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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ENX (European Network Exchange) Association v. Ahven Tolunay
Case No. D2009-1218
1. The Parties
The Complainant is ENX (European Network Exchange) Association of Frankfurt, Germany, represented by Taylor Wessing, Germany.
The Respondent is Ahven Tolunay of Frankfurt, Germany.
2. The Domain Name and Registrar
The disputed domain name <enx.com> is registered with Moniker Online Services, LLC ("Disputed Domain Name").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 11, 2009. On September 14, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On Tuesday, September 15, Moniker Online Services, 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" 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 Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on Thursday, October 15, 2009.
The Center appointed Alistair Payne 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 a legally constituted association of manufacturers, suppliers and associations from the European automotive industry and operates and supervises the ENX network which enables the secure online transfer of, in particular, critical development, purchasing and production control data. The Complainant first started operating in 2000 and as at August 2008 more than 800 companies in over 30 countries have used this network.
The Complainant owns various trade mark registrations for ENX including for the word mark ENX being Community Trade Mark 001039429, a device mark incorporating ENX being Community Trade Mark registration 005483094, United States of America trade mark number 3348860 for ENX and a device mark incorporating ENX being United States trade mark number 3362763. The Complainant also owns various domain names incorporating the mark ENX including <enx.de>, <enx.info>, <enx.eu> and <enxo.com> and operates websites at these domain names.
The Respondent is an individual with a contact address in Frankfurt am Main.
5. Parties` Contentions
The Complainant says that not only does it have registered trade marks for ENX, but its trade marks have become well known as a consequence of its extensive use and points to various examples of third party use in this regard. It says that the Disputed Domain Name incorporates the ENX mark in its entirety and is identical to the Complainant`s ENX trade marks.
The Complainant says that the Respondent does not own any trade mark rights in the ENX mark, there is no relationship between the Complainant and the Respondent and the Respondent is not a licensee of the Complainant and nor has it obtained authorization to use the Complainant`s mark. It is not aware of the Respondent`s use of or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods.
Further, the Complainant says that its use of the ENX mark predates the Respondent`s acquisition of the Disputed Domain Name (between November 4, 2008 and November 14, 2008) and that the Respondent must have been aware of the Complainant`s trade mark and business, in particular because the Respondent`s contact address is just 500 meters away from the Complainant`s offices in Frankfurt City Centre.
The Complainant submits that the website to which the Disputed Domain Name resolves is contrived and that the Respondent has no apparent connection with it and is not even mentioned on the website and there appears to be no connection between the Respondent and the services allegedly offered at the website (namely, providing and transferring business information and the services of a trade agency).
The Respondent also has a range of domain names referring to sports, media, cars, games and specific goods which do not resolve to websites other than the website to which the Disputed Domain Name resolves and therefore it seems apparent that the Respondent`s business is to acquire domain names for resale purposes.
The website to which the Disputed Domain Name and other domain names resolve has no proper address, other than an e-mail address, or appropriate corporate details of incorporation, registration and structure. While the website suggests that the Respondent has its headquarters in San Jose, the contact details for the Disputed Domain Name indicate that the Respondent is based in Frankfurt am Main. The Respondent notes that the e-mail address is a "googlemail.com" address which is used in the UK and Germany while "gmail" is used for the same service outside these countries.
The Complainant submits that the content on the website most probably originates from the website of the former owner of the Disputed Domain Name, ENX, Inc. which was based in California but ceased business several years ago according to the Complainant`s research. It appears that since ENX, Inc.`s ownership of the Disputed Domain Name, it was transferred between several owners, none of whom had any legitimate interest in the Disputed Domain Name.
The Complainant submits that the Disputed Domain Name has been acquired and is used in bad faith in terms of paragraph 4(a)(iii) of the Policy. The Complainant says that the Respondent`s conduct fulfills the requirements of paragraph (4)(b)(ii) of the Policy, which according to the Complainant has its requirements fulfilled where a person using a domain name although aware of opposing rights, impedes the use of the domain name by the owner of the rights and prevents a legitimate use of the domain name for a long period of time (Ferrari S.p.A v. Berthold Buehler,
WIPO Case No. D2003-0981).
The Complainant says that the Respondent was well aware of the Complainant`s mark and business, both because the Complainant is well known and because the Respondent`s address is only some 500 metres away from the Complainant`s offices in Frankfurt am Main. Further the Respondent acquired the Disputed Domain Name more than three years after the registration of the Complainant`s United States marks and under United States legal principles had constructive notice of those marks. Therefore the Respondent has not chosen the Disputed Domain Name by coincidence but intentionally in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name.
As submitted earlier, the Respondent does not and has no intention of using the Disputed Domain Name for a bona fide offering of goods or services and his clear pattern of conduct is only reinforced by his use of domain names such as <ingameside.com> which is very similar to the "ingame trade mark of the well known German online gambling provider.
Additional indicia of bad faith include the Respondent`s attempt to hide its true identity. In particular the Respondent has provided false contact details in breach of its obligations under its registration agreement. The requisite German authorities have confirmed that the Respondent is not resident or domiciled at his stated address which is in fact the address of the Turkish Consulate General in Frankfurt. Enquiries made by the Complainant with the Consulate confirmed that the Respondent does not operate from that address and that he is not known to Consulate officials. It appears that the Respondent has indicated alternative addresses for many of his other domain name registrations and checks with the German authorities indicate that he is also not officially registered as being domiciled at any of those addresses as required under German law. In addition the telephone numbers provided with the domain names do not appear to exist. In addition there is no entry for "Г„hven Tolunay" in the German telephone directory and accordingly it may very well be that this name is false and contrived.
