WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Publicare Marketing Communications GmbH v. G.E.D. Faber / GAOS BV

Case No. D2012-1580

1. The Parties

The Complainant is Publicare Marketing Communications GmbH of Germany, represented by AMPERSAND Rechtsanwaelte LLP, Germany.

The Respondent is G.E.D. Faber / GAOS BV of the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <publicare.com> (the “Disputed Domain Name”) is registered with TierraNet d/b/a DomainDiscover (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2012. On August 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2012, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 9, 2012 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 amendment to the Complaint on August 10, 2012. It essentially stated that the identity of the second Respondent (GAOS BV) did not change the arguments made in the initial Complaint given that the second Respondent is factually identical to the first named Respondent (G.E.D. Faber).

The Center verified that the Complaint together with the amendment to 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 August 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2012. The Response was filed with the Center on September 1, 2012.

The Center appointed Jacques de Werra as the sole panelist in this matter on October 2, 2012. 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 company offering services of development and implementation of dialog-base email communications, online advertising and e-business applications and operating under the company name “Publicare Marketing Communications”.

The Complainant owns a German word trademark PUBLICARE 30560520 which was registered on November 16, 2005 and which covers various services in classes 35, 38 and 42 (the “Trademark”).

The Complainant has registered different domain names reflecting the Trademark that it uses in connection with its services which include the following domain names: <publicare.de>, <publicare.info> and <publicare.us>.

The Disputed Domain Name was registered on April 4, 1999. It is used in connection with a parking service, which provides links pointing to various third party companies whereby the site also indicates that the Disputed Domain Name is for sale.

The Complainant sent a cease and desist letter to the Respondent on June 27, 2012 asking the Respondent to justify its legitimate interests in the Disputed Domain Name. The Complainant also offered to acquire the Disputed Domain Name via third parties which did not succeed, given that the Respondent offered the Disputed Domain Name for a price of EUR 25, 000.

5. Parties’ Contentions

A. Complainant

The Complainant first claims that it is the owner of the Trademark and that the Disputed Domain Name is identical to the Trademark.

The Complainant further claims that the Respondent does not have any registered or unregistered trademarks corresponding to the Disputed Domain Name, that it is not affiliated with the Complainant and has not been licensed to use the Trademark. The Disputed Domain Name has not been used in connection with a bona fide offering of goods or services, because it is parked with a domain name parking program and is also offered for sale.

The Complainant finally alleges that the bad faith registration of the Disputed Domain Name by the Respondent is evidenced by the fact that the Respondent registered the Disputed Domain Name corresponding to a third party trademark and offered it for sale at a price which is highly in excess of the out-of-pocket expenses. The Complainant further claims that the Respondent has registered various other domain names corresponding to third party trademarks which are also offered for sale (including <absoluut.com> and <vitaal.com>). It also claims that the Respondent did not respond to a letter sent by the Complainant in which the Complainant requested the Respondent to justify its legitimate interests in the Disputed Domain Name.

B. Respondent

The Respondent claims that it operates a family business in the Netherlands and that the Dispute Domain Name has a generic latin meaning and that the Disputed Domain Name was registered several years before the Trademark registration (i.e. 1999 and 2005 respectively).

The Respondent had a project to use the Disputed Domain Name in connection with on-line activities that it developed back in the year 2000, even if this project was subsequently not implemented. The Disputed Domain Name, along with other domain names, were put into a parking system in 2010/2011. There can be a legitimate use of a Disputed Domain Name composed of a generic word, even if the Disputed Domain Name is used in connection with a landing page.

The Respondent further registered the Disputed Domain Name which corresponds to a generic latin word without having knowledge of the Trademark, which does not amount to a bad faith registration and use of the Disputed Domain Name. The offer for sale of the Disputed Domain Name does not create such bad faith in view of the absence of the knowledge of the Trademark.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights to the Trademark in Germany.

A comparison between the Disputed Domain Name and the Trademark shows that the Disputed Domain Name is identical to the Trademark.

As a result, based on the rights of the Complainant in the Trademark and on the identity between the Trademark and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Although the Complainant bears the ultimate burden of providing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of its rights or legitimate interests in the Disputed Domain Name, once the Complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant has established that the Respondent does not actively use the Disputed Domain Name except in connection with a landing page that the Respondent offers for sale.

The Complainant has also established that the Respondent has not been commonly known by the Disputed Domain Name.

The Panel thus accepts the Complainant’s prima facie showing and finds that it was consequently up to the Respondent to come forward with evidence of its rights or legitimate interests in the Disputed Domain Name.

The question is whether the Respondent can shown that it has made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.

