WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cloer Elektrogeršte GmbH v. Motohisa Ohno

Case No. D2006-0026

 

1. The Parties

The Complainant is Cloer Elektrogeršte GmbH, Arnsberg, Germany, represented by Bockermann, Ksoll, Griepenstroh, Germany.

The Respondent is Motohisa Ohno, Tokyo, Japan, and is self-represented.

 

2. The Domain Name and Registrar

The disputed domain name <cloer.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2006. On January 11, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On 12 January, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February†9, 2006. The Response was filed with the Center on February 9, 2006.

The Center appointed David A. R. Williams QC as the sole panelist in this matter on March 1, 2006. 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’s trademark “CLOER”

The Complainant, Cloer Elektrogeršte GmbH, is a limited liability company, incorporated under the laws of Germany. The Complainant owns the community trademark “CLOER”. The Complainant registered the trademark “CLOER” on June†11,†2003, with the Office for Harmonization in the Internal Market (“OHIM”), as indicated by the German Certificate of Registration (Annex 5 to the Complaint) and OHIM’s official website “www.oami.eu.int”. The trademark “CLOER” is a community trademark and is valid and enforceable in all countries of the European Union. The OHIM adopts the “NICE classification” also known as the International Classification of Goods and Services.

The “CLOER” trademark has been registered for classes 7, 9 and 11 of goods. Within these classes, the Complainant produces or intends to produce the following electric products: electric household and kitchen appliances (Class 7); electric weighing apparatus, electric flat irons (Class 9); hair dryers, hand dryers, electric apparatus for preparing food (Class 11).

Dealings between the parties prior to the filing of the Complaint

Both parties submitted identical email records regarding their communications over the potential purchase of the domain name <cloer.com> by the Complainant. (Annex 9 to the Complaint, Annex 4 to the Response).

The Complainant, via email, made an offer to purchase the domain name <cloer.com> from the Respondent on December 19, 2005, for 1,000 USD. This offer was not accepted. The Complainant made a second offer on January 6, 2006, for 4,000 USD. It appears that as a result of this higher offer the Respondent registered the domain name with the domain auction site “www.afternic.com” (“afternic”). The Respondent then asked the Complainant, in an email dated January 6, 2006, to join afternic and place a bid.

The Complainant did not respond to that email and the present proceedings were commenced.

Use of <cloer.com>

From the “eNom WhoIs” results page the disputed domain name was first registered with eNom on June 12, 2003, presumably by the Respondent (no evidence to the contrary was provided). This registration expires on June 12, 2006.

Up until December 2005, any activities of the Respondent in relation to the disputed domain name are unknown to the Panel. As of December 2005, the disputed domain name was apparently being used by “DomainSpa LLC” (Annex 6 to the Complaint). DomainSpa is a domain parking service.

The Complainant submitted a two-page website print-out of “www.cloer.com” dated December 20, 2005. It is in German. It is clear from page one, being predominantly made up of images and English words, that <cloer.com> was temporarily used to advertise electronic products.

Normally, a registrant “parks” its domain name at a parking service. In the present case, no direct facts were placed before the Panel to show that the Respondent parked <cloer.com> with DomainSpa. However, this can be inferred from the following facts. First, the Respondent was quite aware of the use of its registered domain name on this domain parking service. In the Response, he stated that “he had found some electronic items at the parking service (DomainSpa) in the past”. Second, when the Complainant made an online inquiry to purchase the domain name, DomainSpa referred the inquiry to the Respondent. Therefore, on the facts before it, the Panel finds that the Respondent voluntarily parked the disputed domain name at DomainSpa. This finding is important for the discussion under “bad faith” and the discussion relating to paragraph 4(b)(iv) of the Policy.

At the present time, if an internet user types in “cloer.com” the user is automatically taken to the afternic website. The user is presented with a web page stating that:

“This domain is not publicly listed on the exchange. If you would like to make an offer on this domain, use our anonymous offer service (requires Buyer Membership). Thank you for using Afternic!”

