WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mowitania Wendt & Molitor GbR v. Eric Clermont

Case No. D2011-0052

1. The Parties

The Complainant is Mowitania Wendt & Molitor GbR of Berlin, Germany, represented by Anwaltskanzlei Dr. Ricke, Germany.

The Respondent is Eric Clermont, of Chiang Mai, Thailand, appearing pro se.

2. The Domain Name and Registrar

The disputed domain name <mowitania.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2011. On January 11, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com. a request for registrar verification in connection with the disputed domain name. On January 12, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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” 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 on January 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2011. The Response was filed with the Center on February 2, 2011.

On February 7, 2011, the Complainant emailed the Center with comments arising from its consideration of the Response. In turn, on February 9, 2011, the Respondent emailed the Center with comments arising from the Complainant’s email. The Center informed both Parties that it would bring their respective comments to the Panel’s attention when appointed and that it would be at the discretion of the Panel to consider these in accordance with the Rules, paragraph 10(d).

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on February 9, 2011. 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 a German legal entity of the “Gesellschaft bürgerlichen Rechts” (“GbR”) type (German partnership) consisting of shareholders named Mr. Molitor and Mrs. Wendt. The Complainant’s business was founded in 2001 and is engaged in the field of finding holiday flats and hotels with a particular specialism in Berlin accommodation. The “mowi” component of the Complainant’s name was formed from the first syllable of Mr. Molitor’s surname (“Mo”) and the first syllable of Mrs. Wendt’s first name (“Wi”). Mr. Molitor and Mrs. Wendt are the owners of German registered trademark number 302010013095 for the word mark MOWITANIA registered on April 21, 2010 in use classes 36 (apartment finding/estate agency), 39 (organization of journeys and excursions) and 43 (accommodation services, hotel reservations and lettings).

The Respondent appears to be an individual based in Thailand. The Respondent registered the disputed domain name on July 15, 2008.

In March 2010 when the disputed domain name came to the Complainant’s notice it was pointing to the website “www.booking.com” operated by Booking.com B.V. of the Netherlands (hereinafter “Booking.com”). The Complainant’s legal counsel wrote to Booking.com to enquire about the nature of the disputed domain name and was informed by Booking.com’s legal counsel by email of April 29, 2010 that the disputed domain name had been pointed to Booking.com’s website by a business partner operating under the company’s affiliate scheme and that Booking.com would disconnect the disputed domain name. On May 4, 2010 Booking.com’s legal counsel again wrote to the Complainant’s legal counsel stating that Booking.com did not own, control, host or manage the disputed domain name and no longer had a contractual relationship with its operator. In the same communication, Booking.com’s legal counsel noted that the disputed domain name had now been pointed to a website at “www.hotel.de”.

On May 5, 2010 the Respondent wrote to the Complainant confirming that he was the registrant of the disputed domain name and stating inter alia “I am sorry that some sale tests abroad might have caused irritations. We tried to find out, if hotel agency affiliate systems targeted to very requested travel locations worldwide will give additional sales effects. We stopped the test line for Berlin now. Trademark infringements are not intended. If you might are [sic] interested to gain ownership of <mowitania.com> I kindly ask for an offer.” The Complainant’s shareholder Mrs. Wendt replied to the Respondent’s email on May 18, 2010 indicating that the Complainant sought a transfer of the disputed domain name. On May 19, 2010 the Respondent replied stating "thank you for your email and for introducing yourself. I am not interested to make it a gift to you, but surely it was worth a try. If you are interested to gain ownership, I kindly ask for an acceptable business offer. It might be financially [sic] rewarding to use it for other activities in the future."

Following the above correspondence, at some point prior to December 30, 2010, the Respondent pointed the disputed domain name to the website “www.all-berlin-apartments.com”. On November 11, 2010, the Complainant offered to purchase the disputed domain name from the Respondent for €500 Euros. On November 22, 2010, the Respondent replied “I am sorry, 500 US$ [sic] is no option. At the moment my client is willing to sell it for 15.000 US$. Maybe we also can talk about a rent for a forwarding - I did not discuss about that before with the owner.”

