WIPO Domain Name Decision: D2008-0810

The Complainant is CeWe Color AG & Co. OHG of Meerweg 30-32, 26133 Oldenburg, Germany, represented by Eisenführ, Speiser & Partner, Germany.

The Respondent is Shenbun Limited of PO Box 2340, General Post Office, Hong Kong, China, represented by John Berryhill, United States of America (“US”).

The disputed domain name, <cewe.net> (the “Domain Name”), is registered with Fabulous.com (the “Registrar”).

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2008. On May 23, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 26, 2008, the Registrar 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”), 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 May 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response June 17, 2008. The Response was filed with the Center on June 17, 2008.

The Center appointed Tony Willoughby, Thomas Hoeren and David E. Sorkin as panelists in this matter on July 2, 2008. The Panel finds that it was properly constituted. Each member of 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.

While the evidence which the Complainant has put before the Panel is sparse in the extreme as to the nature and extent of the Complainant’s business, the Panel accepts for the purpose of this administrative proceeding that the Complainant is a substantial German-based provider of photo processing services.

The Complainant is the registered proprietor of a number of trade mark registrations of marks comprising or including the word “cewe”, the earliest being a German word mark registration for “cewe color” dated March 29, 1979 (registered on February 25, 1980 for inter alia photo albums and photographic film processing. The first “cewe” (solus) word mark registration is a German national registration was applied for on August 19, 2005 and registered on December 16 the same year.

The Complainant has produced evidence to show that the Domain Name was first connected to a website in December 2003 and that on June 29, 2004 the website was a trafficz.com parking page featuring a wide variety of sponsored links, the predominant category being links to adult “girly” sites.

On November 15, 2007, the Domain Name connected to a Sedo parking site featuring (in the German language version) a mixture of links, some of them being links to the Complainant’s site or sites providing similar services and others being adult sites.

The Complainant contends that the word “cewe” is artificial and without any inherent meaning.

The Complainant points to its trade mark registrations and contends that the Domain Name is identical to its “cewe” word marks and confusingly similar to its “cewe color” word and device marks.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has not licensed the Respondent to use its trade mark and the Complainant contends that there are no other reasons why the Respondent could be said to have rights or legitimate interests in respect of the Domain Name. The Complainant notes that in November 2007 the Domain Name was linked to a site featuring links to competitors of the Complainant.

The Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant recognizes that “bad faith requires that the Respondent knew about the Complainant’s marks” and contends that the fact that the Sedo site to which the Domain Name was linked in November 2007 featured a link to the Complainant’s site demonstrates the requisite knowledge. The Complainant asserts that the fact that the Domain Name was listed for sale on the Sedo site is evidence of bad faith as is the fact that the Domain Name has been connected to a site featuring links to sites of the Complainant’s competitors.

The Respondent contends that the word “cewe” is a slang word in Bahasa Indonesia, an abbreviation of “cewek”, meaning a girl or young woman and produces evidence to support that contention.

The Respondent contends that any trade mark registrations of the Complainant post-registration of the Domain Name are to be ignored and therefore that the only trade marks of the Complainant to be considered are the “cewe color” marks. The Respondent contends that the Domain Name is not confusingly similar to the Complainant’s “cewe color” marks.

The Respondent contends that in using the Domain Name to link (directly or indirectly) to sites featuring pictures and films of attractive young girls is a perfectly legitimate usage of the Domain Name, given its meaning in the Bahasa Indonesia language. The Respondent produces evidence to show that the Respondent has registered a number of Bahasa Indonesia language words, many of them apt for use in relation to adult material.

The Respondent contends that the fact that Sedo “geo-targeted” the links displayed with the result that the German version featured links to the Complainant and/or its competitors was outside the Respondent’s knowledge. The Asian and US versions do not mention the Complainant and are, as the Respondent intended, directed to adult-orientated material.

The Respondent denies that the Domain Name was registered and is being used in bad faith. The Respondent states that it was unaware of the existence of the Complainant at the time of registration of the Domain Name and that from the outset its intention was to use the Domain Name as it has done, namely to connect to adult-orientated material.

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

The Domain Name comprises the Complainant’s word mark “cewe” and the generic domain suffix (which may be ignored when ascertaining identity and confusing similarity under the Policy).

