WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Heidelberger Druckmaschinen AG v. Wayne Graham (Trading) Limited
Case No. D2006-1131
1. The Parties
Complainant is Heidelberger Druckmaschinen AG, Heidelberg, Germany, represented by Carpmaels & Ransford, United Kingdom of Great Britain and Northern Ireland.
Respondent is Wayne Graham (Trading) Limited, Rothwell, Leeds, West Yorkshire, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <used-heidelberg.com> and <usedheidelberg.com> are both registered with TierraNet d/b/a DomainDiscover.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2006.
On September 5, 2006, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the domain names at issue.
On September 6, 2006, TierraNet d/b/a DomainDiscover transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact, however without indicating the date of expiry of the domain names <used-heidelberg.com> and <usedheidelberg.com>.
On September 13, 2006, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request to indicate the date of expiry of the domain names <used-heidelberg.com> and <usedheidelberg.com>. On the same day, TierraNet d/b/a DomainDiscovery complied with the request.
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 Respondent of the Complaint, and the proceedings commenced on September 13, 2006.
In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2006. Respondent did not submit any response.
Accordingly, the Center notified Respondent’s default on October 4, 2006.
The Center appointed Wolter Wefers Bettink as the Sole Panelist in this matter on October 17, 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 in the business of manufacturing, amongst other things, printing presses. Complainant is the owner of at least four trademark rights:
- the United Kingdom device mark HEIDELBERG, registered as of May 20, 1987, for, among other things, “Printing works machines and rotary printing machines; high speed presses” in the international class 7, under registration number 1310488;
- the United Kingdom device mark HEIDELBERG, registered as of July 15, 1994, for, among other things, “Printing machines and parts and fittings therefore” in the international class 7, under registration number 2011768;
- the Community figurative trademark HEIDELBERG, registered as of May 10, 2000 for, among other things, “Machines and apparatus for use in the graphic industry, in particular printing presses” in the international class 7, under registration number 1649177;
- the United States word mark HEIDELBERG, registered as of December 7, 1977, for, among other things, “Printing machines and rotary printing machines” in the international class 7, under registration number 1117568.
Respondent registered the domain name <used-heidelberg.com> on April 12, 2001. On June 3, 2004, Respondent also registered the domain name <usedheidelberg.com>.
5. Parties’ Contentions
Complainant relies on its trademark rights in the name and device HEIDELBERG. According to Complainant, these rights have previously been established before a Panel in Heidelberger Druckmaschinen Aktiengeseelschaft v. Insol Informática, WIPO Case No. D2003-0148.
Complainant contends that its trademarks are well-known worldwide. It has been in the printing machine business for more than a century and has offices worldwide, and, according to its annual report, with a workforce of several thousand.
The domain names <used-heidelberg.com> and <usedheidelberg.com> are confusingly similar to Complainant’s registered and unregistered marks, as they incorporate in their entirety Complainant’s trademark HEIDELBERG. The prefixes “used” and “used” are non-distinctive, according to Complainant.
Complainant contends that Respondent sells refurbished printing presses, but does not trade under nor has any rights in the name HEIDELBERG. Respondent has no connection with Complainant and is not an authorised distributor, re-seller or repairer of Complainant’s products. Respondent has no permission to apply for any domain name incorporating Complainant’s mark.
Complainant further refers to a number of cases in which WIPO Panels have reached the conclusion that it is not legitimate practice to register a domain name incorporating a Complainant’s registered trademark, together with the word “used”, indicating that Respondent’s website sells secondhand or “pre-owned” goods bearing that trademark.
By registering the domains <used-heidelberg.com> and <usedheidelberg.com>, Respondent is making illegitimate commercial and unfair use of the domain names with intent for commercial gain by diverting consumers to its website. Complainant also sells refurbished printing presses and therefore is a direct competitor of Respondent in the market for these goods.
