights to the COMMA trademarks predate the Respondent`s registration.

Secondly, the fact that another entity may be using a similar domain name in the Republic of Korea does not give the Respondent any rights or legitimate interests in the disputed domain name.

Finally, the extent or absence of an international reputation of the Complainant`s trademarks does not of itself create any rights or legitimate interests of the Respondent in the disputed domain name.

For these reasons, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel considers that the Respondent registered the disputed domain in bad faith for the following reasons: (i) the Respondent does not deny that it knew of the Complainant`s COMMA trademarks at the time of registration (but rather asserts the reasons that, in the Respondent`s opinion, the Complainant had no right to the disputed domain name) and the Panel concludes from the record that the Respondent knew of the Complainant`s COMMA trademarks and the reputation of its brand at the time of registration; (ii) the Respondent`s linkage of the words "comma" and "-shop" in a domain name was deliberate and intended to suggest a site that offered the Complainant`s products for sale, or links to sites where the Complainant`s products were offered for sale; (iii) the Respondent knew that Internet users would mistakenly believe that this web address provided online access to the Complainant`s products; and (iv) the Respondent has not provided any bona fide explanation for the registration of this domain name.

Paragraph 4(a)(iii) of the Policy requires that the disputed domain name was not only registered in bad faith, but also "is being used" in bad faith.

The Complainant asserts that the disputed domain name has been used as a linking site to other shopping websites (with the implication that the Respondent was using the domain name for commercial gain; for example, through sponsored links). The Respondent denies that the website has ever been used in this way. The Complainant has the burden of proving the Respondent`s bad faith use of the disputed domain name. In the event of links to other websites, the Complainant can provide cogent evidence of the alleged links by copying the relevant webpages and annexing them to the Complaint. The Complainant has not taken this simple step in this case, and in the face of the Respondent`s explicit denial of such use, the Panel concludes that there is no evidence of any links from a website hosted at the disputed domain name. Further, the Panel is not satisfied on the present record that there has ever been a website hosted at the disputed domain name.

For these reasons the Panel must proceed on the basis that there has never been any webpage associated with the disputed domain name since its registration in June 2007. Accordingly, this case is an example of passive holding. Passive holding is not itself evidence of either good or bad faith, but must be interpreted in the context of all of the circumstances of the case (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, among others).

In the present case the Panel is satisfied that the Respondent is using the disputed domain name in bad faith because: (i) the Respondent continues to hold the disputed domain name so as to be in a position to take advantage of the commercial reputation of the Complainant`s trademarks (see Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037) and (ii) it is not possible to conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent that would not in all likelihood amount to bad faith use within the meaning of the Policy because it would involve the intentional deception of Internet users (see Ladbroke Group PL[C] v. Sonoma International LDC, WIPO Case No. D2002-0131).

For these reasons, the Panel finds that the Respondent has registered and is using the disputed domain name 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 <comma-shop.com> be transferred to the Complainant.

David J.A. Cairns
Sole Panelist

Dated: November 4, 2009