Complainant is EnBW Energie Baden-Württemberg AG of Karlsruhe, Germany, represented by Lichtenstein, Körner & Partners, Germany.
Respondents are Kim Bum and PrivacyProtect.org, of Seoul, Republic of Korea and Queensland, Australia, respectively.
The disputed domain name <wwwenbw.com> is registered with RegisterMatrix.com Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2013. On June 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 18, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 18, 2013.
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 Respondents of the Complaint, and the proceedings commenced on June 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2013. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on July 16, 2013.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on July 25, 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.
Complainant owns numerous registrations for the mark ENBW, including for example, German Trademark registration No. 39814354, registered September 13, 1998 in Nice Classes 4, 7, 9, 11, 35, 36, 37, 38, 39, 40, 41, 42, and 45.
The disputed domain name was registered October 7, 2007 and presently routes to a search page with commercial listings routing to third parties, including links to other businesses in the German energy sector and elsewhere.1
Complainant explains that it is a large German energy supplier and utility.
In allegations under the Policy, Complainant contends that (1) “the contested domain name in its second level is identical with complainant’s name and trademarks ‘EnBW’. The element ‘www’ is descriptive of a web server and therefore indistinctive.”; (2) Respondent has no rights or legitimate interests in the disputed domain name; and (3) the disputed domain name was registered and is being used in bad faith.
Complainant contends that there was no point in contacting Respondent PrivacyProtect.org to attempt informal resolution of this dispute, because there are “dozens of administrative proceedings where the respondent has been named respondent as well and in all of these cases was completely unresponsive to requests but rather withdrew from the whois records as soon as a complaint was filed. It is, therefore, a waste of time and energy to try to find an amicable solution to a domain name disputed where the respondent is involved.”
Complainant seeks transfer.
Respondents did not reply to Complainant’s contentions.
The Policy and the Rules establish procedures to give respondents notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center sent to Respondent Kim Bum by courier notification of these proceedings. The Center used the address from the Registrar’s verification, but the notification was not deliverable to that address.
The Center also sent email notifications to contacts provided by the Registrar. The email addresses returned delivery errors. There was no available fax number, and the courier company indicated that the phone number listed with the Registrar was incorrect.
The Panel is satisfied that by sending communications to the contacts verified by the Registrar, based on those provided by Respondents and listed in the WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2(a) of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondents.
The Panel has determined that both the privacy registration service and Respondent Kim Bum, named in the Complaint amendment, are proper respondents in accordance with the Center’s regular UDRP practice.2 A few preliminary observations are called for, however, in light of Complainant’s allegations.
The original Complaint implies that the use of privacy registration services is simply for the purposes of evading legal responsibility. In response to the Center’s request for verification, the Registrar revealed that Respondent Kim Bum was the domain name registrant standing behind the PrivacyProtect.org privacy registration service. The Complaint amendment alleges that “the first respondent registered the domain name in a cover up and that he attempted to escape jurisdiction by changing names and transferring the domain name to a new Registrant pending a UDRP complaint.”
In response to private-party- or UDRP-related inquiries, registrars often disclose the individual owner of the domain name behind the privacy registration service. The act of a privacy registration service in disclosing the identity and contact information for an underlying registrant is generally held by UDRP panels as not constituting a transfer of domain name registration to a new registrant. Sometimes, but not always, the Registrar also updates the WhoIs record to reflect the name of the underlying registrant.
Complainant provides no evidence to support its allegations that a transfer was made, however it appears to the Panel that Complainant was unaware of the nature of this privacy registration disclosure practice. The use of privacy registration services is presently a legally acceptable practice and may be for legitimate purposes. E.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. Without more, UDRP panels have found that the use of a privacy or proxy registration service would not be sufficient to establish bad faith use or registration. Id.
The weight accorded to the use of a privacy registration service in this particular proceeding is discussed below, in the Panel’s discussion of bad faith.
The Panel must render its Decision 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. Rules, paragraph 15(a). Complainant must establish each element 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 Complainant has rights;
(ii) Respondents have 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.
Complainant must establish these elements even if Respondents do not submit a Response. E.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Although the Panel disagrees with the Complaint’s allegation that the second-level disputed domain name “wwwenbw” is “identical” to Complainant’s ENBW trademarks, the Panel finds that Respondent’s domain name is confusingly similar.
UDRP panels generally disregard the generic Top-Level Domain (gTLD) suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315. Removing the suffix, the disputed domain name is similar to Complainant’s trademarks, adding only the generic phrase “www” before the ENBW trademark.
The difference between a second-level domain name consisting solely of Complainant’s trademark and the second-level part of the disputed domain name is small: an Internet user could easily make an error in trying to access Complainant’s website at “www.enbw.com” by omitting the first period; browsers might route them under that circumstance to Respondent’s website at the disputed domain name <wwwenbw.com>.
