The Complainant is Hein Gericke Deutschland GmbH, of Duesseldorf, Germany.
The Respondents are River Cruise Investments Ltd. and William Vaughan, of Springfield, Australia.
The disputed domain name <heingericke.com> is registered with InnerWise, Inc. d/b/a ItsYourDomain.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2008. On August 14, 2008, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain name at issue. On August 14, 2008, InnerWise, Inc. d/b/a ItsYourDomain.com transmitted by email to the Center its verification response confirming that the Respondents were listed as the registrant and providing the contact details.
Having noticed several deficiencies, the Center invited on August 21, 2008 the Complainant to amend its Complaint, to submit it electronically and to demonstrate that the fees had been duly paid. Due to technical deficiencies, the Complaint Deficiency Notification apparently only reached the Complainant on August 26, 2008. On the same day, the Complainant requested the Center to grant it another five days, amended its Complaint, sent it electronically and brought evidence that the payment had been duly made. The amended Complaint was received in hardcopy by the Center on August 29, 2008.
The Center verified that the Complaint and amended 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 Respondents of the Complaint and Amended Complaint, and the proceedings commenced on September 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2008. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on September 26, 2008.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on October 3, 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.
The Complainant is a German producer and reseller of motorbike accessories, clothing, protective wear, spare parts and other goods related to motorbike equipment. The Complainant owns several trademarks:
- the German combined trademark “HEINGERICKE” (N. 1005955), which is protected under classes 6, 8, 9, 11, 12, 20, 25, was registered on August 4, 1980 with a priority date of March 22, 1980;
- the international combined trademark “HEINGERICKE” (N. 456512), which is protected in Austria, Benelux, France and Switzerland under classes 7, 8, 9, 11, 12, 18 and 25, was registered on August 16, 1980 with a priority date of March 22, 1980.
- the German combined trademark “HEINGERICKE” (N. 1104643), which is protected under classes 8, 9, 11, 12 and 25, was registered on April 9, 1987 with a priority date of September 17, 1986.
- the international combined trademark “HEINGERICKE” (N. 520297), which is protected in Spain, Italy and Liechtenstein under classes 7, 8, 9, 11, 12, 18 and 25, was registered on October 20, 1987 with a priority date of September 17, 1986
The Complainant runs an Internet shop under the domain <heingericke.de>.
The Respondents registered the domain name <heingericke.com> on May 3, 2001. The website currently links to a portal website. The Respondents did not file a response to the proceedings.
From a factual point of view, the Complainant asserts that it enjoys a worldwide reputation for quality motorcycle products. It claims to have 134 representations and subsidiaries in European countries. Its trademarks would therefore be well-known and enjoy a high reputation amongst motorcyclists as well as those interested in protective wear for outdoor sports. The Complainant does however not bring any evidence related to these assertions, that the Panel will therefore not take into account.
From a legal point of view, the Complainant contends that the relevant part of the domain name at issue, <heingericke.com>, is identical with the verbal element of its trademarks.
The Complainant has neither licensed nor permitted the Respondents to use its trademarks or business names. “Hein Gericke” is the unique name of a natural person, that of the founder of the Complainant; it is not a word that a trader would legitimately choose but to create a likelihood of confusion with the Complainant. The Respondents did not demonstrate that they have any rights or legitimate interests in the domain name at dispute.
The Complainant finally affirms that the domain name has been registered and is being used in bad faith. First of all, the Respondents did not use the domain name in conjunction with a bona fide offering of goods or services. Secondly, the sole business of the Respondents consists of exploiting domain names as intangible assets to try and resale them, as proved by their registration of misspelt well-known trademarks as domain names. Considering the fame of the Complainant's trademarks, the Respondents' behavior would suggest opportunistic bad faith. In addition to that, the Respondents' bad faith would be pointed out by the fact that the domain is used for “link farming”, in the sense that it offers links to competitors of the Complainant on the German market.
The Respondents did not reply to the Complainant's contentions.
Two procedural issues deserve being shortly addressed by the Panel before focusing on the substantive ones.
