The Complainant is Compart AG, of Böblingen, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
The Respondent is Compart.com / Vertical Axis, Inc., of Christ Church, Barbados, West Indies, represented by ESQwire.com Law Firm, United States of America.
The disputed domain name <compart.com> (the “Domain Name”) is registered with Nameview Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2009. On April 8, 2009, the Center transmitted by email to Nameview, Inc. a request for registrar verification in connection with the Domain Name. After a reminder, on April 18, 2009, Nameview, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on April 20, 2009, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 23, 2009. The Center verified that the Complaint together with the amended 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 May 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was May 21, 2009. The Response was filed with the Center late in the evening on May 21, 2009 in the Respondent's counsel's time zone (which, because of the different time zone, was early in the morning on May 22, 2009 at the Center in Geneva).
In addition, due to technical difficulties, the Respondent's exhibits were not transmitted in the first email and Respondent tried, without success, to fax the documents that evening. The Center ultimately received the Respondent's exhibits in a follow up email on May 22, 2009. Because the Respondent made reasonable efforts to submit its Response and exhibits on time and did in fact submit the Response on time and the exhibits promptly thereafter, the Panel treats the Response as having been timely filed.
The Center appointed Ian Lowe, David H. Bernstein and David E. Sorkin as panelists in this matter on June 22, 2009. 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.
On June 4, 2009 and again on July 2, 2009, the Complainant filed supplemental filings. Paragraphs 10 and 12 of the Rules grant the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either Party. The Panel does not consider that there are exceptional reasons to justify the further filings. Accordingly, the Panel finds that the Supplemental Filings by the Complainant are not admissible.
The Complainant was founded in 1992 under the name Compart Systemhaus GmbH and is a software project and services company focusing on document output and management. It carries on business in 31 countries and has annual sales of over EUR 6 million.
The Complainant is the proprietor of a number of registered trademarks in respect of the stylized word COMPART and device in Germany and an International Registration designating the European Community, the United States, Turkey, Romania, Switzerland and Norway.
The Domain Name was registered by the Respondent on June 4, 2005 when it purchased it from its previous owner. At the time of the Complaint, the Domain Name resolved to a domain parking page comprising sponsored links.
The Complainant was founded in 1992 as Compart Systemhaus GmbH. It has since carried on business as a software project and service company. Since 2000 the company has focused on document output and management and has evolved into an international enterprise group comprising the parent company, Compart AG, and three regional subsidiaries in Germany, North America and Spain/Portugal.
The Complainant now does business in 31 countries in the world and has annual sales of over EUR 6 million. It has sold 80,000 software products since 1992 and annual sales of software products were EUR 3.05 million in 2008.
The Complainant has trade mark registrations for COMPART in numerous countries worldwide including:
1. German trade mark number 1086545 registered as of September 11, 1984 in classes 9, 16 and 42;
2. German trade mark number 30546409.4 registered as of August 3, 2005 in classes 9 and 42;
3. German trade mark number 30546410.8 registered as of August 3, 2005 in classes 9 and 42; and
4. International registration number 884004 registered as of February 3, 2006 with effect in Switzerland, Romania, Norway, Turkey, USA, and the European Community in classes 9 and 42.
The Domain Name was first registered in 1996 in the name of Comp Art Associates of Louisville, USA and was used in connection with graphic design, marketing and advertising services until 2001 when the company was renamed. The Domain Name was registered by Domain Deluxe in Hong Kong in 2001. On or after July 19, 2004 the public WhoIs data for the Domain Name was protected by a privacy shield.
The Respondent in this proceeding is Vertical Axis, Inc., a company known for trying to make money by registering third parties' trademarks as domain names. Vertical Axis, Inc. has been a respondent in at least 27 UDRP proceedings; in 12 of those proceedings, the panel found in favour of the Complainant and ordered transfer of the domain names at issue.
The Complainant further asserts that Vertical Axis, Inc. is a professional domainer and was the registered owner of thousands of domain names in the past. Respondent is now using a privacy shield for the vast majority of its domain names so there are now only a few WhoIs records actually referring to Respondent.
