The Complainant is OVB Vermögensberatung AG of Köln, Germany, represented by Lemcke, Brommer & Partner Patentanwälte, Germany.
The Respondent is Michele Dinoia and SZK.com of Pineto, Italy, represented by Valerio Donnini, Italy.
The disputed domain name <ovb.com> is registered with Dotster, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2009. On March 10, 2009, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On March 10, 2009, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2009. The Response was filed with the Center on April 7, 2009.
The Center appointed William R. Towns as the sole panelist in this matter on April 22, 2009. 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 financial service provider, founded in Germany in 1972. The Complainant and its subsidiaries presently provide such services in fourteen European countries, including Italy, where the Respondent is domiciled. The Complainant is the owner a number of trademark registrations for OVB in relation to its financial services, which the Complainant and its subsidiaries use throughout Europe. The Complainant's initial German and International Registrations were filed in 1991 and 1992. The Complainant's Italian subsidiary, OVB Consulenza Patrimoniale S.r.l., was established in 2001.
The Respondent's business involves the speculative registration of domain names, including the registration of domain names for use with paid search advertising. The Respondent registered the disputed domain name <ovb.com> on May 23, 2002. The disputed domain name resolves to a portal website containing sponsored links and “related searches” for knives and cutlery.
Between 1900 and World War II Camillus Cutlery, one of the oldest knife manufacturers in the United States, produced a line of knives called OVB (an acronym for “Our Very Best”). Camillus resurrected the OVB brand briefly in 2002,1 prior to closing its business in February 2007.
The Complainant maintains that the disputed domain name is identical and confusingly similar to its OVB mark. According to the Complainant, the Respondent has not been authorized to use the Complainant's OVB mark, and acquired the disputed domain name long after the Complainant established rights in the mark. Under such circumstances, the Complainant asserts that no rights or legitimate are bestowed on the Respondent by the use of the disputed domain name with a portal website.
The Complainant contends that the Respondent's bad faith is shown by the Respondent's established pattern of registering and using domain names incorporating third-party names or marks, citing to more than 50 decisions under the UDRP as evidence. Further, the Complainant maintains that the Respondent's use of the disputed domain name to divert Internet users to a portal website for the purposes of generating pay-per-click advertising revenues constitutes bad faith.
The Complainant notes that the Respondent is using the disputed domain name with knives and cutlery, and observes that in the years before World War II Camillus Cutlery produced a fine line of knives known as OVB, used as an acronym for “Our Very Best”. The Complainant further contends that the Respondent's use of an alias (SZK.com) in an attempt to conceal its identity is further evidence of bad faith.
The Respondent represents that it is in the business of registering domain names comprised of generic or descriptive terms and short letter combinations, and developing business-oriented websites using those domain names, including themed search portals. The Respondent maintains that it registered the disputed domain name without knowledge of the Complainant or its mark, and because the disputed domain name was a short and desirable combination of three letters, making it highly marketable with many different possible end users, and thus amenable to the Respondent's advertising business.
The Respondent argues that the Complainant cannot assert exclusive rights to the short, generic letter combination “ovb”, and references other registered domain names comprised of “ovb” that have no relation to the Complainant. Further, the Respondent argues that there is significant third-party use of “OVB” as an acronym, including such use for Orszagos Valaztasi Bizottsag (Hungarian: National Election Committee); OVB Novosibirsk, Russia-Tolmachevo (airport code); the Brazilian Virtual Observatory (Observatório Virtual Brasileiro); Outer Vascular Bundle, Orthogonalized Valance Bond, Our Very Best, and Orthonormal Vector Basis.
The Respondent asserts that is has established rights or legitimate interests in the disputed domain name arising from its use of it in connection with a bona fide offering of goods and services before any notice to it of this dispute. The Respondent argues that there is no requirement under the UDRP that the meaning of a domain name should have any correlation to the substance of the website it promotes. Further, the Respondent maintains it did not register the disputed domain name with the intent to trade on the goodwill in the Complainant's mark, and that the Complainant has come forward with no evidence that the Respondent's use of the domain name with a themed portal site has resulted in consumer confusion.
