WIPO Domain Name Decision: D2004-0781

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SAZ Marketing AG v. James `SAZ` van Johns

Case No. D2004-0781

1. The Parties

The Complainant is SAZ Marketing AG of St. Gallen, Switzerland, represented by Eckner Roloff Nitschke & Kollegen of Werder, Germany.

The Respondent is James `SAZ` van Johns of Turtle Creek, Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name <saz.com> is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2004. On September 29, 2004, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On September 29, 2004, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. 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 October 7, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2004.

The Center appointed Anders Janson as the sole panelist in this matter on November 16, 2004. 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, Saz Marketing AG, is a company registered under the laws of Switzerland. The principal place of business is Switzerland. The company is part of a group of approximately 25 companies in 13 countries in the world, such as, inter alia, SAZ Marketing AG of Switzerland, SAZ Marketing GmbH, SAZ Smart.net GmbH, SAZ Telecare GmbH and SAZ Dialog GmbH of Germany, SAZ Dialog Ltd. of London, United Kingdom and SAZ Marketing LLC of the United States. The Complainant ranks among the market leaders in direct marketing systems, including creating marketing concepts, developing database systems and integrated systems solutions for commercial businesses.

The Complainant is the owner of the trademark SAZ and a figure mark, which includes the word SAZ, as well as trademark applications such as, inter alia:

- Application No. 76,465,398, in the United States, filed on October 31, 2002, for the classes 35, 36 and 42;

- Registration No. 301 45 169, in Germany, registered on May 16, 2002, for the classes 35, 36 and 42;

- Registration No. 002330868, in the European Union, registered on January 30, 2003, for the classes 35 and 42;

- Registration No. 795 811, under the Madrid Protocol, registered on October 31, 2002, which includes registration in Austria, Belgium, Luxembourg, Netherlands, Switzerland, Czech Republic, Estonia, France, Great Britain, Hungary, Italy, Poland and Sweden for the classes 35, 36 and 42;

- Application Nos. 17251/2002 for class 35; 17252/2002 for class 36; and 17253/2002 for class 42, in Hong Kong, S.A.R. of the People’s Republic of China, filed on November 4, 2002;

- Application No. 4-2002 0009367, for the figure mark in the Philippines, filed on October 29, 2002.

The panel finds it established that SAZ is a well-recognized trademark.

The Respondent’s stated name is James “SAZ” van Johns. The Complainant has asserted that the Respondent is identical with James M. van Johns, Damian Macafee and the owner of Infa Dot Net Web Service, which is a domain name registration service and has been the subject of numerous cases before the WIPO Arbitration and Mediation Centre (see WIPO Case No. D2001-0908, Transcontinental Media Inc v. Infa Dot Net Web Services/Mr. James M. Van Johns and WIPO Case No. D2004-0027, Microsoft Corporation v. Damian Macafee).

The Respondent is the owner of Infa Dot Net Web Service. The business’ domain name is <infa.net>, which is registered to Damian Macafee. Damian Macafee is the administrative and technical contact for QTK Internet. The Whois printout for the disputed domain name states that the name server is DXO.QTK.COM. QTK has the same address as the Respondent. QTK Internet is the administrative and technical contact for the disputed domain name.

The Panel notes that the evidence produced proves that the Respondent is identical to, or at the very least affiliated with Damian Macafee, QTK Internet, James M. van Johns and Infa Dot Net Web Service.

The Complainant has further asserted, and produced evidence that the Respondent was the registered owner of the disputed domain name in 2003. The Respondent was contacted by a representative of the Complainant, and the Respondent offered to sell the domain name without any price being given. The Complainant, on the phone with a person that identified himself as the Respondent, offered to purchase the domain name for USD 3000, which was not accepted. The disputed domain name was thereafter transferred to Damian Macafee. The domain name was, at that point, linked to a website offering services in connection with computer programming, Internet services and advertisements.

A request that Respondent transfer the domain name to the Complainant no later than June 14, 2004, was made by the Complainant.