The Respondent did not reply to the Complainant`s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has demonstrated that it has registered trade mark rights in ENX and that the Complainant`s mark is identical to the Disputed Domain Name. It is well established that the domain level indicator, in this case the suffix ".com" is not relevant for this comparison. The Panel does not need to and makes no finding in relation to whether the Complainant`s mark is well known or not as there is insufficient evidence before the Panel to make this finding. Suffice it to say that the Panel accepts that the mark appears to enjoy a significant level of repute.
B. Rights or Legitimate Interests
Under the Policy the Complainant is required to make out at least a prima facie case that the Respondent has no legitimate right or interest in the Disputed Domain Name and it is then for the Respondent to rebut this case.
The Complainant has submitted that it has not authorised or permitted the Respondent`s use of the Disputed Domain Name and that it is not aware of the Respondent being commonly known by the Disputed Domain Name or having made demonstrable preparations to use it in association with a bona fide offering of goods or services.
The Panel accepts that if the website to which the Disputed Domain Name resolves was legitimate it would likely include a corporate address and background details. Further there does appear to be no connection with the Respondent on the website and it is notable that the other domain names owned by the Respondent appear also to resolve to this website. It may well be as the Complainant suggests that the website material came from the website of the original owner of the Disputed Domain Name however there is nothing to confirm this view. It would seem odd however that any entity suggesting that it has offices in various locations and a key operating office in the United States operates under a googlemail.com address. None of this is consistent with the Respondent offering bona fide services from the website or having legitimate rights or interests in the Disputed Domain Name.
On balance and also in view of the findings expressed under paragraph C below, the Panel considers that the Complainant has made out a prima facie case as required under this element of the Policy that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted this case and there is no evidence before the Panel to support rebuttal and accordingly the Panel finds that the Complainant has established its case in relation to this element of the Policy.
C. Registered and Used in Bad Faith
The Complainant submits that the requirements of paragraph (4)(b)(ii) of the Policy are fulfilled and that the Disputed Domain Name has been registered in order to prevent the Complainant from reflecting its mark in a corresponding domain name and that the Respondent has been engaged in a pattern of such conduct. It also submits that that there are a range of other factors which are indicative of registration and/or use in bad faith including the false address information provided by the Respondent, the likelihood that it has provided false identity information, the apparent lack of bona fides of the website to which the Disputed Domain Name resolves and the lack of evidence that any bona fide goods or services are provided from this website.
The Complainant`s submission in relation to paragraph (4)(b)(ii) of the Policy relies on the fact that the Respondent was aware of the Complainant`s trade mark rights either because of its trade mark being well known, as a consequence of a doctrine of constructive notice or possibly as a consequence of the proximity of the Complainant`s offices to the Respondent`s stated address.
As noted above the Panel has declined to make a finding based on the evidence before it that the Complainant`s trade mark is "well known" in the Paris Convention sense, although accepts that it has obviously developed a significant degree of repute.
The Panel also does not accept the Complainant`s submission that a doctrine of constructive notice applies in circumstances where there is a United States trade mark registration so as to render the Respondent necessarily aware of the Complainant`s mark. As this Panel has underlined previously, in its view it is inappropriate to import doctrines of national law into interpretation of the Policy. Even those who do not subscribe to this view would most likely agree that where neither of the parties are based in the United States and the dispute would most likely be litigated in another jurisdiction (in this case Germany) there is simply no justification for importing a United States trade mark law doctrine.
This leaves the possibility that the Respondent who acquired the Disputed Domain Name long after the Complainant`s trade mark registration was generally aware of the Complainant`s trade mark as a consequence of its general repute, or became aware of it as a result of what seems like more than a co-incidental proximity of the Respondent`s stated address to the Complainant`s offices.
The Respondent does appear to have a variety of domain name registrations and quite possibly for re-sale purposes, which is not prima facie indicative of bad faith as in many cases but not all, these are not necessarily in the Panel`s view based on reputed trade marks and in some cases are descriptive or generic domain names. The Complainant suggests that at least one of these, namely <ingameside.com> is based on the INGAME trade mark. However the Panel is not persuaded that this on its own is adequate evidence of the Respondent`s pattern of conduct for the purposes of paragraph (4)(b)(ii) of the Policy.
The range of other factors identified by the Complainant are however in the Panel`s view indicative of registration and use in bad faith and are consistent with the factors identified in Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003.
The coincidence of factors including the proximity of the Respondent`s stated address to the Complainant`s offices, the apparent provision of false owner name information and false address information both for the Disputed Domain Name and it seems for other domain names owned by the Respondent, are all indicative that the Respondent acquired the Disputed Domain Name in bad faith. The Panel notes that the acquisition of a registration is considered equivalent to registration for this purpose (Societe Air France v. Vladimir Federov,
WIPO Case No. D2003-0639).
The inference of the Respondent`s registration in bad faith is only reinforced by the lack of bona fides of the website to which the Disputed Domain Name resolves, the lack of evidence of any goods or services provided by the Respondent and the substantial likelihood that the content of this website was created by the original owner of the Disputed Domain Name and has simply been replicated by the Respondent. When considered overall, the Panel finds that all these factors are indicative of the Disputed Domain Name also being used in bad faith consistent with the factors identified in the Nuclear Marshmallows case (supra) the Complainant`s trade mark is of some renown, there is no evidence of the Respondent using it in good faith, and the Respondent appears to have provided false address and name information in breach of the Registration Agreement.
Accordingly, the Panel finds that the Complainant has satisfied the 3rd element of the Policy.
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 <enx.com> be transferred to the Complainant.
Dated: October 28, 2009