In view of the foregoing, the Respondent maintains that the Complainant has failed to prove bad faith registration and use of the disputed domain name. The Respondent further argues that the mere registration of a large number of domain names is not evidence of bad faith. According to the Respondent, the evidence of third-party interest in the letters “ovb” makes any finding that the Respondent was aware specifically of the Complainant's mark impossible. The Respondent insists that it did not register the disputed domain name with the Complainant's mark in mind, and that there is no evidence that the Respondent registered or is using the domain name in an attempt to exploit or profit from the Complainant's trademark rights.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See the Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds that the disputed domain name is identical to the Complainant's OVB mark, in which the Complainant has demonstrated rights for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. See also Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson Sr., WIPO Case No. D2000-1525. Evidence of third-party interest in the three letter combination “OVB” is not material for purposes of the first element of the Policy. See Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105 (relative weakness or strength of complainant's trademark rights not relevant under first element of Policy).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden is shifted to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. It is uncontroverted that the Complainant has not authorized the Respondent to use the OVB mark. The record nonetheless reflects that the Respondent registered the disputed domain name, which is identical to the Complainant's mark, and is using the disputed domain name to divert Internet users to a portal website from which the Respondent generates click through advertising revenues. This is sufficient in the Panel's judgment to constitute a prima facie showing under paragraph 4(a)(ii). See, e.g., Document Technologies, Inc., supra; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable 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 has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent maintains that it registered the disputed domain names based on the appeal of “ovb”, a short, generic letter combination or acronymic term, and not because of the Complainant's mark, which the Respondent denies being aware of when it registered the disputed domain name. The Respondent further asserts that it has the right to register and use a domain name consisting of a short, generic letter combination term in connection with a portal website to generate paid advertising revenue.
Prior panels have concluded that a respondent, in certain circumstances, may have a right to register and use a domain name consisting of a short, generic letter combination or acronymic term to attract Internet traffic to the respondent's website, even where the domain name is identical or confusingly similar to the complainant's mark, provided domain name was not registered with the complainant's trademark in mind and its use does not seek to profit from or exploit the goodwill developed in the complainant's mark. See, e.g., uwe GMbH v. Telepathy, Inc., WIPO Case No. D2007-0261; Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105; Kis v. Anything.com Ltd., WIPO Case No. D2000-0770.
Because, as discussed below, the Panel concludes that the Complainant in the circumstances of this case has failed to meet its burden of proof respecting bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy, a determination whether the Respondent has established rights or legitimate interests in the disputed domain name is not necessary to the Panel's decision in this case.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
The Panel, after careful consideration of the circumstances in the record, does not find the evidence sufficient to demonstrate that the Respondent registered the disputed domain name with the specific intent of exploiting and profiting from the Complainant's trademark rights. The Panel notes that Paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy, where a registrant is engaged in the wholesale registration of large numbers of domain names. Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964. See Shaw Industries Group Inc. and Columbia Insurance Company v. Rugs of the World Inc., WIPO Case No. D2007-1856; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. However, Paragraph 2 of the Policy has not been read as routinely requiring registrants to conduct trademark searches, see, e.g., Starwood Hotels and Resorts Worldwide, Inc., Sheraton LLC, and Sheraton International Inc. v. Jake Porter, WIPO Case No. D2007-1254 and a complainant generally must proffer some evidence, whether direct or circumstantial, indicating that the respondent had the complainant's mark in mind when registering the disputed domain name. See The Skin Store, Inc. v eSkinStore.com, WIPO Case No. D2004-0661.
The facts and circumstances in this case, in the Panel's judgment, fall just short of demonstrating that the Respondent had the Complainant's mark in mind at the time of the registration of the disputed domain name. It is true that the Complainant does business in a number of European countries, including Italy, where the Respondent reportedly is domiciled, and that the Complainant had established trademark rights in the OVB mark prior to the Respondent's registration of the disputed domain name. Further, as the Complainant correctly observes, the Respondent has been found to have registered and used domain names in violation of the Policy on considerably more than one occasion in the past.
