The Complainant is Gregor Fisken Limited of London, United Kingdom of Great Britain and Northern Ireland, internally represented.
The Respondent is Private Registrations Aktien Gesellschaft CNR of Granby & Sharpe St. of Kingstown, Saint Vincent and the Grenadines.
The disputed domain name <gregorfisken.com> (the “Domain Name”) is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2009. On August 21, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On August 21, 2009, Network Solutions, LLC transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on August 28, 2009.
The Center verified that the Complaint together with the amended 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 proceeding commenced on September 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 22, 2009.
The Center appointed Luca Barbero as the sole panelist in this matter on September 28, 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 Gregor Fisken Limited, a British dealer specialized in the trade of classic cars. The Complainant has operated since 1991 under the trade name “Gregor Fisken” and such business is based on the reputation and global contacts it has built up over 30 years in the industry. The present Complaint is therefore based on the common law rights acquired in its name.
The Domain Name was registered by the Complainant on December 11, 1998 and was duly renewed until December 2008, when, due to an administrative error by [the Complainant's] IT department, the registration lapsed and the Domain Name was registered by the Respondent.
The Complainant points out that the company Gregor Fisken Limited was founded in 1991 by Gregor Fisken, a racing driver with over thirty years of experience and a renowned specialist in the trade of classic cars, and rapidly became a market-leading specialist dealer in the classic automobile industry.
The Complainant highlights that, in light of its business under the name “Gregor Fisken” for many years and the amount of advertising and marketing activities - also on the website at “www.gregorfisken.com”, before the lapse of the Domain Name and the subsequent registration by the Respondent - the name “Gregor Fisken” has acquired a reputation as a trade name in the classic automobile industry.
The Complainant contends that the Domain Name <gregorfisken.com> is identical to the trade name of the Complainant as it reproduces the common law mark GREGOR FISKEN in its entirety.
With reference to rights or legitimate interests, the Complainant states that the Respondent is not known by the name “Gregor Fisken” nor is in any way related to the trading of historic automobiles and that the Respondent has no connection with the Complainant.
According to the Complainant, the Respondent is not making a fair use of the name
“Gregor Fisken” and is profiting from the goodwill of the Complainant's name to trade without any authorization from the Complainant, also publishing on the website at “www.gregorfisken.com” various sponsored links related to competitors' activities.
In light of the above, according to the Complainant, the Respondent does not have a right or legitimate interest in the Domain Name.
With reference to the Respondent's bad faith in the registration and in the use of the Domain Name, the Complainant indicates that the circumstances in which the Domain Name was registered by the Respondent, soon after its lapse due to the administrative error by the Complainant, and its use for a website displaying sponsored links to the activity of competitors, show that the Respondent was well aware of the Complainant's activity under the trade name “Gregor Fisken” and aimed at profiting from the Complainant's reputation. The Complainant also emphasizes that such use of the Domain Name by the Respondent “is interrupting business for Gregor Fisken Limited resulting in business turnover significantly down on previous trading periods”.
As additional circumstances evidencing bad faith, the Complainant states that “despite repeated attempts by both email and telephone, there has been no response” from the Respondent.
The Respondent did not reply to the Complainant's contentions and is in default.
Therefore the Panel shall decide this proceeding on the basis of the Complainant's submissions, drawing such inferences from the Respondent's defaults that are considered appropriate according to paragraph 14(b) of the Rules.
According to paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, [the] Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that 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) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Panel deems that the Policy is applicable to common law trademark rights if, according to the majority view of the UDRP panelists, the Complainant has shown that the name has become a distinctive identifier associated with the Complainant or its goods and services.
In the case at hand, as stated also in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, “[r]elevant evidence of such ‘secondary meaning' includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant's rights in a common law trademark” (see along these lines, amongst others, Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322 and Capstone Mortgage Co. v. Joshua Shook or J. Shook, Inc., WIPO Case No. D2004-0395).
In the case at hand, in light of the evidence provided by the Complainant and also of the information available online on the use of the name “Gregor Fisken” in connection with the trade of historic cars, the Panel finds that the Complainant has reached a sufficient level of goodwill at least within the classic automobile industry and has thus established common law trademark rights in the unregistered trademark GREGOR FISKEN.
In view of the above, the Panel finds that the Complainant has proven that the Domain Name is identical to the unregistered trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you 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.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the Domain Name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with UDRP precedent, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection c/o Domain Admin, NAF Claim No. 852581).
By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name. The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademark.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Name, has made preparations to use the Domain Name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the Domain Name.
The Panel notes that the Domain Name is currently pointing to a sponsored pay-per-click (“PPC”) website with an image of a car and is mainly aimed at directing visitors to competing third party commercial websites.
The Panel finds that under the circumstances the use of the Domain Name merely for a PPC page which directs visitors to various third party commercial websites does not constitute a legitimate, noncommercial use of the Domain Name under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044.
See along these lines, inter alia, Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, where the panel stated “[t]he evidence in the Complaint indicates that the website at the disputed domain name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the Domain Name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy.”
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or 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 that Complainant, for valuable consideration in excess of the holder'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 the Respondent's website or other online 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 the Respondent's website or location.
As to bad faith at the time of the registration, the Panel notes that, in light of the widely known character of the name of the racing driver Gregor Fisken, the use of the name “Gregor Fisken” as a trade name since 1991, the amount of advertising of the Complainant's activities also online at the website “www.gregorfisken.com” before the lapse and the registration of the Domain Name by the Respondent, and also considering that the Domain Name is currently directed to a website promoting the activity of the Complainant's competitors through many sponsored links, the Respondent, on balance, was or ought to have been aware of the Complainant's GREGOR FISKEN mark.
With reference to the use of the Domain Name in bad faith, the Panel finds that Internet users, in light of the contents of the web page linked to the Domain Name, displaying also various sponsored links related to the Complainant's activity in the trade of classic cars, may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent's website. Moreover, in all likelihood, the Respondent profits by earning PPC revenues (see, inter alia, Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; Fry's Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435; Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286).
The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted (and probably succeeded) to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's services.
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc., supra, “it is open for the [p]anel to infer a prima facie case of bad faith registration. The [p]anel also notes that the [r]espondent has used the present domain name in a commercial website. The evidence before the [p]anel indicates that the [r]espondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the [r]espondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
Along the same lines is the decision Renegade LLC v. Kenneth Gibert, WIPO Case No. D2008-0646, in which the panel stated “The [c]omplainant argues that the [d]omain [n]ames were registered and used in bad faith to divert Internet users to the [r]espondent's website for commercial gain based on confusion with the [c]omplainant's mark. Again, the [r]espondent has not denied these allegations or provided any evidence to support a finding that it registered and used the [d]omain [n]ames in good faith”.
In view of the above, the Panel finds that the Domain Name was registered and is being 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 <gregorfisken.com> be transferred to the Complainant.
Dated: October 14, 2009