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it owns rights; that the Respondent has no right or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

The Complainant has rights in the trademark MOWITANIA by virtue of the German trademark registration which, in terms of German trademark law, requires to be held in the name of its shareholders.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has not been commonly known by the disputed domain name and is not making a legitimate non-commercial or fair use of it. On the contrary, the Respondent uses the disputed domain name with intent for commercial gain misleadingly to divert consumers.

The disputed domain name was registered and is being used in bad faith. The Respondent’s offer to sell the disputed domain name at a price of USD 15,000 United States Dollars (hereinafter “USD”) indicates that the disputed domain name was registered primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant. In addition, the Respondent has intentionally attempted to attract for commercial gain, Internet users to a third party’s web site, by creating a likelihood of confusion with the Complainant’s mark as to the affiliation of the third party’s web site in favour of the Respondent.

B. Respondent

The Respondent requests the Panel to deny the remedy requested by the Complainant.

The disputed domain name was registered in July 2008 to create a shop for modern wines in Tanzania and was built by adding the first letter of the participating words: “Modern+Wines+Tan(zan)ia” = MoWiTan ia. The identical spelling to the disputed domain name is a matter of fortuitousness.

The disputed domain name will be used in a completely different business environment from that of the Complainant. It will be also be based in another country. The disputed domain name was registered on July 15, 2008. The Complainant’s trade mark was filed on March 6, 2010 and registered on April 21, 2010. It could be strongly assumed that the Complainant registered a trademark in order to make the present claim for the disputed domain name.

The disputed domain name was registered without knowledge of any business of the same or similar name. It was not registered to sell nor to rent it, but only to build up an Internet shop. The development of the shop took longer than expected and has consumed a sum of about USD 20,000 to date. The domain was parked on an international hotel reservation platform without commercial intent and it did not generate any revenue via this redirection. When the Respondent was informed by the management of the hotel reservation site of the Complainant’s concerns, the Respondent contacted the Complainant to apologize. The Complainant merely sought transfer of the disputed domain name. In the face of the development costs of the Respondent’s clients the Respondent sought a business offer, to which the Complainant proposed the sum of €500 Euros. Since the development costs were much higher, the Respondent’s clients were only willing to part with the disputed domain name for USD 15,000.

The disputed domain name was not registered in bad faith for the purpose of selling it. It was not for sale at the outset of the dispute and there was no intention to give it away. If the Complainant has been active in business since 2001 and has been trading for more than 7 years the Respondent does not understand why the Complainant did not register the disputed domain name earlier. The Respondent proposes to redirect the disputed domain name to the business domain name of the Complainant, <mowitania.de> until the Respondent’s shop is online in the fall or winter of 2011.

6. Discussion and Findings

As a preliminary matter, the Panel must consider whether to admit the supplemental filings of the Parties. As the Center noted in their acknowledgement of receipt of each supplemental filing, the Rules do not explicitly provide for such filings to be made by either party, although a Panel does have discretion to admit these under paragraph 10(a), (b) and (d), and paragraph 12 of the Rules. The Panel considers that the general thrust of the Policy and Rules is that administrative proceedings in terms of the Policy should be determined with due expedition and accordingly that supplementary filings should not be admitted unless in exceptional circumstances. Given that neither supplemental filing was solicited by the Panel and neither contains any material which the Party concerned could not have included in its original filing, the Panel has declined to admit the supplementary filings.

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its rights in the German trademark MOWITANIA. The Respondent correctly points out however that the Complainant’s trademark was registered in April 2010 and that the disputed domain name was registered earlier, namely in July 2008. Accordingly, the question arises as to whether the Complainant may rely on a trademark for the purposes of paragraph 4(a)(i) of the Policy where the registration of that trademark post-dates the registration of the disputed domain name. This question has previously been considered by numerous panels in cases under the Policy and is now the subject of paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“the WIPO Overview”) which provides as follows:

“Does the complainant have UDRP-relevant trademark rights in a mark that was registered, or in which the complainant acquired unregistered rights, after the disputed domain name was registered?

Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind.”

This Panel adopts the above consensus view. The Complainant’s MOWITANIA trademark is identical to the disputed domain name, it being customary in cases under the Policy to disregard the top level domain (in this case “.com”) for the purposes of comparison on the grounds that this is wholly generic and required for technical reasons only.

Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case that the respondent has no rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating such rights or legitimate interests.

In the present dispute, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that the Respondent has not been commonly known by the disputed domain name, that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name and that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

The burden accordingly shifts to the Respondent to demonstrate that it has rights and legitimate interests. The Respondent's case is that it registered the disputed domain name for a project involving modern wines in Tanzania and that the disputed domain name is effectively an abbreviation of that term. The project costs to date are stated to be USD 20,000. The Respondent appears to indicate that it is handling the project for an undisclosed principal, to whom it refers somewhat cryptically by way of the phrase “the development costs of my clients”.

The Respondent's explanation does not ring true for the Panel. It is presented by way of mere assertions which are unaccompanied by any form of supporting evidence. If, as the Respondent claims, the modern wines project has absorbed some USD 20,000 in costs the Panel would reasonably expect the Respondent to have a substantial amount of material to show for this, for example business plans, design work or evidence of the products to be sold on the site. The Respondent has however produced no such material, nor has it produced the terms of its instructions from the principal who has allegedly instructed it in connection with the project or even named that principal.

In terms of the Policy, it is for the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name and not for the Respondent to prove anything. However, in the present case the Panel finds that the Complainant has raised a sufficient case to answer and that there is a distinct absence of an adequate and credible response from the Respondent. In all of the above circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.

On this topic, the Complainant’s submissions focus principally upon paragraphs 4(b)(i) and 4(b)(iv) of the Policy. In relation to paragraph 4(b)(i), the Complainant relies upon the Respondent’s offer to sell the disputed domain name to it at a price of USD 15,000. In relation to paragraph 4(b)(iv), the Complainant asserts that the Respondent has used the disputed domain name to create a likelihood of confusion with the Complainant’s MOWITANIA mark by pointing the disputed domain name to Booking.com’s affiliate scheme and by subsequently pointing the disputed domain name to websites at “www.hotel.de” and “www.all-berlin-apartments.com”.

The Respondent replies first that it only proposed a sale price of USD 15,000 to the Complainant because of the development costs already expended on its project and secondly that the disputed domain name was registered without knowledge of the Complainant’s business and was parked on the hotel reservation platform without commercial intent. In support of the latter point, the Respondent notes that the Complainant’s trademark was not registered until April 21, 2010 while the Respondent had registered the disputed domain name on July 15, 2008. As such, the Respondent could not have known of the Respondent’s trademark when it registered the disputed domain name.

It is necessary therefore for the Panel to revisit the issue as to the date on which the Complainant acquired trademark rights in the MOWITANIA mark. The question of a domain name pre-dating the trademark relied upon by a complainant has been addressed by the WIPO Overview at paragraph 3.1 which states:

“3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?

Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right. However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.”

On this basis, the Panel would be entitled to find bad faith under the Policy in certain circumstances even where, as here, the Complainant’s rights in its registered trademark entirely post-date the registration of the disputed domain name. However, the Panel does not consider that the Complainant had absolutely no rights whatsoever in the mark MOWITANIA prior to that date. On the contrary, the Complainant has made out a reasonable case that it has an unregistered or common law trademark in that term. The Complainant contends, and it is not disputed by the Respondent, that the Complainant has been using the mark MOWITANIA in the course of its business since 2001. In support of this contention the Complainant produces invoices dating from 2001, 2003, 2005 and 2008 for accommodation-finding services rendered to various customers. The first of these features the uniform resource locator of the Respondent’s website at “www.mowitania.de” indicating that the Complainant has been using that address on the Internet for hotel and accommodation services since 2001. All of the invoices also feature the MOWITANIA mark prominently at the top of the page. The invoices have been rendered to customers from Germany and the United Kingdom, indicating that the Complainant has attracted a national and international customer-base over the years.

