WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr Pfaff GmbH v. Rainer Ahlfors
Case No. D2001-0973
1. The Parties
The Complainant is Dr Pfaff GmbH, a company with a registered address of Heinrich-Kley-Strasse 2, 80807 Munich, Germany. The Complainant is represented by Dr Markus Bahmann, PriceWaterhouseCoopersVeltins Rechsanwaltsgesellschaft mbH of Brienner Strasse, 9/Amirapaltz 80333 Munich, Germany.
The respondent is Rainer Ahlfors whose address is 459 N600 E#1 Provo, UT 84606, USA. The respondent has no authorised representative for this proceeding.
2. The Domain Name and Registrar
The domain name in dispute is: <drdoc.com>.
The Registrar with which the Domain Name is registered is Network Solutions, Inc of 505 Huntmar Park Drive, Herndon, VA 20170 USA.
3. Procedural History
The Complaint, which is dated August 8, 2001, was filed in electronic format on that date and hard copies were filed on July 30, 2001. On August 3, 2001, the Center transmitted acknowledgment of receipt of complaint. On August 6, 2001, the Center transmitted a request for register verification to Network Solutions, Inc in connection with this case. On August 8, 2001, Network Solutions Inc. sent via e-mail to the Center a verification response confirming that the Respondent is the registrant.
On August 7, 2001, the Center requested an electronic version of the Complaint from the Complainant. On August 8, 2001, the Center received an electronic version of the Complaint.
On August 9, 2001, the Center verified the Complaint satisfied the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the 'Policy'), the Rules for Uniform Domain Name Resolution Policy (the 'Rules') and the Supplemental Rules for Uniform Domain Name Dispute Resolution (the 'Supplemental Rules').
On August 9, 2001, the Center formally commenced this proceeding and sought to notify the Respondent that its response would be due by August 29, 2001. The Center received the Respondent's response on August 29, 2001, and confirmed receipt on August 30, 2001.
On August 30, 2001, the Center received a Supplemental Pleading from the Complainant. On August 31, 2001, the Center received a Supplemental Response from the Respondent. On August 31, 2001, the Center acknowledged receipt of Supplemental filings and in that same electronic correspondence the Center advised the parties that the admissibility of the Supplemental filings would be determined by the panelist, as it is a question to be determined within his discretion.
On September 11, 2001, the WIPO Arbitration and Mediation Center notified the parties that an Administrative Panel had been appointed consisting of a single member: Professor Michael Charles Pryles, who had submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
4. Factual Background
The Complainant, Dr Pfaff GmbH, a company with a head office in Germany, is engaged in the business of providing document management systems. The systems support offered by the Complainant includes computer software designed to make the task of managing documentation easier.
The Complainant trades under the registered trademark, 'Dr. Doc'. The trademark was registered April 29, 1997. The Complainant also has a domain name <drdoc.de>, which represents a source of business.
The Respondent, Rainer Ahlfors, offers a service of 'web design' on the Domain Name. The Respondent on the web site/Domain Name claims to offer 'extensive knowledge and past experience in programming, web design, graphic design, network administration and Internet security'.
The Domain Name was registered on June 16, 1998.
5. Parties’ Contentions
Domain Name and Registered Trade Mark Identical (paragraph 4(a)(i) of the Policy)
The Complainant contends that the Domain Name is 'identical' to its registered trademark. The Complainant registered 'Dr. Doc' in 1997 as a trademark. The Complainant contends that the absence of a full stop between Dr and Doc in the Domain Name does not constitute a sufficient variation to its registered trademark. However, the Complainant does not expressly plead that the two are 'confusingly similar'.
The Respondent at paragraph 6 of his Response concedes that the Complainant's registered trademark and the Domain Name are identical.
Legitimate Interest or Right in the Domain Name (paragraph 4(a)(ii) of the Policy)
The Complainant contends that the Respondent had no legitimate interest in the Domain Name as evidenced by the Respondent's apparent failure to maintain an operational Domain Name and failure to respond to enquiries made by the Complainant.
The Respondent disputes that he has no legitimate interest in the Domain Name. He submits that the Domain Name reflects a personal service offered by him for 'internet services, design, programming and graphics'.
In his view, quite unlike the document management software or services provided by the Complainant, the Domain Name reflects a web design function/service offered by the Respondent.