The Respondent is using the Domain Name in connection with a domain parking website offering links to third parties' products, including software products.
The Complainant offered to pay the Respondent US$7,000 for the transfer of the domain name in September 2008. That offer was rejected. In February 2009, the Complainant received further emails from DomainBrokers.com on behalf of the Respondent in which it offered to transfer the domain name for the sum of US$48,000.
The Domain Name is confusingly similar to the Complainant's marks since it consists entirely of the highly distinctive term COMPART. The Complainant relies on a number of decisions under the UDRP in which it was held that the fact that the marks relied upon by the Complainant contain additional design elements does not prevent a finding of confusing similarity under the Policy.
The Respondent has no right or legitimate interest in the Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trade marks and has not permitted the Respondent to apply for or use any domain name incorporating the trade mark COMPART.
The word COMPART is highly distinctive and obviously connected with the Complainant's trade marks and is not a word a trader would legitimately choose unless seeking to create an impression of an association with the Complainant.
There is no evidence of use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
The Respondent is using the Domain Name to divert Internet users to a website which contains information on various products, including “software”. The website available at the disputed Domain Name provides links to websites of third parties. The website at “www.compart.com” is used to earn PPC revenues for redirecting Internet users to third parties' websites and thus capitalizing on the Complainant's mark. Such use is not a bona fide use pursuant to paragraph 4(c)(i) of the Policy.
The Respondent is not making a legitimate non-commercial use of the Domain Name. There is no evidence that the Respondent trades under the domain name or the name COMPART or that it is commonly known by the Domain Name or the name COMPART.
The Respondent has registered and is using the Domain Name in bad faith. The Respondent does not conduct any legitimate commercial or non-commercial business activity. The Complainant's highly distinctive trade mark COMPART is long established and widely known. It is therefore inconceivable that the Respondent registered the Domain Name unaware of the Complainant's right in its trade mark COMPART.
Furthermore, the website available at the Domain Name contains links and ads referring to direct competitors of the Complainant, including <nextag.co.uk>, <software4students.co.uk>, <31touchdownloads.com>, <ascentive.com>.
It is inconceivable that the Respondent without knowledge of the Complainant would have placed content on the website which is related to software products, as the Domain Name has no inherent connection to such products.
Even if the Respondent did not specifically know of the Complainant or of its trade mark rights when it registered the disputed domain name, the finding of bad faith registration would be confirmed under the circumstances of this case by the Respondent's “willful blindness”. The Respondent is evidently a professional domainer. Previous panels have found that a sophisticated domainer who regularly registers domain names for use as PPC landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights (see, for example, Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006, <lanson.com>).
A summary of the submissions by the Respondent is as follows:
This is a case of reverse domain name hijacking. The Complainant only initiated these proceedings after it was unable to purchase the Domain Name through a series of negotiations culminating in an offer of US$20,000 which the Respondent did not accept. Contrary to the Complainant's suggestion that it merely offered $7,000 for the immediate transfer of the domain name, there were back-and-forth offers and counter-offers, with Complainant raising its offer to US$12,000 and again to US$20,000. These additional negotiations are not referenced in the Complaint.
The Respondent has a legitimate interest in the Domain Name because it incorporates the common dictionary word “compart,” which means “to separate and mark out in parts; to subdivide.”
The Respondent uses the Disputed Domain with the domain name parking service HitFarm.com, which displays pay-per-click (“PPC”) advertising links on the web site. Contrary to the suggestion in the Complaint, the Respondent has not used the Domain Name to display ads for software or other goods and services competitive with the Complainant's. A review of the archive.org print-outs annexed to the Complaint, as well as additional web page screenshots from DomainTools.com, supports Respondent's position that it has not used the Domain Name in connection with software but, rather, with respect to auto parts, related automobile products, and generic goods and services.
“Compart” is subject to substantial third party use on the Internet, as evidenced by the 899,000 third party Google results. In addition, there are a number of third party registered trademarks incorporating “compart” in both Germany and the U.S.
