WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

GEA AG v. Highlands

Case No. DBIZ2002-00036

 

1. The Parties

The Complainant in this administrative proceeding is GEA AG in Bochum, Germany.

The Respondent in this administrative proceeding is Highlands, in Miami, Florida, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name is <gea.biz>. The Registrar of the domain name is iHoldings.com, Inc. d/b/a DotRegistrar.com., Miami, FL 33186, United States of America.

The Registry operator has confirmed the ticket number.

 

3. Procedural History

This is a mandatory administrative proceeding submitted for decision in accordance with the Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the "STOP"), the Rules for Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the STOP Rules) and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for <.biz> (the WIPO Supplemental STOP Rules).

The Complainant filed its STOP Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on April 24, 2002. After correspondence between the Complainant and the Center, an Amended Complaint was filed with the Center on May 29, 2002. On June 19, 2002, having verified that the STOP Complaint satisfied the formal requirements of the STOP and the STOP Rules, the Center formally commenced this proceeding. On July 10, 2002, Notification of Respondent Default was issued.

The Administrative Panel consisting of one member was appointed on July 29, 2002, by WIPO.

An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.

By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the STOP and STOP Rules.

 

4. Factual Background

The following information is derived from the Complaint.

The Complainant is an internationally well-known company with business activities and corresponding trade name and trademark rights in over 50 countries around the world.

The Complaint is based, among others, on the trademarks and service marks US No. 2 028 058 "GEA" (word mark), CTM no. 224 782 "GEA" (word mark), International Registration No. 675 007 "GEA" (word mark), Brazilian Trademark Registration No. 6 204 376 "GEA" (word mark), Japanese Trademark Registration No. 661 944 "GEA" (word mark), German Trademark Registration No. 662 713 "GEA" (word mark) and German Trademark Registration No. 396 37 469.7 "GEA" (word mark) according to which the Complainant owns various trademarks under the designation "GEA". Each mark is registered and used or is intend to be used for huge range of goods and services in the International Classes 7, 9, 11, 35, 36, 37, 40 and 42.

The Respondentís company name is totally different from the subject domain name and it does not offer any products or services under the designation "GEA".

The Respondent did not file an IP claim when it applied for the subject domain name and does not have registered trademarks or service marks which are identical to the subject domain name.

The Respondent attempted to attract for commercial gain, Internet users to the web site to which the subject domain name resolves or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site or location or of a product or service on the Respondentís web site or location.

The Respondent filed no material in this proceeding.

 

5. Partiesí Contentions

A. Complainant

The Complainant relies on its use and registration of "GEA" and states that the subject domain name is identical.

The Complainant contends that the Respondent does not have a legitimate interest in the subject domain name because it is not known as GEA and does not offer any products using that designation.

Bad faith is asserted based on the fact that the Respondent's company name does not use GEA and it has no trademark rights to GEA in contrast to the Complainant that has rights to GEA worldwide. The facts that the Respondent did not file an IP claim when it applied for the subject domain name and does not have trademark rights to GEA "Öare to be interpreted in that the [subject] domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the [subject] domain name registration to the Complainant or to a competitor of that Complainant, for valuable consideration in excess of the [subject] domain name registrantís out-of-pocket costs directly related to the [subject] domain name".

Also in support of bad faith, the Complainant states that the subject domain name was registered to prevent the Complainant from obtaining it and to disrupt the Complainant's business. In addition, it is asserted that: "Öthe Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondentís web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the respondentís web site or location or of a product or service on the Respondentís web site or location".

B. Respondent

The Respondent made no submission.

 

6. Discussion and Findings

Paragraph 4(a) of the STOP requires the Complainant to prove that:

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

(ii) the Respondent has no legitimate interest in respect of the domain name;

(iii) the domain name has been registered or is being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;

(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name;

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís 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 the web site or location or of a product or service on it or a location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

The resolution of this dispute takes place in the context of a consideration of the requirements of Paragraph 4(a) of the STOP.

A. Identical

It is clear that the Complainant has rights to GEA, by both extensive use and registration. The subject domain name differs from the Complainant's mark only by the addition of .biz, which is irrelevant.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

B. Respondentís Legitimate Interest

The information provided by the Complainant's to establish that the Respondent does not have a legitimate interest in the subject domain name is not strong, but it does raise a prima facie case. The Respondent is not known by GEA and does not trade using that designation. It has no trademark or service marks for GEA. The Complainant is an international company which is known as GEA.

A respondent is not obliged to participate in a STOP proceeding and its failure to do so will not constitute and admission of facts asserted by a complainant, but the respondent is vulnerable to inferences that flow from the facts asserted by the complainant. In addition, the factual content of the complaint, insofar as it is not obviously unreasonable, will be taken as true.

Although the Complainant has provided no information supporting its allegation - for example, internet or registry searches - the Respondent chose not to contest the assertions of the Complainant. They stand uncontroverted as do the inferences that flow from them.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

C. Bad Faith

The Complainant's case concerning bad faith is weak.

A finding that a respondent does not have a legitimate interest in a domain name that is identical to the mark of another does not automatically lead to a conclusion of bad faith, but the information that supports the finding is relevant to the bad faith issue.

In this case, the Complainant relies on the facts that the Respondent is not known by GEA and does not have trademark or service marks incorporating GEA as supporting an inference that the Respondent registered the subject domain name to sell it. Apart from the fact that there is no information supporting the allegation that the Respondent does not have such trademark or service marks, while the absence of these links raises an inference that the Respondent does not have a legitimate interest in the subject domain name, it provides little, if any, support for a finding of bad faith in the context of this case.

There is no indication in the material provided to the Administrative Panel that the Complainant attempted to communicate with the Respondent to ask it to relinquish the subject domain name. This is a usual step in domain name disputes.

The Complainant says that the Respondent seeks to disrupt the Complainant's business. This allegation, in part, is reflected in the list of information that can lead to an implication of evidence of bad faith, but disruption of business is in the context of "Öprimarily for the purpose of disrupting the business of a competitor". There is no information in this case that the parties are competitors.

The Complainant alleges that: "Öthe Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondentís web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the respondentís web site or location or of a product or service on the Respondentís web site or location". There is no information provided to the Administrative Panel that supports the allegation.

The Complainant asserts that bad faith is shown by the fact that the registration of the subject domain name prevents it from using its mark with .biz. Although not articulated as such, the Complainant appears to rely on the "blocking" doctrine, that is, because registration of a domain name that is identical to a very famous mark prevents the marks owner from using its mark, the registration raises an inference of bad faith.

The doctrine must be used sparingly or it would lead almost automatically to a finding of bad faith by reason of the registration of a domain name that is identical to another's mark. It should be applied only in circumstances where it is established that the mark in question is notorious.

In its Complaint, the Complainant does not state its business. An examination of its registrations and an independent search by the Administrative Panel suggests that its prime business is engineering. The Complainant is active worldwide in its business, but there is no information to show that it is known commonly, that is, to those who are not in its business or who do not use its services. The information provided to the Administrative Panel does not support the notoriety required to engage the "blocking" doctrine.

In summary, the Complainant's case on bad faith consists of assertions that the Respondent is know known by GEA and that it does not have trademark or service marks incorporation GEA and by allegations which either fail to address all of the ingredients required to lead to an implication of evidence of bad faith or are unsupported by the information provided to the Administrative Panel.

The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

 

7. Decision

Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has not established its case. It is dismissed.

 


 

Edward C. Chiasson, Q.C.
Sole Panelist

Dated: August 6, 2002