Registration and Use in Bad Faith (paragraph 4(a)(iii) of the Policy)
The Complainant contends that, in summary, the apparent failure by the Respondent to develop the Domain Name (despite having it registered on June 16, 1998) is evidence of bad faith.
The Respondent contends that to avoid confusion with the Complainant's registered trademark the Respondent chose to use 'Dr Doc Systems' as the official name of the web site, and only use the phrase 'Dr Doc' in reference to himself as a person.
Further, the Respondent submits that the Domain Name has been used with the sole purpose of providing information about the Respondent and the Respondent's services/skills as a web designer.
The Respondent contends that there was no bad faith in registering the Domain Name.
6. Discussion and Findings.
Paragraph 4(a) of the Policy requires that the complainant must prove each of the following:
- The domain names are identical or confusingly similar to the trade marks; and
- The respondent has no right or legitimate interest in respect of the domain names; and
- The domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.
Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.
Before discussing the application of the Policy to the facts of the case, it should be noted that the domain name was registered on 16 June 1998. The Policy was approved by ICANN on 24 October 1999. This means that the domain name was registered before the Policy approval by ICANN and the incorporation by the Registrar of the domain name Network Solutions. However, the Registrar has the right to revise the terms or conditions of the agreement and a customer can signify assent to any such revisions merely by continuing to use Network Solutions services. The Respondent did so and, therefore, consented to the revision of the terms and conditions by the incorporation of the Policy. In its Response, the Respondent agrees that the domain name in question is covered by the Policy approved by ICANN on October 24, 1999.
B. Domain Name Identical / Confusingly Similar
The Respondent in his statement of response paragraph (6) sub-paragraph (1) concedes that the Complainant's registered trademark and the Domain Name are identical. This concession by the Respondent means that I need not make a finding in this regard.
C. No Right or Legitimate Interest
The Respondent contends that it has used the name 'DrDoc' since March 1995 in reference to himself as a designer, mainly web designer and graphic designer. However, the Respondent has provided no evidence of such use. The Respondent states that, in 1998, prior to registering the domain name, 'the Respondent performed an extensive research to make sure that the name "DrDoc" would not violate any trade marks, copyright or other rights protected by law'. The Respondent found that the name 'DrDoc' was used by three parties, including the Complainant. However, the Respondent states that he 'was unable to establish any connection between [the Complainant] and existing trade marks'. The Respondent goes on to state 'to avoid further confusion, the Respondent chose to use "DrDoc Systems" as the official name of the website in reference to the business, and only used 'DrDoc' in reference to himself as a person'.
I find that the Respondent does not have a legitimate interest or right in the Domain Name. Although the Respondent alleges that it used the name 'DrDoc' since March 1995, the Respondent provides no evidence for this allegation. The Respondent was aware that the Complainant used the name 'DrDoc' and it is clear to the Panel that the Complainant was the owner of a trade mark, which had been registered more than one year prior to the registration of the Domain Name.
Further indication of no right or legitimate interest arises from the evidence which has been produced which suggests that, for most of the time since the Domain Name was registered, it has been little used. The uncontradicted evidence is that until recently at least, nothing appeared on the internet page of the Domain Name, except the words 'DrDocs' or the message 'Coming Soon'.
D. Domain Names Registered and used in Bad Faith
The Respondent registered the Domain Name after ascertaining that the Complainant used a similar (and concededly, identical) name. Although the Respondent states that he did not discover the Complainant's trade mark, it had in fact been registered more than one year prior to the registration of the Domain Name. The Respondent was conscious of the possibility of confusion because he states that in order to avoid further confusion, he chose to use the name 'DrDoc Systems' as the official name of his website in reference to his business and only to use 'DrDoc' in reference to himself as a person.
The Respondent contends that his business is significantly different from that of the Complainant. The Respondent states that he is a web designer and graphic designer while the Complainant is concerned with software and document management. However, there is a sufficient degree of similarity to lead to confusion, at the least. There is, in my opinion, a sufficient likelihood of confusion (of which the Respondent was aware) to demonstrate evidence of registration and use in bad faith.
I find that in view of the above, the Domain Name should be transferred to the Complainant.
Professor Michael Charles Pryles
Dated: September 25, 2001