The Respondent has not engaged in bad faith registration or use. A common word domain name is only registered in bad faith where the purpose of the registration is to profit from a trademark. There is no such evidence here. The Respondent registered the Domain Name solely because it incorporates the common word “compart.” The Respondent had absolutely no knowledge of Complainant when it acquired the registration of the Domain Name on June 4, 2005, nor was there a basis for such knowledge. The Complainant did not file its trademark application for COMPART in the U.S. until February 3, 2006, which is eight months after the Respondent acquired the Domain Name. Although the Complainant had a German registered trademark when the Respondent registered the Domain Name, it is well-established that a respondent does not need to search the trademark registries in every country in the world.
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 interest 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 Respondent states in its Response that “Respondent takes no position with respect to the enforceability of Complainant's trademark in these proceedings”. The Panel understands this to mean that the Respondent does not dispute that the Domain Name is identical or confusingly similar to a Mark in which the Complainant has rights.
In any event there is no dispute that the Complainant is the registered proprietor of a number of trademarks comprising a Word and Device mark of which the most distinctive part is the word COMPART. Ignoring the suffix “.com” the Domain Name is identical to the word “compart”. Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a Mark in which the Complainant has rights.
The core of the Response to this Complaint is the assertion that COMPART is a common dictionary word in both the English and German languages meaning “to separate and mark out in parts; to subdivide.” The Respondent cites a definition from the “www.dictionary.com” website. It also suggests that COMPART is a German word having the same meaning but does not cite any reference from a German dictionary. Instead, it exhibits the result of a Google translation of the word COMPART from German into English producing the same word. See http://translate.google.com/translate_t?hl=en&ie=UTF-8&text=compart&sl=de&tl=en#.
The Panel is not persuaded by these assertions. First, “compart” does not appear to be a German word. The use of the Google translation tool is not determinative because, if Google is unable to translate a word, it simply reproduces the original. For example, if a user asks Google to translate from German into English a random combination of letters that do not make up a German word, the Google translator tool will simply produce the same random combination of letters, without indicating that the combination of letters is not a valid German word. See, e.g., http://translate.google.com/translate_t?hl=en&ie=UTF-8&text=aohasohawegohaweoh&sl=de&tl=en#. Thus, the Google translation cannot substantiate the claim that COMPART is a word in the German language. To the contrary, based on the Panel's review of several online German-English dictionaries, it appears that “compart” is not a German word.
Compart does, however, appear to be an English language word. Although that word exists in some dictionaries as an English verb, it is not listed in all common dictionaries (e.g., it is not listed in Merriam-Webster's Desk Dictionary (1995) or Merriam-Webster's Collegiate Dictionary (10th ed., 1996)), and thus the Panel does not agree that it could be said to be in common use.
The Respondent has exhibited 10 pages of the results of a Google search of COMPART in support of its common use, but a substantial number of the hits show the word being used as a trade name or a surname. There are a handful of hits where the word is used as an abbreviation of the word “compartment,” but there appear to be very few, if any, uses of the word in accordance with its dictionary meaning.
Regardless of whether “compart” is a common or more obscure English language word, the issue remains of whether the Respondent's use of this word for a PPC parking page can be said to be a legitimate use. The Complainant alleges that the use is not legitimate because the Respondent is using the Domain Name to promote software that is directly in competition with the Complainant's own products, which is not a legitimate interest. In the Complaint, the Complainant provided an excerpt, purportedly from the website to which the Domain Name resolves, that suggested that the Domain Name was being used to deliver PPC advertisements for other software products. As the Respondent demonstrated, however, the home page of the Respondent's website did not include any advertisements related to software; rather, the home page including primarily advertisements for automobile parts, and it also included a search engine that allows the user to search for advertisements related to other goods and services. The reason that these software advertisements were generated was because the Complainant entered the word “software” into the search engine included on the home page, which subsequently resulted in a new page with software advertisements. The Panel thus rejects the Complainant's argument that the webpage was promoting advertisements in competition with the Complainant's software products (and more generally addresses the Complainant's somewhat deceptive presentation of this evidence in section D, below).