The addition of the phrase “www” in the disputed domain name therefore does not change the Panel’s conclusion that the domain name is confusingly similar to Complainant’s trademark. See WIPO Overview 2.0, paragraph 1.10.
The Panel finds that it is established beyond question that Complainant’s trademark was intentionally modified by Respondent in order to create the impression that Respondent is associated with Complainant. Such “typosquatting” has regularly been condemned by UDRP panels. See, e.g., Nasdaq Stock Market, Inc. v. Nsdaq.com, Nasdq.com and Nasaq.com, WIPO Case No. D2001-1492, cited in Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Verisign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446.
The Panel finds, therefore, that the disputed domain name is confusingly similar to Complainant’s registered trademark and that the requirements in paragraph 4(a)(i) of the Policy are fulfilled.
The Panel also concludes that Respondents have no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods or services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i)-(iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is generally established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Complainant avers that Respondents are not commonly known by the disputed domain name, and that their use of the name is not authorized by Complainant. In the absence of a response, the Panel accepts as true these undisputed factual averments by Complainant.
As shown in exhibits to the Complaint, Respondent’s website displays links to third-party websites. The diversion of traffic to third parties and their products demonstrates that Respondent is using the disputed domain name for commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd, WIPO Case No. D2006-1079.
In short, the Panel agrees with Complainant that Respondent Kim Bum is seeking to attract Internet users through Complainant’s mark for Respondent’s own commercial purposes. The Panel therefore finds that the use of the disputed domain name demonstrates Respondents’ lack of a legitimate non-commercial interest in, or fair use of, the domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. The Panel also finds that the Complaint makes out a prima facie case.
Filing no Response, Respondents have not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established, as elaborated below.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. UDRP panels may draw inferences about bad faith registration or use in light of the circumstances, including the failure to maintain accurate contact details with the registrar and the failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Respondent’s choice of a domain name confusingly similar to Complainant’s trademark is strong evidence of bad faith. The Panel finds that Respondent was undoubtedly aware of Complainant’s ENBW mark, which Respondent deliberately mimicked in its <wwwenbw.com> domain name to create confusion and attract Internet users to its website for commercial gain. Therefore, the Panel concludes that Respondent registered the disputed domain name in bad faith. Société Nationale des Chemins de fer Français - SNCF v. Damian Miller / Miller Inc., WIPO Case No. D2009-0891.
The website to which Internet users are routed shows that the disputed domain name is used to promote the offerings of Complainant’s competitors in the energy field. The Panel concludes that this activity evidences bad faith use. mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088); DaimlerChrysler Corporation and DaimlerChrysler Service North America LLC v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070, (citing Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031).
While the use of a privacy registration service alone is not usually deemed to be evidence of bad faith, see, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, supra, the overall circumstances of this case, including the obvious “typosquatting,” suggest a bad faith motive for using a privacy registration service to conceal Respondent’s true identity and to avoid responsibility. The Panel finds, therefore, that Respondent’s use of a privacy service in this instance is further evidence of Respondent’s bad faith. See, e.g., Canadian Tire Corp. Ltd v. CK Aspen, WIPO Case No. DTV2007-0015 (also citing other decisions finding use of privacy registration services as indications of bad faith).
The absence of a Response to the Complaint and Respondent’s failure to maintain accurate contact details as required in its registration agreement with the Registrar provides further support for the Panel’s finding of bad faith.
The Complaint amendment also alleges that “The second respondent [Kim Bum], mostly acting in complicity with the first respondent, has been known as a prolific cybersquatter with a history of 9 previous WIPO domain name cases and two NAF cases since 2012, in which the panelists found in favor of the various complainants. . . The] second respondent ́s activities and not the least his constant disregard for trademark rights as evidenced by many UDRP cases in a short period of time confirm both his lack of legitimate interest and his bad faith.”
The Complaint does not clarify, but Complainant by these allegations seems to be trying to draw the Panel’s attention to evidence of registration and use in bad faith as set forth in Policy paragraph 4(b)(ii).3 Having found ample other evidence of registration and use in bad faith, the Panel finds it unnecessary to determine whether the existence and outcome of those other UDRP proceedings sheds light on Respondent’s intentions here.
The Panel concludes therefore that, in addition to having registered the disputed domain name in bad faith, Respondent is also using the domain name in bad faith.
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 <wwwenbw.com> be transferred to Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Date: August 6, 2013
1 The Panel has undertaken limited research by visiting the web pages to which the disputed domain name routes. See paragraph No. 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”). The webpages displayed English language screens that are consistent with those submitted as exhibits to the Complaint, although the annexes to the Complaint depict screen captures in German.
2 References in this Decision to the conduct or intention of Respondent are intended to signify the individual Respondent Kim Bum.
3 Policy paragraph 4b:
“Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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;”