WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Bahn AG v. Giocchino Zerbo
Case No. D2007-1490
1. The Parties
The Complainant is Deutsche Bahn AG, of Berlin, Germany, represented by Iris Dorfeldt, Germany.
The Respondent is Giocchino Zerbo, of Senna Comasco, Italy.
2. The Domain Name and Registrar
The disputed domain name <deutschebahn.com> (the “Domain Name”) is registered with Dotster Inc, of Vancouver, United States of America (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on October 10, 2007 and in hardcopy on October 15, 2007. On October 12, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On October 12, 2007, the Registrar 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 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 October 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2007.
The Center appointed Dr. Bernhard F. Meyer-Hauser as the sole panelist in this matter on November 22, 2007. 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 is an international transport and logistic company, registered as a private cooperation. The Complainant and its subsidiaries employ over 230,000 people.
The Complainant is the owner of several national, European and International trademarks related to DEUTSCHE BAHN, BAHN or DB. In Germany, the mark DEUTSCHE BAHN DB was registered in 1998.
The Respondent is an individual domiciled in Italy.
The Domain Name was according to the Whois data created on April 8, 2002.
5. Parties’ Contentions
The Complainant objects to the use of the Domain Name by the Respondent and bases its Complaint on the following grounds:
1. The Domain Name is identical and confusingly similar in its substantive part to the trademark in which the Complainant has rights.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has acquired no trademark in respect of the Domain Name.
3. The Domain Name was registered and is being used in bad faith. The website of the Respondent only consists of links to different websites. By relating to the Complainant on the website corresponding to the disputed Domain Name, the Internet user is misled to sponsored links using the prominent name of “Deutsche Bahn”.
The Complainant requests the Panel to order a transfer of the Domain Name from the Respondent to the Complainant.
The Respondent did not submit a Response to the Complaint, although he was validly notified by the Center of this proceeding and was invited to answer the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) the respondent’s 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 respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
In this case, the Domain Name <deutschebahn.com> combines the registered trademark DEUTSCHE BAHN DB in its entirety without the suffix “DB”. Omitting the suffix “DB” does not render the Domain Name significantly different from the Complainant’s DEUTSCHE BAHN DB trademark.
The Panel finds that the Complainant, therefore, has fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the following circumstances can demonstrate rights to and legitimate interests of a respondent in a domain name:
(i) before any notice was given to the respondent of the dispute, the respondent used, or demonstrably made preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has not acquired any trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no material before the Panel to indicate that the Respondent in the present proceedings is making a legitimate non-commercial or fair use of the Domain Name. The website at the disputed Domain Name lists sponsored links of third parties and it thus appears to have the sole purpose to generate pay-per-click revenue. The case file does not include any evidence suggesting a bona fide offering of goods or services, or a non-commercial or other fair use of the Domain Name. The Respondent is apparently named “Giocchino Zerbo” and there is nothing before the Panel to establish that the Respondent is commonly known by the Domain Name.
For the reasons set forth above and in the absence of a rebuttal by the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in the sense of paragraph 4(c) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, a domain name has been used and registered in bad faith if:
(i) circumstances indicating that respondent has registered and 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
In this case, the Respondent registered a Domain Name closely reflecting a trademark (DEUTSCHE BAHN DB) without itself having any apparent right to use such trademark. Absent any discernible right or legitimate interest of the Respondent in the disputed Domain Name, and absent any conceivable good faith use, the Panel concludes that the Respondent’s sole intention appears to attract Internet users to sponsored links in order to generate pay-per-click revenue by creating a likelihood of confusion with the Complainant’s mark. Such behaviour, which is presumably also preventing the Complainant from reflecting its trademark in a corresponding domain name, indicates bad faith.
In sum, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <deutschebahn.com> shall be transferred to the Complainant.
Dr. Bernhard F. Meyer-Hauser
Dated: November 29, 2007