The domain name was later transferred back to James “SAZ” van Johns. The website to which the domain name is linked does not have any content.

The Respondent is in default, and accordingly, has not challenged the contentions of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights;

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

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

- The domain name <saz.com> should be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

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

(i) that the disputed 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) 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.

A. Identical or Confusingly Similar

The domain name at issue is <saz.com>. Complainant is the holder of a large number of registered trademarks and trade mark applications consisting of or containing the word “SAZ.”

The Complainant has asserted that the disputed domain name is identical to the Complainant’s trade mark which contains a symbol followed by the word “SAZ.” The logotype does not give its own significant impression. A likelihood of confusion does exist.

The Panel finds it established that the trademark SAZ is well known and that the Complainant does own the trademark. The Panel further notes that the disputed domain name does not, in itself, have any obvious meaning, and that the spelling of the Complainant’s trademark, and the word “SAZ” contained therein, is identical to the disputed domain name.

In conclusion, the Panel finds that the Complainant has provided statements to support the supposition that the disputed domain name and the trademark of the Complainant are confusingly similar.

The Respondent has not contested this supposition.

The domain name must, therefore, be considered confusingly similar to the trademark SAZ. The panel holds that the Complainant has established element (i) of the Policy’s Paragraph 4(a).

B. Rights or Legitimate Interests

The Complainant has asserted that the Respondent is not and has never been commonly known under the disputed domain name. Adding the nickname “SAZ” to the name of the Respondent does not prove any right or legitimate interest in respect of the disputed domain name. On the contrary, the Respondent is well known without the added “SAZ.” There is no evidence of the disputed domain name being used, or demonstrable preparations to use the domain name in any way pertaining to the added nickname “SAZ.” A non-commercial or fair use of the domain name cannot be found.

The Panel finds it established that the disputed domain name resolves to a web site, which is not in use.

The Respondent has not filed a Response in accordance with the Rules, Paragraph 5.

There is no apparent connection between the Respondent and the disputed domain name, and no obvious legitimate connection between the disputed domain name and the content of the site to which it links. There is no evidence of the Respondent’s use of, or demonstrable preparations to use the domain name with a bona fide offering of goods or services. The Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name.

Under these circumstances, the supported assertion from the Complainant that the Respondent has no rights or legitimate interests is enough to shift the burden of proof to the Respondent for him to demonstrate such a right or a legitimate interest. The Respondent has not presented any evidence of rights or legitimate interests in the disputed domain name and has no obvious connection to it. The adding of a nickname to the registrant’s name does not, in itself, constitute a legitimate interest.

The Panel, therefore, holds that the Complainant has established element (ii) of the Policy’s Paragraph 4(a).

C. Registered and Used in Bad Faith

Finally, the Panel has to consider the question of the disputed domain name having been registered and used in “bad faith.”

The Complainant asserts that the Respondent has not been commonly known by the name “SAZ.” The Respondent is commonly known by a variety of names, or is affiliated with a number of people and companies, some of which have registered more than 360 domain names. The Panel finds it established that the Respondent is in the business of trading domain names. The disputed domain name has been offered to the Complainant without an indication of price, and the Respondent did not accept an offer from the Complainant of USD 3000. The domain name was transferred between the Respondent and his aliases and/or affiliates when the registrant received a cease and desist letter. Not until then was the nickname “SAZ” added to the Respondent’s otherwise well known name.

The Respondent has not presented any reasons, evidence or arguments of a legitimate interest in using the disputed domain name. The web site to which the domain name resolves is not in use. The Panel finds that given the extent of the Respondent’s registrations in his own name, and/or in his affiliates’ or aliases’ names, his actions in this matter as proven by the Complainant, inter alia, transferring the domain name, adding a nickname to his name in what must be construed as an effort to legitimize the use of the disputed domain name, the offer to sell the domain name and, finally, his previous history of trading in domain names are acts of bad faith.

Considering all of the above, the Panel concludes that the Complainant has proven that the Respondent was acting in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

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

Anders Janson
Sole Panelist

Dated: November 26, 2004