That does not mean, though, that the Respondent has successfully shown rights or legitimate interests in the Domain Name. It remains the case that the Respondent's website, which included advertisements related mostly to automobile parts, is not a legitimate use because the Respondent is not using the Domain Name in any way that is related to its generic meaning. It is using the Domain Name for a PPC parking page where many of the links are to websites selling car parts. A declaration of Kamante Forde-Millar, a manager of the Respondent, states that this is because the automated technology used by the domain name parking service HitFarm.com is drawing on the contextual meaning of the “part” component of the Domain Name to generate what it considers to be relevant advertising.
The Respondent is not known by the name COMPART and has not been authorised by the Complainant to use the name. In the Panel's view, the mere fact that a word identical to the Domain Name exists as a defined dictionary term does not give rise to any rights or legitimate interests in the name on the part of a respondent who uses it in ways like this that are not tied to the generic meaning of that word. Accordingly, the Panel finds that the Respondent has no rights or legitimate interest in respect of the Domain Name.
Paragraph 2 of the Policy binding between the Respondent and the Registrar of the Domain Name (Nameview, Inc) provides that:
“By applying to register a domain name…you hereby warrant and represent to us that…(b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party…It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights”
The declaration of Kamante Forde-Millar appears to recognize this responsibility on the part of the Respondent. It states that “we believed we could lawfully own this domain name because it incorporated the dictionary word “compart”, to which we believed no party could claim exclusive rights.” However, Mr. Forde-Millar does not give any indication of any steps the Respondent took to verify that no third party had relevant rights in the name.
It may be going too far to suggest that the Respondent was under an obligation to search for German national trademarks at the time of registration. But, if the Respondent had carried out even basic Google searches in respect of “COMPART” or searched for other top-level domain registrations using “compart”, then these would have yielded obvious references to the Complainant and its use of the name as a trade mark. Since the Respondent acquired the Domain Name by purchase from an existing registrant, and the Domain Name could not be said to be a commonly used word, it was all the more relevant to carry out searches before registration.
Accordingly, the very strong inference in this case is that either the Respondent in fact closed its eyes to whether the Domain Name was identical or confusingly similar to a trademark in which a third party had rights, or the Respondent did make some enquiries and as a result had knowledge of the Complainant at the time of registration. Without deciding whether either of these inferences standing alone would support a finding of bad faith registration, the Panel concludes that such a finding is appropriate in this case.
The Respondent is deriving a financial benefit from web traffic diverted through the Domain Name to linked websites on the domain parking page. The Panel therefore also accepts that the Respondent has intentionally attracted Internet users to its websites or other on-line locations for commercial gain through confusion as to the source, affiliation or endorsement of the website or location. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith.
The Respondent alleged that the Complainant engaged in reverse domain name hijacking (“RDNH”). Because the Panel has ruled for the Complainant, the Panel concludes that the Complaint was not brought in bad faith and thus does not constitute RDNH.
However, the Panel is troubled by the inaccurate factual assertions by both sides in this case. On the Complainant's side, the Panel is troubled by the Complainant's misleading assertion that the Domain Name was being used to promote software products in competition with Complainant's products, and by the deceptive excerpt of the webpage that the Complainant included in its Complaint. On the Respondent's side, the Panel is troubled by the inaccurate assertion that “compart” is a German word.
Given the expedited nature of these administrative proceedings under the Policy, the absence of discovery, and the absence (in the normal course) of replies and sur-replies, panels need to know that they can rely on the good faith of the parties and their counsel and that they can trust the parties and counsel to ensure the accuracy of factual assertions (which, after all, are certified, to “the best of [the parties'] knowledge,” as being “complete and accurate”). Because there were inaccuracies by both parties, the Panel has decided not to enter a finding of RDNH in this case, but such a finding may well be appropriate in future cases if these parties, or those representing them, engage in similar conduct.
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 <compart.com> be transferred to the Complainant.
Ian Lowe | |
David H. Bernstein | David E. Sorkin |
Dated: July 9, 2009