 

5. Parties’ Contentions

A. Complainant

The Complainant submits that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the disputed domain name.

In relation to element (i) of paragraph 4(a) of the Policy Complainant submits that the domain name is confusingly similar (and in fact identical) to the “CLOER” registered trademark.

In relation to element (ii) of paragraph 4(a) of the Policy Complainant submits that the Respondent does not have any rights or legitimate interests in respect of the domain name because the Respondent’s name is different from “cloer”. The Complainant also states under this heading that “the Respondent intends to participate in the complainant’s reputation concerning the trademark”. This argument is more properly to be considered under the “bad faith” heading.

Finally, as regards the “bad faith” element, element (iii) of paragraph 4(a) of the Policy, the Complainant argues that the domain name <cloer.com> was registered primarily for the purpose of selling, renting or otherwise making money with it, notably by placing it with a domain parking service which offers paid search results.

B. Respondent

As to the element of “identical or confusingly similar”, the Respondent does not deny that this is the case.

In relation to the Respondent’s rights or legitimate interest in the disputed domain name, the Respondent makes two separate submissions. First, he says that the word “cloer” is a common German name and therefore anyone, including the Respondent, is entitled to use the domain name <cloer.com> for their “name based business”. In support of the argument that where a generic domain name is in dispute the rights/interest analysis tends to favor the domain name holder the Respondent cited: Sloan Captial Companies & Stuart M Sloan v. Sloan E-mail Services, WIPO Case No. D2001-0138 (“Sloan”) and Investone Retirement Specialists Inc. v. Motohisa Ohno, WIPO Case No. D2005-0643 (“Investone”). Second, the Respondent submits that the Complainant’s trademark is neither famous nor well-known and is therefore not entitled to broad scope protection. In support of this submission, the Respondent refers to the email correspondence and the fact that an employee of the Complainant said that the Complainant was a “small company”.

Regarding the third and final element, 4(a)(iii), the Respondent cites Vertical Computer Systems, Inc v. Registrant of “pointmail.com”, WIPO Case No. D2001-0006 and Alfabet Meta-Modeling AG v. Henrik Rambe, WIPO Case No. D2001-1205 (“Alfabet”) in support of the proposition that putting a domain name on auction is not always an indication of bad faith. The Respondent also deals with the DomainSpa parking service and the fact that <cloer.com> previously redirected the user to an electronic products advertising page. The Respondent argues that these products were not “kitchen” electronic products and therefore did not compete with the Complainant’s products.

 

6. Discussion and Findings

To succeed in its request for the transfer of the disputed domain name, the Complainant must establish that, with respect to the domain name in question:

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

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

There is no dispute on this point as the Respondent has effectively conceded that the disputed domain is identical to the registered trademark “CLOER’. This element is satisfied.

B. Rights or Legitimate Interests

The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the domain in question: Investone Retirement Specialists, Inc. v. Motohisa Ohno, WIPO Case No. D2005-0643. The Respondent can then in response offer evidence to rebut the prima facie case by making reference to the three grounds under paragraph 4(c) of the Policy or other relevant grounds.

The Complainant has not licensed or otherwise permitted the Respondent to use its trademark. The Complainant refers the Panel to the fact that the Respondent’s name is different to “cloer”. This shows that prima facie, as an individual, the Respondent is not commonly known by the domain name. The Complainant further shows that the disputed domain name was previously placed on DomainSpa (Annex 6 to the Complaint) and is now currently up for auction (Annex 8 to the Complaint).

The Respondent has put forward various arguments under the “rights or legitimate interest” heading. However, the Respondent places the wrong emphasis on his argument. The Respondent focuses on reasons why the Complainant allegedly does not have rights or legitimate interests in the domain name, rather than why the Respondent does have rights or legitimate interests.