First of all, the Complaint mentions two Respondents rather than one. The Center invited the Registrar to confirm that both entities were actually registered as Registrants on August 19, 2008. The Registrar confirmed the same day that such was indeed the case. From the documents submitted by Complainant, it appears that River Cruise Investments Ltd and William Vaughan are one and the same entity, as proved by several Complaints filed against both entities (see American Internet Holdings, L.L.C. v. William Vaughan and River Cruise Investments, Ltd., WIPO Case No. D2008-1031; The Procter & Gamble Company v. William Vaughan, River Cruise Investments Ltd., WIPO Case No. D2008-1164). Other cases show the same William Vaughan as co-Respondent with another entity, SMTM Investments Ltd, also both located at Springfield, Australia (Adecco S.A. v. William Vaughan, SMTM Investments Ltd, WIPO Case No. D2008-0095; Deceuninck NV v. William Vaughan, smtm investments ltd, WIPO Case No. D2007-1911). William Vaughan and River Cruise Investments Ltd. share the same postal address and e-mail address, as proved by the fact that the Complaint was delivered in hardcopy to Respondents on September 12, 2008.
Secondly, according to paragraph 4(b) of the Rules, “If the Provider finds the complaint to be administratively deficient, it shall promptly notify the Complainant and the Respondent of the nature of the deficiencies identified. The Complainant shall have five (5) calendar days within which to correct any such deficiencies, after which the administrative proceeding will be deemed withdrawn without prejudice to submission of a different complaint by Complainant.” The Rule is confirmed at paragraph 5(b) of the Supplemental Rules.
In the present case, the notification of the Complaint deficiency was sent electronically on August 21, 2008. For reasons that remain unknown, this notification did apparently not reach the Complainant until August 26, 2008. On that very day, the Complainant requested an extension of the deadline to remedy to the deficiencies. The question as to whether such an extension could exceptionally be granted due to unforeseen events, such as a technical deficiency in the exchange of communications, does however not need to be addressed here. Considering the fact that the Complainant could correct its Complaint's deficiencies on August 26, 2008, it did so within 5 calendar days and thus complied with paragraph 4(a) of the Rules.
Turning to the substantial issues, paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of the Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to the Rules, paragraphs 5(e), 14(a) and 15(a) and will draw such inferences as it considers appropriate pursuant to the Rules, paragraph 14(b).
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent 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.
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proved to be the right-holder of several trademarks whose predominant element consists of the name “Hein Gericke”. There is no doubt that the disputed domain name <heingericke.com> is identical or confusingly similar with these trademarks.
First, the gTLD is a technically necessary element of a domain name, which should not be considered as relevant in appraising the likelihood of confusion between a trademark and a domain name (Tengizchevroil v. Hardinvestments Limited, WIPO Case No. D2002-0061; Joe David Graedon v. Modern Limited – Cayman Web Development, WIPO Case No. D2003-0640; Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493). As such, the mere addition of the gTLD “.com” does not exclude the likelihood of confusion.
Secondly, the mere deletion of the space between “Hein” and “Gericke” does obviously not exclude the similarity between the domain name <heingericke.com> and the “HEINGERICKE” trademarks.
Consequently, the domain name <heingericke.com> being identical to the Complainant's trademarks, the Panel finds that the Policy, paragraph 4(a)(i) has been satisfied.
According to the Policy, paragraph 4(b)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the domain name.
In Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, the panel stated: “Where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.” Subsequent panels have developed a consensus view that where the complainant makes a prima facie case that the respondent has no rights or legitimate interests, it falls to the respondent to show circumstances establishing such rights or legitimate interests. See for example paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and cases cited therein.
In this case, the Complainant has made a prima facie case, and the Respondents have not brought any evidence that would demonstrate any rights or legitimate interests in the domain name as the Respondents did not file a Response. More specifically, the Respondents do not demonstrate that:
(i) before any notice to it of the dispute, they used or 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 Respondents are commonly known by the domain name, even if they have acquired no trademark or service mark rights; or
(iii) the Respondents are making a legitimate noncommercial 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.
