WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hess Group AG v. Eurobox Ltd./Whois privacy services, provided by DomainProtect LLC. / “Hess Group LTD”
Case No. D2008-0060
1. The Parties
The Complainant is Hess Group AG, Liebefeld-Bern, Switzerland, represented by Kellerhals Hess Rechtsanwälte, Switzerland.
The Respondent is Eurobox Ltd./Whois privacy services, provided by DomainProtect LLC, St. Petersburg, Russian Federation / “Hess Group LTD”, Liebefeld-Bern, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <hess-group.com> is registered with Nicco Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2008. On January 16, 2008, the Center transmitted by email to Nicco Ltd. a request for registrar verification in connection with the domain name at issue. On February 5, 2008, Nicco Ltd. transmitted by email to the Center its verification response but stating that the registrant of the domain name was different than the one stated in the Center’s request for Registrar verification. On February 29, 2008, the registrar informed the Center that the Complainant, Hess Group AG was the domain name registrant. There was apparently an effort to arrange transfer of the domain name to Complainant and therefore, the Center suspended initiation of the case until March 20, 2008. However, when that effort did not prove successful, Complainant requested the Center to re-initiate the case following a letter from Complainant’s attorney on March 17, 2008. 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 in both the English and Russian languages of the Complaint, and the proceedings commenced (with covering communications advising of the Complaint in both Russian and English) on April 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2008.
The Center appointed Paul E. Mason as the sole panelist in this matter on June 2, 2008. 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.
On the question of language to be used in the proceedings, Complainant’s attorney has requested them to be in English, while Respondent – a Russian entity – did not make any contrary request. The Panel notes that normally under the Policy, the proceedings are held in the language of the domain name registration agreement – in this case, Russian – but that the Panel has the discretion to use a different language if it can be shown that this choice would not prejudice either party and when choice of the language of the registration agreement could prejudice one of the parties.
In its letter to the Center dated March 31, 2008, the Complainant’s attorney pointed out that English is not the native language for either the Complainant (Swiss-German) or the Respondent (Russian), and that the Respondent has mounted websites in English with other domain names as well as this one, and has, through its lawyers, corresponded with Complainant’s attorney in English. This was documented by attaching an email from Respondent’s law firm “Konsul” to Complainant’s attorney in English dated March 14, 2008.
For these reasons, the Panel finds that it will be appropriate and does not unduly prejudice either side to conduct these proceedings in English. However, the Panel must instruct the Complainant not to submit exhibits and annexes in German if it wishes to conduct the proceedings in English, unless these are accompanied by official translations into English. In this case, the main item in German was the Swiss Commercial Registration certificate which fortunately, has no bearing on the outcome of the case. The other annexes in German dealing with the trademark registrations were sufficiently simple for the Panel to understand.
The Panel further notes that the appropriate Respondent in this case would appear to be “Eurobox Ltd” and that the reference in the Whois and paragraph 2 above to “Hess Group Ltd” should not be construed as suggesting that the Complainant itself is a respondent here. See e.g. Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886. Rather, it may simply be a reflection of the apparently unsuccessful attempt to previously settle the matter. Domain Protect LLC appears to be a privacy protection service, and may accordingly be disregarded as a Respondent, for present purposes.
4. Factual Background
According to Complainant, the Hess Group is based in Switzerland and has registered the trademark HESS [figure] GROUP in the commercial category of wines on May 25, 2004 for a 10-year term through May 25, 2014. (Swiss trademark registration number 829210, see Annex 5 to Complaint.)
On November 22, 2006, Respondent registered the domain name. Complainant had registered a similar domain name at the cc. level, <hess-group.ch> but on its own admission erroneously let this latter .ch domain name lapse without renewing it.
On August 9, 2007, the Complainant obtained the WIPO Madrid system trademark registration, and on January 15, 2008, obtained the Swiss registration of its trademark.
5. Parties’ Contentions
Complainant contends that:
- The domain name is almost identical to its registered trademark, with only a hyphen differentiating the two;
- Respondent has no rights or legitimate interests in the domain name, as it is not using the domain name for a bona fide offering of goods or services;
- Respondent has registered the domain name in bad faith, evidenced by Respondent’s past pattern of registering domain names belonging to other trademark holders for the purpose of selling the domain names back to these trademark holders; and
- Respondent has been using the domain name in bad faith, evidenced by the fact that the website corresponding to the domain name is empty and only used to post notices for sale of the domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that a simple hyphen is a small distinction without a legal difference, amounting to “typosquatting” as defined and denied by a myriad of WIPO UDRP decisions. See e.g. Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No. D2003-0707. The Panel finds for Complainant under the first element of the Policy.
B. Rights or Legitimate Interests
Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the domain name. Inasmuch as the Respondent has not replied to these contentions, the Panel finds that Respondent has failed to meet the burden of proof shifted to it, that it does have rights or legitimate interests. Therefore the panel finds for Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
There are two issues for the Panel to discuss and define here.
First, was the domain name registered in bad faith? Here again, we deal with two sub-issues, one concerning timing and the other territorial scope of the effect of Complainant’s trademark.
On timing, Complainant did register its trademark in Switzerland on May 25, 2004 – over two years before Respondent registered the domain name. So there can be no question that Complainant did stake its trademark claim well in advance of the registration of the domain name, even though its Madrid system trademark was registered some time after the domain name was registered.
On the question of territorial effect, the Policy does not require that a trademark be registered or protected in Respondent’s country or the country of the registration agreement, or in any particular country for that matter. See text of UDRP and WIPO decisions such as Frank E. Rijkaard v. Mark Pérez-Tejero, WIPO Case No. D2004-1044; Douglas Benson Spong & Maria Spong v. Opper Sports, Inc., WIPO Case No. D2002-0381; and Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786.
The Panel is satisfied in the circumstances that the Respondent likely knew of the Complainant and its HESS GROUP trademark when it registered the disputed domain name.
Registered in bad faith: the Panel has reviewed past UDRP cases where this same Respondent has been engaged in such behavior. Without further word to the contrary from Respondent, the Panel finds that the domain name was registered in bad faith.
Used in bad faith: Although a visit by the Panel on June 3, 2008 to the website “www.hess-group.com” did not resolve to anything, annex 7 to the Complaint is a printout of the website “www.hess-group.com” dated January 3, 2008. The web page contains only a notice that the domain name is for sale. This is one of the core elements defining bad faith use of a domain name – using it not for bona fide provision of goods and services, but for the purpose of selling it for a price based on its confusing similarity to an existing trademark. As such, the Panel finds that the domain name has been used in bad faith.
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 <hess-group.com> be transferred to the Complainant.
Paul E. Mason
Dated: June 3, 2008