Generic Domain Name

The Respondent refers to the fact that the word “cloer” is a common German name. He cites Sloan Captial Companies & Stuart M Sloan v. Sloan E-mail Services, WIPO Case No. D2001-0138 as authority for the proposition that in cases where a generic domain name is in dispute, the rights or legitimate interests analysis tends to favor the domain name holder. The Sloan decision is not authority for this proposition.

Whether or not a domain name is generic is more relevant when discussing bad faith and is dealt with below.

Extent of the Complainant’s reputation

The Respondent refers to the fact that there is allegedly no evidence that the Complainant’s trademark is well known and thus deserving of a broad scope of protection. The truth of such a fact does not serve to show that the Respondent has rights or legitimate interests in the domain name. This will be relevant for the purposes of bad faith.

Conclusion

In conclusion, the Respondent has not offered evidence that rebuts the prima facie finding that he has no rights or legitimate interests in the disputed domain name. From the facts before the Panel, it appears that the Respondent is a speculator. A speculator registers domain names, hoping that others will seek to buy or license the domain names from it. A speculator does not have any specific use in mind at the time of registration. Such conduct does not fall within any of the circumstances provided under paragraph 4 of the Policy as evidence of rights or legitimate interests in the domain name. As stated in J Crew International, Inc. v. crew.com, WIPO Case No. D2000-0054:

“[The conduct of a speculator] precludes others who have a legitimate desire to use the name from doing so. Persons precluded by such conduct may be those who have no prior right or interest in the name, as well as those who have a demonstrable prior interest in the name. Speculation is not recognized by the Policy as a legitimate interest in a name, and the Policy should not be interpreted to hold that mere speculation in domain names is a legitimate interest. To hold otherwise would be contrary to well established principles that preclude mere speculation in names and trademarks and would encourage speculators to appropriate domain names that others desire to put to legitimate use. Ultimately, speculation in domain names increases costs to the operators of websites and limits the availability of domain names.”

In the present case the Respondent has not at any stage put the impugned domain name to a use recognized by the Policy as one which amounts to a legitimate one. Accordingly, the Panel concludes that the Respondent has neither rights nor a legitimate interest in the domain name <cloer.com>.

C. Registered and Used in Bad Faith

Subparagraph 4(b) of the Policy gives circumstances that, in particular, if they are found to exist by the Panel shall be evidence of the registration and use of a domain name in bad faith. These circumstances include:

“(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.”

Subparagraph (ii) is not relevant here as no evidence was put forward of a “pattern of conduct” on the Respondent’s part, although the Panel is aware from other WIPO cases in which the Respondent has been involved that he most certainly owns many domain names and puts many of these up for auction. Subparagraph (iii) is not relevant either.

The facts of the present dispute are very similar to the Investone case, another case involving the Respondent. In that case, the Respondent had registered the domain name <investone.com> in August 2003, placed it for some time on DomainSpa and eventually put it up for auction on the afternic webpage. In November 2003, the Complainant filed a trademark application, which was successful in May 2005. It then attempted to purchase the domain name from the Respondent, just as in the present case. Before any agreement was reached, the Complainant began WIPO proceedings. The Panel found in favour of the Respondent on the grounds that, on the facts before them, they could not find bad faith. It is the view of the Panel that the Investone decisions can be distinguished on the facts. This is dealt with below.

(i) Registered primarily for selling to the Complainant

The act of auctioning a domain name on a publicly available website does not always constitute bad faith: Investone, Educational Testing Service v TOEFL, WIPO Case No. D2000-0044. As stated in the Investone case:

“It is clear that relief is predicated on the fact that the Respondent is targeting the Complainant, directly or indirectly. The Policy does not contain any per se prohibition against trafficking in domain names.”

In order for an entity to target another, the person/entity who targets must possess some form of knowledge of the person/entity targeted. Therefore how generic the disputed domain name is, combined with the extent of the Complainant’s reputation, will be relevant in deciding this question of “targeting”. The extent to which a domain name is generic is important because, as stated in the Alfabet case, it means that:

“the Registrant of a domain name incorporating a generic term may well have registered and even used the domain name based on an bona fide assumption that the term incorporated in the domain name is generic and not reflective of a protected mark”.