On the contrary, the use made by the Respondents of the website located at <heingericke.com> clearly shows their absence of any rights or legitimate interests in the disputed domain name. The website is a portal website which contains several links related to motorbike equipment, the core activity of the Complainant. Two of these links, called “HEIN GERICKE” and “HEIN AND GERICKE”, divert consumers to the Complainant's competitors in German-speaking countries such as Austria, Germany or Switzerland instead of the Complainant's official website as one would expect. While there is nothing per se illegitimate in using a domain parking service, “linking a domain name to such a service with a trademark owner's name in mind and in the hope and expectation that Internet users searching for information about the business activities of the trademark owner will be directed to the parking service page, is a different matter. Such activity does not provide a legitimate interest in that domain name under the Policy”. (Owens Corning v. NA, WIPO Case No. D2007-1143; Express Scripts, Inc. v. Windgather Investments Ltd./Mr. Cartwright, WIPO Case No. D2007-0267). Such is the case here, as proved by the links which all relate to the Complainant's activities. Considering these circumstances, there is no doubt that the Respondents were aware of the existence and activities of the Complainant when they registered <heingericke.com>, and that they have no rights or legitimate interests in the domain name.
Consequently, the Panel considers the Policy, paragraph 4(a)(ii) to be fulfilled.
For a Complaint to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
To have registered the domain name in bad faith, the Respondent must have been aware of the existence of the Complainant. For the reasons given above, there is no doubt in the Panel's view that the Respondents were aware of the Complainant's trademarks at the time they registered <heingericke.com>, an already confusingly similar domain name, as the website expressly mentions HEIN GERICKE to refer to motorbike equipment, the activity conducted by the Complainant.
Although the Complainant does not submit for example any exchange of correspondence it may have had with the Respondents, the Panel is nevertheless satisfied that the way the Respondents use the website clearly demonstrates their bad faith. While the mere fact that the Respondents, in particular William Vaughan, have regularly been involved in domain name disputes is not sufficient per se to rule against them (see American Internet Holdings, L.L.C. v. William Vaughan and River Cruise Investments, Ltd., WIPO Case No. D2008-1031; The Procter & Gamble Company v. William Vaughan, River Cruise Investments Ltd., WIPO Case No. D2008-1164; Adecco S.A. v. William Vaughan, SMTM Investments Ltd., WIPO Case No. D2008-0095; Deceuninck NV v. William Vaughan, smtm investments ltd, WIPO Case No. D2007-1911), such circumstances do not plead in their favor.
Once added to the fact that the domain name at dispute was registered on March 3, 2001 and never led to any active website where the Respondents would have developed a proper business, but merely refers to a portal website containing several links to direct competitors of the Complainant, the bad faith becomes obvious. As stated by a prior panel, “[u]se for a portal linking to websites of the Complainant's competitors is […] one which seeks to profit from confusion with the Complainant”. (Humana Inc. v. Domain Deluxe, WIPO Case No. D2005-0231). In addition to that, the Panel further infers that the Respondents are benefiting from this confusion by receiving “click-through” commissions in accordance with conventional practice on the Internet when customers reach a site through a link on a portal. “In circumstances where a respondent does not disclose the exact manner in the domain name parking service web page has been set up and does not disclose exactly what keywords it has chosen, it is reasonable for the Panel to infer that the respondent had some influence upon the sponsored link selection process”. (Owens Corning v. NA, WIPO Case No. D2007-1143. See similar comments to this effect in Associated Professional Sleep Societies v. l.c./Li Chow, WIPO Case No. D2007-0695 and Shaw Industries Group Inc. Columbia Insurance Company v. Administrator, Domain, WIPO Case No. D2007-0583).
Accordingly, the Panel considers that these circumstances constitute evidence of bad faith registration and use of the domain name in accordance with paragraph 4(b)(iii) and (iv) of the Policy.
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 <heingericke.com> be transferred to the Complainant.
Dated: October 17, 2008