The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights. The fact that the Complainant’s trade mark registrations of that word mark all post-date the registration of the Domain Name is of no consequence under this head of paragraph 4(a) of the Policy.

In fact, the Complainant is also the registered proprietor of trade mark registrations for the word mark “cewe color”, registrations which pre-date the registration of the Domain Name by several years. While the Respondent denies that in practice there is any real possibility of confusion between the Domain Name and the Complainant’s “cewe color” trade mark, it is now well-established that for the purposes of this head of the Policy the use to which a respondent puts a domain name may well not be a relevant consideration. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions deals with this issue as follows

“Consensus view: The content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity. This is because trademark holders often suffer from “initial interest confusion”, where a potential visitor does not immediately reach their site after typing in a confusingly similar domain name, and is then exposed to offensive or commercial content. The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.”

The Panel takes the view that to Internet users at large, most of whom will be wholly unfamiliar with the Bahasa Indonesia language, “cewe” will appear, as the Complainant asserts, an artificial word without any inherent meaning and therefore, potentially at least, particularly distinctive. On that basis the Panel finds that the Domain Name is confusingly similar to the Complainant’s “cewe color” trade mark.

C. Rights or Legitimate Interests

Given the Panel’s finding under the next head it is unnecessary for the Panel to address this topic.

D. Registered and Used in Bad Faith

In the Complaint the Complainant expressly states “bad faith requires that the Respondent knew about the Complainant’s marks”.

The Respondent denies any knowledge of the existence of the Complainant prior to registration of the Domain Name.

The Complainant’s case under this head is based on one understandable, but fundamental misunderstanding. Contrary to the Complainant’s genuinely held belief, it would appear from the Respondent’s submitted materials that the word “cewe” is not an artificial word without any inherent meaning, it is a slang word in the Bahasa Indonesia language meaning “girl or young woman”. Moreover, the Respondent has been able to demonstrate to the satisfaction of the Panel that it is the proprietor of other domain names featuring words in the Bahasa Indonesia language, being words associated with girls and young women and the registrations dating back to 2003 and 2004. Accordingly, it is not as if the Domain Name is an isolated example.

Moreover, the Complainant in its evidence (Exhibit 11) has demonstrated that back in June 2004 the Respondent was using the Domain Name to connect to a parking site, the predominant category of links on the site being “girly”, adult-orientated links apt for the word “cewe”.

Is there anything before the Panel to suggest that when registering the Domain Name, the Respondent is likely to have had the Complainant in mind? No. The evidence produced by the Complainant (apart from the evidence extracted from the Wayback machine and referred to in the previous paragraph) is all dated 2007 and 2008. The fact that the Domain Name may have been listed for sale by Sedo in May 2008 is of no assistance to the Complainant. The buying and selling of domain names is, of itself, a perfectly legitimate trading activity. There is nothing before the Panel to demonstrate that the Respondent registered the Domain Name with a view to profiting out of it on the back of the Complainant’s goodwill/trade marks.

The Respondent has satisfied the Panel that it registered the Domain Name in ignorance of the Complainant and that its purpose in registering the Domain Name was to use it to connect to a parking page featuring links apt for the Bahasa Indonesia meaning of the word, “cewe”.

The Panel notes that those responsible for the links on the November 2007 parking page geo-targeted those links, with the result that Internet users visiting the German version of the page in November 2007 were presented with links to the Complainant and its competitors. Although previous panels have recognized that a respondent cannot simply disclaim all responsibility for material posted at its domain name, the Panel in this case, is at least satisfied that that was not a result intended by the Respondent when it registered the Domain Name.

The Panel has examined carefully the Respondent’s denial as to any knowledge of the existence of the Complainant at time of registration of the Domain Name. As indicated in Section 4 above, the evidence put in by the Complainant as to the nature and scope of its business is sparse in the extreme, so it is not reasonable to infer that the Respondent must have known of the Complainant at that time. The Complainant’s trade mark registrations in existence then seem to have been exclusively European and primarily German, so the Panel assumes that the Complainant’s business was primarily domestic/European at that time and not therefore one of which an Asian based individual or company need necessarily have been aware.

The Panel is not satisfied that the Domain Name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Tony Willoughby
Presiding Panelist

Thomas Hoeren

Panelist

David E. Sorkin

Panelist

Dated: July 10, 2008