WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Fujitsu Siemens Computers GmbH v. RareNames, WebReg

Case No. D2008-0828

 

1. The Parties

The Complainant is Fujitsu Siemens Computers GmbH, of Munich, Germany, represented by Epping Hermann Fischer, Patentanwaltsgesellschaft, Germany.

The Respondent is RareNames, WebReg, of Wisconsin, Washington, DC, United States of America (“U.S.”), internally represented.

 

2. The Domain Name and Registrar

The disputed domain name <amilo.com> is registered with TierraNet d/b/a DomainDiscover.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2008. On May 29, 2008, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the domain name at issue. On May 29, 2008, TierraNet d/b/a DomainDiscover 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 on June 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2008. The Response was filed with the Center on June 24, 2008.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 22, 2008. 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 the owner of at least the following registered trademarks:

(a) German Trademark Registration No. 30115442 for AMILO;

(b) International Trademark Registration No. 769886 for AMILO;

(c) Community Trademark No. 002120418 for AMILO; and

(d) U.S. Trademark No. 3058639 for AMILO.

These trademarks were registered or applied for at various dates in 2001 and 2002. The Complainant also states that the trademark AMILO has been used in respect of computer notebooks since 2001. While exemplifications of that use are provided, no evidence of sales quantities or advertising expenditure has been provided (as to which see the cases referred to at question 1.7 in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).

The Respondent registers and offers for sale domain names. It registered the domain name <amilo.com> on June 4, 2003. When the Complaint was filed, the domain name resolved to a ‘parking’ type website with keywords hyperlinked to various sponsored links.

The Respondent also advertised the domain name for sale for USD 50,000.

 

5. Discussion and Findings

As noted above, the Complainant has clearly established ownership of registered trademarks for AMILO.

Apart from the addition of the “.com” gTLD, the domain name is identical to the Complainant’s proved trademarks.

The name “amilo” is not the Respondent’s name, nor is it derived from the Respondent’s name. It is not so far as the Panel is aware a common, plain or otherwise descriptive term. The Complainant has not licensed it to the Respondent or otherwise authorized the Respondent to use the domain name. The Respondent does not seek to rebut the inference that it has no rights or legitimate interests in the domain name.

Rather, while denying that it has registered and used the domain name in bad faith, the Respondent consents to the transfer of the domain name to the Complainant.

The Panel notes that:

(1) the Response submitted by the Respondent was prepared by its Vice President and General Counsel;

(2) numerous panels have accepted that an order for transfer is appropriate when consented to by a Respondent, either immediately or on a showing of a prima facie case by the Complainant in such circumstances. See e.g. Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames, WebReg, WIPO Case No. D2006-1336; Amgen Inc. v. Texas International Property Associates, WIPO Case No. D2007-0155; Levantur, S.A. v. RareNames, WebReg, WIPO Case No. D2007-0857; Instituto del Fondo Nacional de la Vivienda para los Trabajadores v. Whois Privacy Protection Service Inc., Demand Domains, Inc., WIPO Case No. D2007-0917; Fry’s Electronics Inc. v. Texas International Property Associates, WIPO Case No. D2007-0343; and, Tom Stoppard, Tom Stoppard Limited v. Texas International Property Associates, WIPO Case No. D2007-1404; and

(3) the Complainant has clearly established that the domain name is identical to the Complainant’s proved registered trademarks and, at least, a prima facie case under the other two requirements of paragraph 4(a) of the Policy.

 

6. 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 <amilo.com> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist

Dated: August 5, 2008