The Complainant is Profilink Ltd of Plovdiv, Bulgaria, represented by Sabev and Partners Law Firm, Bulgaria.
The Respondent is Ianko Pavlov Dingozov of Köln, Germany, represented by Schollmeyer & Rickert, Rechtsanwaltsgesellschaft mbH, Germany.
The disputed domain name <profilink.net> is registered with United-domains AG (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2013. On July 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2013, 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.
On July 22, 2013, the Center informed the parties that the language of the registration agreement for the disputed domain name was German. Accordingly, the Complainant is requested to provide at least one of the following: a) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or b) submit the Complaint translated into German; or c) submit a request for English to be the language of the administrative proceedings. On July 24, 2013, the Complainant requested English to be the language of the administrative proceedings. On July 26, 2013, the Respondent requested German to be the language of the proceedings. On August 6, 2013, the Complainant submitted further comments to its request for English to be the language of the proceedings. The Center proceeded to accept the Complaint, as filed in English, and informed the Parties that it would accept a Response filed in English or German.
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 in German and in English, and the proceedings commenced on August 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2013. The Response was filed with the Center on August 26, 2013 in English.
The Center appointed Daniel Kraus as the sole panelist in this matter on September 4, 2013. 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.
The Complainant, a Bulgarian company established in 2004 and an important manufacturer of PVC profiles intended for use in windows, doors, cladding, blinds and other products, is the owner of the combined trademark PROFILINK registered in Bulgaria and other countries of the European Union, under which it sells its products.
The combined trademark PROFILINK was filed on December 21, 2004 and registered on May 27, 2005 in Bulgaria for classes 6, 19 and 20. An international PROFILINK trademark, registration of April 19, 2006 for goods in International classes 06, 19 and 20, covers the territories of Germany, the Czech Republic, United Kingdom of Great Britain and Northern Ireland, Greece, Italy, the former Yugoslav Republic of Macedonia, Poland, Romania, Serbia, the Russian Federation, Slovakia, Turkey and Ukraine.
The disputed domain name was first registered on August 1, 2006. This clearly comes out in the publicly WhoIs database, although the Complainant's annex 2 mentions 2011 as the date of registration.
Although there seems to be no written contract dealing with that issue, exchange of e-mails and the fact that the website to which the disputed domain name led for seven years to a website promoting the Complainant, seems to confirm that the disputed domain name was to be registered by the Respondent on behalf, i.e. in the name of and for the Complainant.
The Complainant first requests the language of the proceedings be in English rather than German, although the rules provide typically that the case to be dealt with in the language of the relevant domain registration agreement, which in the present case would be German. However, according to the Complainant, apart from the fact that the registration has taken place in Germany and that the Respondent has an address in Germany, the case has no relation with that country. Both parties are Bulgarian and have communicated in Bulgarian. But, as Bulgarian is not such a widely spoken language, it is easier to administer the case in English.
As mentioned above, the Complainant then contends that the disputed domain name was registered by the respondent, but for the Complainant. Not being a specialist of domain names, the Complainant relied on the technical know-how of the Respondent and never thought of that the latter was going to use the domain name, at some point, for his own interests. The Complainant further argues that the disputed domain name is identical or at least confusingly similar to its PROFILINK trademarks, that the Respondent has no rights or legitimate interests in respect of the disputed domain name and, finally, that the disputed domain name was registered and is being used in bad faith.
The Respondent first argues that the UDRP is not the appropriate legal action to resolve the dispute between the Parties. It further argues that it registered the disputed domain name on its own behalf for future use, with no contribution or guidance from the Complainant and on its own expenses. According to the Respondent, the Complainant's business was only temporarily permitted to use the disputed domain name until the Respondent decided to use the disputed domain name for its own purpose. According to the Respondent, the dispute falls outside the UDRP and has to be dismissed because the case may be better decided by a court.
The Respondent does not express itself on the issue whether the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. It however considers that it has a legitimate interest in respect of the disputed domain name, as it redirects to another domain name that offers a directory service, including pay-per-click links on a landing page. The Respondent further argues that the trademark and disputed domain name of the Complainant is generic, as a reason for which the Respondent’s use of it is legitimate. Finally, the Respondent contends that it registered the disputed domain name for its own purpose and use and only allowed the Complainant to use it until it finished building the directory service now found on the landing site. However, no annex is joined to the Response and no element of proof provides any evidence to accept this argument.