Furthermore, Complainant points out that Respondent has not replied to its emails, but has subsequently changed the websites under the domain names. On August 2, 2005, Complainant transmitted to Respondent by e-mail and post a request to transfer the domain names to Complainant. At the time, the domain names redirected visitors to the website at “wwwwaynegraham.com”. According to the letter from Complainant to Respondent on October 28, 2005, Respondent had ceased linking the disputed domain names to his website “www.waynegraham.com”. According to a letter from Complainant of June 21, 2006, the domain names were at that time used for hosting a search engine and listing a directory operated by BNMQ. According to Complainant, the use of its domain name for a landing page constitutes a form of bad faith under the Policy.
Complainant also wishes to rely on various Panel decisions, in which, according to Complainant, Panels have decided that the registration of another party’s trademark in a domain name constitutes bad faith.
Respondent did not reply to Complainant’s contentions.
6. Due Process
Pursuant to paragraph (e) of the Policy, “if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
There is widespread consensus among WIPO Panels that Respondent’s default does not automatically result in a decision in favor of Complainant. In order to be successful, Complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although the Panel may draw negative inferences from Respondent’s default, Complainant is required to support its assertions with actual evidence in order to succeed in a UDRP proceeding. (See: The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383.
7. Discussion and Findings
Complainant has put forward that the laws of England and Wales should be applied to this case. However, since Complainant is established in Germany and Respondent in the United Kingdom, the Panel finds that there is insufficient legal basis for applying the laws of a specific country. Nor is it necessary to do so, since the UDRP provides a well-established and proven set of provisions to decide cases like this.
A. Rights in a name, Identical or Confusingly Similar
Complainant has provided sufficient evidence that it has trademark rights in the name HEIDELBERG.
Heidelberg is the name of the town in Germany where Complainant is located, but the Complainant’s trademark is not used to denote this town.
The domain names are confusingly similar with Complainant’s trademarks. The domain names incorporate the trademarks of Complainant, preceded by the prefix “used”. This is a generic and non-distinctive term and does not detract from the confusing similarity (see Koninklijke Philips Electronics N.V. v. Lewis & Clark, Inc., WIPO Case No. D2001-1344; Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
B. Rights or Legitimate Interest
The Panel finds that Complainant has shown that Respondent does not have any (trademark or other) rights in respect of the domain name, nor a legitimate interest.
An authorized sales or services agent may have a legitimate interest in a domain name incorporating a trademark, if Respondent satisfies the requirements set out in, inter alia, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095; Hexagon AB, Hexagon Metrology AB, Hexagon Holdings, Inc., Hexagon Metrology GmbH, Hexagon Metrology Nordic AB, Hexagon Metrology SpA, Brown & Sharpe, Inc., C.E. Johansson Ltd., Sheffield Measurement, Inc., Romer, Inc., Wilcox Associates, Inc. v. Xspect Solutions Inc., WIPO Case No. D2005-0472.
There is no evidence that Respondent is an authorized reseller or repairer of Complainant’s products, nor did Complainant permit Respondent to register the disputed domain names.
C. Registered and Used in Bad Faith
Complainant has also demonstrated that the domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive number of circumstances that shall be evidence of the registration and use of a domain name in bad faith:
(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 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 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.
The Panel is satisfied that Respondent had prior knowledge of Complainant’s trademarks, as it sold and sells Complainant’s products on its website under “www.wyanegraham.com”.
Furthermore, the evidence indicated that Respondent is a competitor of Complainant in that both sell used Heidelberg printing machines and other brands of used printing machines. The fact that Respondent has not replied to any of the letters from Complainant, nor has filed a Response is, under the circumstances of this case, an indication of bad faith.
Finally, there is sufficient evidence that Respondent, by the registration and use of the domain names, attempted to attract Internet users for commercial gain to his website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or the products or services on its website. Apparently, Respondent initially linked the domain name to its website under “www.waynegraham.com”. When approached by Complainant, Respondent redirected the disputed domain names to a landing site with presumably paid up advertising listings and links to various websites, inter alia concerning used printing machinery, but also schools, universities, hotels and holidays.
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 names <usedheidelberg.com> and <used-heidelberg.com> be transferred to Complainant.
Wolter Wefers Bettink
Dated: October 31, 2006