WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tomas Sziranyi v. RegisterFly.com
Case No. D2006-0320
1. The Parties
The Complainant is Tomas Sziranyi, Heinsberg, Germany, represented by Höcker Rechtsanwälte, Germany.
The Respondent is RegisterFly.com, West Orange, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <funtomas.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2006. On March 15, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 15, 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 March 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2006.
The Center appointed Knud Wallberg the sole panelist in this matter on May 18, 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
Complainant is the registered proprietor of the trademark FUNTOMAS, registered with the German Patent and Trademark Office under Registration No. 399 167 07.2 for clothing, footwear, hats in class 25, paper, paperboard and goods made of paper or paperboard in class 26, as well as embroidery and lace in class 16. Complainant is currently using the mark.
No information has been provided on or by the Respondent as to Respondents rights and activities (if any).
5. Parties’ Contentions
The disputed domain name is identical to Complainant’s service mark, since the .com extension shall be regarded as irrelevant.
The Complainant further claims that Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint.
The Respondent is not a licensee of the Complainant and is not otherwise authorized to use the Complainant’s mark.
The Respondent is not commonly known by the domain name and also there is no legitimate noncommercial or fair use of the name in question. The domain name in question is thus not used in connection with a bona fide offering of goods or services, either. Respondent itself does not offer any goods or services at all. The site simply states that the Respondent is currently working on it. The Respondent’s failure to use, or prepare to use, the domain name in a bona fide offering of goods and services indicates that the Respondent has no legitimate interest in the domain name.
Finally Complainant claims that the domain name was both registered and is being used in bad faith.
In December 2005, the Complainant discovered that the first owner of the domain name<funtomas.com>, Mr. Wilko Wolpert, presented various links under the domain name that led to websites of competitors of the Complainant.
The first owner offered the website for sale on the German domain trading platform sedo.de. In a letter dated December 13, 2005, Sedo´s managing director confirmed that the first owner himself selected the links to the linked competitors´ websites. For every click on one of the presented links the first owner obtained a payment which was collected by Sedo GmbH.
On December 13, 2005, the Complainant sent a cease and desist letter to the first owner and asked him to refrain from the unlawful use of the domain and to release it. The first owner did not react to the letter.
On December 28, 2005, the Complainant obtained a prohibitory injunction against the first owner before the Cologne district court, that ruled the use of the domain unlawful.
Consequently, on December 29, 2005, the first owner signed a declaration of forbearance in which he undertook to release the domain <funtomas.com>.
On January 14, 2006, the Complainant found that the domain was still registered. The name of the domain owner, however, was no longer visible in the whois database. The Registrant had hidden behind a so called whois protection service.
On January 17, 2006, the Complainant called on the first owner to fulfill his obligation and to release the domain. On the same day the first owner alleged that he had already released the domain.
The Complainant contends that the circumstances of the domain name registration by the first owner show that the domain name was originally registered and used in bad faith.
The following facts show the current owner´s bad faith in both registering and using the domain. The Complainant alleges that it seems very likely that the current owner is still identical with the original registrant:
- The new registration of the domain coincides with the cease and desist letter and the prohibitory injunction against the first owner. The name “Funtomas” is a fanciful name that has no actual meaning. It is, therefore, extremely unlikely that a third party incidentally came up with the same name. In particular it is unlikely that this could have happened so quickly, i.e. immediately after the cease and desist letter had been sent to the first owner.
- Obviously the “new” domain owner knows about this complaint as he prefers to remain unknown. He uses a so-called “IDentity Shield” service to cover his or her identity.
- The “new” domain owner still makes no use of the domain. It has chosen to “park” the site, instead.
- In his communication with the Complainant the first owner has not denied that he is still (or again) the domain owner.
- Respondent has no business related to the domain name.
The Complainant argues that, taken together, these circumstances indicate that the domain name has been registered and is used in bad faith, namely by the first owner now hiding his identity behind an “IDentity Shield” or at least by somebody else to whom the first owner collusively transferred the domain in order to avoid its release.
The Respondent did not reply to the Complainant’s contentions.
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 and on the basis of the Complaint where no Response has been submitted.
In accordance with Paragraph 4(a) of the Policy, Complainant must prove that each of the three following elements are satisfied:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
A. Identical or Confusingly Similar
The domain name <funtomas.com> is identical to Complainant’s distinctive trademark. The inclusion of the gTLD denomination “.com” shall be disregarded for the purpose of these proceedings.
The requirements in the Policy, paragraph 4(a)(i) are therefore fulfilled.
B. Rights or Legitimate Interests
Complainant alleges that Respondent has no rights or legitimate interests in the domain names. Respondent has not rebutted this allegation and, based on the record of this case, it is unlikely that any such rights or interests may exist.
Complainant has further not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark.
“Funtomas” is a coined word that has no specific meaning. It can therefore be ruled out that Respondent can claim to use the contested domain name for any generic or informative purpose.
The requirements of the Policy, paragraph 4(a)(ii) and paragraph 4(c) are also considered fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
“(i) circumstances indicating that you [Respondent] 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 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 your website or location or of a product or service on your website or location.”
Based on the information provided by the Complainant including in particular the court decision from the Cologne District Court the Panel finds that the domain name was registered and was used in bad faith by the original Registrant.
The facts of the case gives rise to consider the question whether the sudden change of Registrant during the proceedings which precedes the UDRP complaint is in fact a case of “cyberflight”, i.e. a case in which the name of the Registrant appears to be new but where the Registrant is in reality the same as the previous. In that case the acts of the previous Registrant may be taken into account by the Panel when deciding the case.
The burden of proof lies with the Complainant. However, since the new Registrant has decided to conceal his identity it is not possible for the Complainant to put forward positive proof to this effect. Complainant has put forward the allegations of cyberflight in the Complaint, so the Respondent has had every opportunity to present his case and thus to rebut the allegations. Respondent did not file a Response. According to paragraph 14(b) of the Rules the Panel shall draw such inferences from Respondent´s failure to respond as it considers appropriate.
The Panel is of the opinion that the facts and arguments presented entails that it is more likely than not that the successive registrants are in effect the same. As stated in ABB Asea Brown Boveri Ltd. v. Yvonne Bienen, Bienen Enterprises, WIPO Case No. D2002-0178, the successive names provided in the Whois data could be “either an alias of the original registrant or one of its alter ego, being the name of another entity selected by the original registrant to suit his cyberflight purpose”. Cyberflighting is in itself a clear indication of bad faith registration.
In addition, the current use of the domain name for a website that is under construction is liable to disrupt the business of the Complainant, since it gives users of the Internet who seeks information on Complainant and his activities the impression that Complainant is not actively present on Internet.
Considering all the facts and evidence presented above, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are met.
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, <funtomas.com>, be transferred to the Complainant.
Dated: May 29, 2006