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
The language of the Registration Agreement is German. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Complainant requested the language of proceedings to be English on the grounds espoused above. It is clear to this Panel that the Respondent has a good command of English. Its legal representative filed its reply in English. The Panel hence determines the language of proceedings to be English.
Based upon the trademark registrations cited by the Complainant, it is apparent that the Complainant has rights in and to the PROFILINK Trademark.
As to whether the disputed domain name is identical or confusingly similar to the PROFILINK Trademark, the relevant comparison to be made is with the second-level portion of the disputed domain name only (i.e., “profilink”), as it is well-established that the generic top-level domain name (i.e., ”.net”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2: “The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.” The Panel finds the relevant portion of the disputed domain name is identical to the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has proven the first element of the Policy.
The Complainant has argued that, inter alia, the Respondent does not have any rights or legitimate interests in respect of the disputed domain name because no license or authorization of any kind has been given by the Complainant to the Respondent, to use the PROFILINK trademark and that the Respondent had been required to register the disputed domain name for the Complainant.
The disputed domain name however now leads to the Respondent’s website "www.uslugi.bg”– which seems to be a pay-per-click website. Using the disputed domain name to generate traffic to a pay-per-click parking website with links to products from other websites, thereby diluting or even tarnishing the reputation of the Complainant’s trademark, is not a bona fide offering of goods or services, under the circumstances; and the links displayed on the website connected to the disputed domain name should be seen as sponsored links as the Respondent most likely derives income once a visitor clicks on the links.
Further, and even more determinant is the fact that, according to prima facie evidence provided by the Complainant with the exchange of emails it produced, the Respondent was not supposed to make use of the disputed domain name it registered for the Complainant , and hence has nor rights nor legitimate interests therein.
It has been found by previous panels that under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1. However, the respondent has not satisfactorily made use of this possibility by simply stating that it had only allowed provisional use of the disputed domain name by the Complainant. This has been supported by no sufficient evidence.
Accordingly, as a result of the Complainant’s allegations and without any evidence from the Respondent to the contrary, the Panel is satisfied that the Complainant has proven the second element of the Policy.
The third requirement of the Policy, set out in paragraph 4(a)(iii), is that the Complainant must prove that the disputed domain name “has been registered and is being used in bad faith”.
The Panel finds that the Domain Name was registered and is being used in bad faith.
As mentioned in the factual description, the Panel is of the opinion that when the Respondent registered the Domain Name, he clearly was doing so for the Complainant. In other cases arising out of similar facts, Panels have refused to find bad faith registration because the registration was made with the consent or at the request of the trademark owner. See e.g. ITMetrixx, Inc. v. Kuzma Productions, WIPO Case No. D2001-0668. The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470. In those cases, though, the Respondent was expected to register the Domain Name under its own name.
However, in the present case, the Complaint suggests that Respondent was expected to register the Domain Name on behalf of the Complainant. The Respondent’s assertions according to which he had registered the disputed domain name for its own purpose and use and only allowed the Complainant to use it until it finished building the directory service now found on the landing site is not substantiated by any element of evidence whatsoever. Had the trademark owner known, at the time of registration, that the Respondent was intending to use the disputed domain name itself, it would never have asked it to help it with the mere technical issues of registration.
Such situations have arisen in other UDRP cases, in which the bad faith registration was found to be realized by panels. See e.g., Champion Innovations, Ltd v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Robilant & Associati Srl v. Powerlab snc, WIPO Case No. D2006-0991.
As for bad faith use, the Complainant has established that Respondent is now using the Domain Name in order to land on a directory service, and this seems to be admitted by the Respondent itself. Besides, it appears, in those circumstances, that the Respondent’s refusal to return the Domain Name to the Complainant is evidence of bad faith use. See also See e.g., Champion Innovations, Ltd v. Udo Dussling (45FHH), WIPO Case No. D2005-1094.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <profilink.net> be transferred to the Complainant.
Daniel Kraus
Sole Panelist
Date: October 3, 2013