Even if the Respondent has produced documents dating back to 2000 establishing its project to use the Disputed Domain Name in connection with a certain business activity, it remains that the Disputed Domain Name has not been actively used since then and is as of today still not actively used. This is not sufficient to create rights or legitimate interests of the Respondent in the Disputed Domain Name based on the opinions of previous distinguished panels:

“Although proof of a business plan utilizing the domain name and signs of pursuit of the business plan can be evidence of demonstrable preparation, see Physik Instrumente GmbH & Co. v. Stefan Kerner, WIPO Case No. D2000-1001 (October 3, 2000), mere assertions of an inchoate plan are insufficient, especially if significant time has passed since the registration of the domain name with no effort to act on those plans. See World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (Jan. 24, 2000) (WWF collectibles dealer’s claims of plans to create an auction site not enough to overcome a prima facie case of no legitimate use); Fielding v. Corbet, WIPO Case No. D2000-1000 (Sept. 25, 2000) (Respondent’s claim that he wanted to start a fan club given no weight since he owned the domain name <brigetjones.com> for two years without building a website). Respondent registered many of the domain names at issue, including domain names (1) through (4), almost two years ago. At the time of this opinion, none of the websites located at the ARCA Domain Names contain any substantive content. They do not offer goods and services nor do they provide the sort of information alluded to by Respondent in his emails”. Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales, WIPO Case No. D2001-0729.

As stated in the WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) para. 2.2, “Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase)”.

The Panel however does not have to decide on this issue, given the analysis that shall be made with respect to the third element relating to the alleged registration and use in bad faith of the Disputed Domain Name by the Respondent (see below C).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain name;

(ii) circumstances indicating that the Respondent registered the Disputed 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 the Respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the Respondent intentionally is using the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

In this case, the Panel notes that the Disputed Domain Name was registered more than six years before the registration of the Trademark by the Complainant. The Panel further notes that the Disputed Domain Name corresponds to a generic latin name. The Panel finds that the evidence before it is not sufficient to enable the Panel to conclude that the Trademark is so well-known that it should supposedly have been known by the Respondent. Being a dictionary word, and not inherently distinctive, there is an onus on the Complainant to present the Panel with compelling evidence of secondary meaning and distinctiveness through extensive use, which has not been estalbished here. See by analogy Orbis Holdings Limited v. Lu A Feng (First Respondent) and Orbis Search (Second Respondent), WIPO Case No. D2007-0515 (in which the three member panel refused to find bad faith in the case of the registration of a domain name consisting of a Latin word, i.e. <orbis.com>, based on the lack of evidence showing that the respondent had knowledge of a complainant and its trademark rights prior to or at the time of registration/acquisition of the disputed domain name).

As noted in the WIPO Overview 2.0 para. 3.1, the principle is that “when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right” (whereby the exceptions which are discussed there are of no relevance here).

From this perspective, the Panel notes that the Complainant has not established that the Respondent would have been aware (or should have been aware) of the Complainant or of the Trademark at the time when the Disputed Domain Name was registered (or when it was renewed). On this basis, the Panel cannot admit that the Disputed Domain Name was registered in bad faith by the Respondent.

The Complainant further claims that the Respondent is in bad faith because it has registered various domain names including the Disputed Domain Name given that they correspond to third party trademarks and offers them for sale at a price which is highly in excess of the out-of-pocket expenses. The Panel however notes that paragraph 4(a)(i) of the Policy provides as an example of bad faith that “the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain name”. This provision consequently also requires the showing that the Respondent has knowledge of the Complainant and of the Trademark, given that this provision applies in case of acquisition primarily for a sale (or another transaction) to the Complainant or to a competitor of the Complainant. As a result, the mere fact that the Respondent offers the Disputed Domain Name for sale (and other domain names that it holds) does not demonstrate a showing of bad faith of the Respondent.

The Panel reminds in this respect that the overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. In the Panel’s consideration, there have not been sufficient elements established to demonstrate that the Respondent was seeking to profit from and to exploit the Trademark of the Complainant as a result of the registration and of the use of the Disputed Domain Name which corresponds to a generic Latin word.

For these reasons, the Panel considers that the Complainant has not established that the Disputed Domain Name was registered and is being used in bad faith by the Respondent pursuant to paragraph 4(a)(iii) of the Policy.

D. Reverse Domain Name Hijacking

The Respondent requests the Panel to decide on the issue of reverse domain name hijacking allegedly committed by the Complainant.

In accordance with paragraph 15(e) of the Rules, “if after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking […] the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

Reverse domain name hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

In order for a respondent to prevail on such a claim, it must show that a complainant knew of the respondent’s unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, but nevertheless brought the complaint in bad faith (cf. Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151).

In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on a respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute Reverse Domain Name Hijacking.

In the Panel’s opinion, the Respondent has not established that the Complainant has acted in bad faith. While the Complainant’s case is difficult, considering the earlier registration of the Disputed Domain Name by the Respondent, the Panel is not satisfied that the elements for considering the Complainant’s action as an attempt at reverse domain name hijacking have been proven by the Respondent. In the Complainant’s view, the business model of the Respondent, i.e. collecting generic domain names and offering them for sale, does not give the Respondent any rights or legitimate interests in the Disputed Domain Name. Considering Complainant’s motivation, it cannot be said that the Policy was used in bad faith to attempt to deprive Respondent of the Disputed Domain Name. See by analogy Co-Ro Food A/S v. Moniker Privacy Services / Domain Administrator, WIPO Case No. D2011-2049.

In all the circumstances, the Panel finds that it has not been established that the Complaint was brought in bad faith and therefore the Complaint does not constitute an abuse of the administrative proceeding.

7. Decision

For the foregoing reasons, the Complaint is denied.

Jacques de Werra
Sole Panelist
Dated: October 16, 2012