In the present case, the Respondent argues that he was unaware of the existence of the Complainant’s trademark. He further argues that the reputation in the trademark “CLOER” is limited. The Respondent’s comment that the Complainant must be a small company because a representative of the Complainant said so during negotiations between the parties has little evidential weight. The Complainant’s representative was attempting to obtain the best price and no doubt made such comments with that in mind.

On the evidence, when the impugned domain name was parked with DomainSpa, the link was made to a site advertising electronic products. As far as the Panel is aware, the function of a domain parking service is to advertise. This advertising function is used by domain name registrars and internet advertising publishers. When a user types in an inactive domain name in the address toolbar, the parking service will usually redirect the user to a page of advertising links, links which have been instantaneously assembled based on the keywords of the domain name and designed to predict the user’s interest in that domain name. As stated by the Respondent, the word “cloer” is a German proper name and has no particular meaning. If the user was being redirected to a web site with advertising for electronic products, the word “cloer” as a trigger mechanism must have been associated with electronic products. The only company that the Panel is aware of that sells electronic products under the name “cloer” is the Complainant. This is evidence that the Respondent was aware of the Complainant company.

Although the Respondent lives in a country where, as far as the Panel is aware, Cloer products are not directly distributed, a Japanese google search provided by the Respondent (Annex 5 to the Response) shows that the first search result seems to be a Cloer “donut maker” product. A Japanese google search carried out by the Panel and confined only to Japanese sites, gave slightly different results. The top result was a link to a Japanese site, which included under the link the name of the Complainant. The second result was the donut maker link. Clicking on this link takes the user to a picture of a donut maker, with the Complainant’s trademark in bold letters across the top of the product.

In light of this evidence, the claim is unconvincing that the Respondent had no knowledge of the Complainant. The above facts serve to rebut any presumption that the Respondent may have registered the domain name on a bona fide assumption that the term did not reflect a protected trademark.

The Respondent registered the domain name then placed it on a parking service, which redirected the user to a website advertising electronic products. When the Complainant made offers to purchase the name, the Respondent placed it up for auction. In the Respondent’s words, this was in order to be “fair” to other potential purchasers. However, the Panel perceives this move to be financially motivated rather than fairness motivated. These facts are distinguishable from Investone as in that case, the domain name was already up for auction when the Complainant made an offer.

Accordingly, the Panel finds that the present circumstances are such to show that the Respondent registered the domain name with the primary purpose of targeting the Complainant, with the goal of obtaining a higher price for the domain name <cloer.com> than would have been possible if the Complainant were not targeted.

(iv) Use of the domain name to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark

The effect on consumers of the Respondent’s placement of the disputed domain name on DomainSpa falls under this heading. Again, the Investone fact scenario is distinguishable from the present case. In Investone it was decisive that when a user typed in <investone.com> he or she was redirected to a page with many different product links, including investment, health, beauty, gifts and vacation links. Here, the user was redirected to a site full of electronic products only. The Panel accepts the Respondent’s submission that this site did not display kitchen appliances but instead advertised for electronic items such as cameras, televisions, headphones and video recorders. Contrary to the Investone case, there is no broad mix of products, only electronic products.

In order for the Panel to be satisfied under this heading, the Respondent must have intentionally attempted to attract business to his site by creating a likelihood of confusion. The threshold is high and the Complainant has not put forward any specific evidence on point. In these circumstances, the Panel cannot find that the Respondent intentionally attempted to attract internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark.

Conclusion

The Panel has found that the Respondent registered the disputed domain name for the primary purpose of transferring the domain name to the Complainant in an excessive amount. Accordingly, as per paragraph 4(b) of the Policy, this is taken as evidence of use of the domain name in bad faith. The third element of paragraph 4(a) is made out.

 

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 <cloer.com> be transferred to the Complainant.


David A.R. Williams QC
Sole Panelist

Dated: 29 March 2006