Although the Panel would have preferred to see further evidence as to the Complainant’s reputation and goodwill, nevertheless the Panel is on balance satisfied that the Complainant had sufficient reputation and goodwill in its trading name and online identity MOWITANIA to constitute an unregistered or common law trademark, prior to the registration of the disputed domain name, by virtue of the Complainant’s use of the mark, nationally and internationally, of some seven years’ standing in both on and offline terms. The question remains, however, as to whether the Respondent was targeting that mark in its registration and use of the disputed domain name. The Respondent strongly asserts that it was not targeting the Complainant’s mark and that the identical spelling of the disputed domain name is a matter of “fortuitousness,” due to its being the name for the Respondent’s (or the Respondent’s principal’s) modern wines in Tanzania project, based on the abbreviation “mo,” “wi” and “tan[zan]ia.”

When the whole circumstances are examined, the Panel does not consider the Respondent’s assertions to be credible. The Respondent fails to provide an adequate explanation for why, since the disputed domain name came to the attention of the Complainant in early 2010, it has only ever been used in connection with accommodation services, of an increasingly close connection to the business of the Complainant. The Complainant notes that when it discovered the disputed domain name, it was already pointing to the hotel booking website at “www.booking.com”. The Respondent does not deny this but states that this had been done without any commercial intent. However, the Panel notes that the email from Booking.com’s legal counsel to the Complainant dated April 29, 2010 clearly states that the user of the disputed domain name is a business partner of that organization in terms of its affiliate program. In the Panel’s mind, the Respondent’s enrolment of the disputed domain name in such a program signifies clear commercial intent to use the disputed domain name in connection with accommodation services. Furthermore, it is evident from Booking.com’s legal counsel’s subsequent email of May 4, 2010 that after having been notified of the Complainant’s concerns the Respondent nevertheless went on to point the disputed domain name to the website at “www.hotel.de”. Subsequently, traffic to the disputed domain name was redirected to “www.all-berlin-apartments.com”, a site which the Complainant notes is one of its competitors.

In the Panel’s opinion, the above circumstances point in the direction of bad faith on the part of the Respondent. The Respondent was evidently using the disputed domain name to redirect Internet users to accommodation-related material both before and after being formally notified of the Complainant’s concerns. This is either a most unfortunate coincidence or evidence that the Respondent was deliberately targeting the Complainant’s accommodation-finding business. How does the Respondent explain this conduct? In its email to the Complainant’s counsel of May 5, 2010 the Respondent characterizes its use of the disputed domain name as “sale tests abroad” and explains further “We tried to find out if hotel agency affiliate systems targeted to very [sic] requested travel locations worldwide will give additional sales effects.” Such explanations do not sit well with the Respondent’s later submissions, in the Response, that the disputed domain name was registered in connection with a Tanzanian wine project. The Respondent at no point explains the connection between wines and accommodation-finding and none is apparent to the Panel. Furthermore, as noted in the preceding section, the Panel has serious doubts regarding the credibility of the Respondent’s submissions regarding its alleged project given that the Respondent has entirely failed to provide any supporting evidence thereof. Accordingly, the Panel considers on balance that the Respondent registered and used the disputed domain name with intent to target the Complainant’s rights in the mark MOWITANIA.

In all of the above circumstances, the Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to several on line locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of those locations and that the Respondent has thereby registered and used the disputed domain name in bad faith. As such, it is unnecessary for the Panel to deal with the Complainant’s further submissions regarding the Respondent’s proposal to sell the disputed domain name to the Complainant.

Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

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

Andrew D. S. Lothian
Sole Panelist
Dated: February 23, 2011