In point of fact, the Respondent has an apparent history of registering domain names containing prominent third-party marks. See, e.g., Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911; Phillip Morris USA, Inc. v. Michele Dinoia, SZK.com, WIPO Case No. D2005-0171; Ford Motor Company and Ford Motor Credit Company v. Michele Dinoia, WIPO Case No. D2007-0662. The Respondent also appears to have registered domain names corresponding to trademarks of prominent businesses in the insurance and financial service industries, including at least on such financial institution headquartered in Germany. See Allianz AG v. Michele Dinoia, WIPO Case No. D2005-0277 (<alianz.com>).
These decisions certainly raise questions whether the Respondent in the course of its speculative domain name registration business has consistently made good faith efforts to avoid registering and using domain names corresponding to third-party trademarks in violation of paragraph 2 of the Policy, and suggest that the Respondent is not a total stranger to the financial services area. These decisions are not in the Panel's view dispositive, however, of whether the Respondent had the Complainant's mark in mind when registering the disputed domain name involved in this case. The Panel necessarily must weigh in the balance the appreciable evidence of third party interest in the three letter combination “ovb”, its prevalent use and susceptibility to use as an acronym or abbreviation for generic terms, and its resulting attractiveness as a generic three letter combination for use as a domain name, independent of any trademark value derived from the Complainant's use of the mark in relation to financial services. See uwe GMbH, supra. In view of such factors, and without a sufficient showing that the Complainant's mark has become famous or is uniquely associated with the Complainant2, the Respondent's use of the disputed domain name with a portal site containing advertising links for knives and cutlery does not on its face appear to be seeking to capitalize on the goodwill created by the Complainant in its mark. See Match.com, LP v. Bill Zag and NWLAWS.ORG, supra.
As the Complainant has noted, between 1900 and World War II Camillus Cutlery, one of the oldest knife manufacturers in the United States, produced a well known line of knives under the brand OVB (an acronym for “Our Very Best”). Camillus resurrected the OVB brand use in the early 2000's and obtained a United States trademark registration for OVB OUR VERY BEST on March 19, 2002. Two months later, the Respondent in May 2002 registered and began using the disputed domain name with a portal site containing advertising links for knives and cutlery. That this is sheer coincidence strikes the Panel as somewhat unlikely, particularly in light of prior decisions suggesting that the Respondent has targeted third-party trademarks on more than one occasion in the past. If this were the case here, however, it would appear that the Respondent was targeting Camillus Cutlery's trademark rights rather than the Complainant's trademark when registering the disputed domain name.
The use of a domain name for third-party advertising is not per se illegitimate under the Policy, provided that the respondent is not seeking to take advantage of the complainant's rights. See, e.g., The Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 285459. The record on which this Panel must base its decision does not clearly show that the Respondent registered the disputed domain name with the specific intent to exploit or profit from the Complainant's trademark rights. However, the Panel would not exclude the possibility, if the Respondent's use of the disputed domain name was to materially change following this decision in a manner suggesting the targeting of the Complainant's mark, that this might not provide grounds for a re-filed complaint.3
Accordingly, and for the reasons discussed above, the Panel concludes that the Complainant has failed to satisfy its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
William R. Towns
Dated: May 6, 2009
1 Publicly available records maintained online by the United States Patent and Trademark Office (USPTO) and visited by the Panel confirm that Camillus obtained a trademark registration for OVB OUR VERY BEST on March 19, 2002. The registration was cancelled on December 27, 2008.
2 The record before this Panel does not reflect that the Complainant's mark enjoys the fame and prominence of the trademarks involved in the decisions referred to above, and the Respondent's use of the disputed domain names in these cases were related to the complainants' primary business activities, which is not the case here.
3 The Panel considers that its jurisdiction under the Policy to resolve disputes concerning abusive domain name registration and use is limited to disputes between the parties before it. In light of this, the Panel finds it axiomatic that the Complainant in this case must demonstrate that the Respondent has sought to capitalize on the goodwill developed in the Complainant's mark. Based on the record on which this Panel's decision in this case must be made, the Complainant has not met its burden.