The Complainant is G DATA Software AG of Bochum, Germany, represented by Lorenz Seidler Gossel, Germany.
The Respondent is Geologic Data Systems of Denver, Colorado, United States of America (“USA”), represented by John Ferguson, USA.
The disputed domain name <gdata.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2010.
The Center transmitted its request for registrar verification to the Registrar on March 15, 2010. The Registrar replied the same day, confirming that it was the Registrar of the Domain Name, that the Respondent was the registrant, that the service agreement was in English, that the registrant submitted in the registration agreement to the jurisdiction at the location of the Registrar's principal office for court adjudication of disputes concerning or arising from the use of the Domain Name, and that the Domain Name would remain on lock during this proceeding. The Registrar also provided the full contact details recorded on its WhoIs database in respect of the Domain Name.
The Center informed the Complainant on March 18, 2010, that the Complaint had not included contact details of the Respondent as set out in the Registrar's WhoIs database and invited the Complainant to file an amendment to the Complaint. The Complainant filed an amendment to the Complaint later that day.
The Center verified that the Complaint together with the amendment to 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 19, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 8, 2010. The Response was filed with the Center on April 6, 2010.
The Center appointed Jonathan Turner as the sole panelist in this matter on April 26, 2010. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
The Complainant was founded in Bochum, Germany, in 1985 and specializes in protection against viruses in software. It developed its first antivirus program more than 20 years ago and now supplies its security solutions to other 30 countries. It has won a number of awards. It has registered “G DATA” as a German, Community and international trademark; the earliest priority or seniority date of the registrations appears to be January 20, 2000.
The Domain Name was registered on May 8, 1996. It has been pointed to a website at “www.geologicdata.com” which appears to promote a business called Geologic Data Systems, although a number of its pages are described as “under construction”. References to a supplier of data relating to maps called “Geologic Data Systems”, based in Denver, Colorado, and with a website at “www.gdata.com”, exist in a number of publications.
The Complainant states that it owns various trademarks for G DATA and that its company name and keyword, “G DATA”, are protected as a company symbol. The Complainant submits that the Domain Name is not only confusingly similar but nearly identical to its trademarks and company name.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. According to the Complainant, the Respondent has not been commonly known by the Domain Name as its business or company name and does not even use the Domain Name for its website, but only to forward Internet users to its website at “www.geologicdata.com”, on which the term “gdata” is not used, and which is mostly “under construction”. The Complainant considers that there has been no use of the Domain Name by the Respondent in connection with any bona fide offering of goods or services, nor any legitimate noncommercial or fair use of it.
Finally the Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's mark; and also to prevent the Complainant from registering the Domain Name.
The Complainant requests that the Domain Name be transferred to it.
The Respondent states that it is known worldwide in the petroleum and minerals exploration industry for its digital surface geologic mapping services and products. It provides a list of some of its clients which include many major companies. It states that it has been using the Domain Name as an integral part of its business for 14 years. It observes that the parties operate in substantially different businesses and markets, so that confusion by their respective clients should be unlikely.
The Respondent provides evidence of the use of the Domain Name in connection with its business since 1999 in the form of a number of published reports and articles and lists of exhibitors at trade shows and professional meetings. It states that it is known worldwide in association with the Domain Name.
The Respondent denies that the Domain Name was registered and is being used in bad faith. It maintains that it has used the Domain Name continuously since registering it in 1996 as an integral part of its business, in order to advertise and maintain contact with clients. The Respondent states that although the current website is partially under construction, it shows some of the Respondent's more recent work; and that the auto-forwarding from “www.gdata.com” to “www.geologicdata.com” provides a link for its long-established client-base to its current and developing projects. The Respondent adds that it also uses the Domain Name for email and exhibits a business card which shows an email address including the Domain Name to substantiate this. The Respondent further points out that it has never attempted to sell, rent or transfer the Domain Name.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (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. It is convenient to consider these cumulative requirements in turn
It is clear that the Complainant has registered rights in the mark G DATA. The fact that these rights post-date the registration of the Domain Name is irrelevant to this requirement, and in any case on the evidence it appears that the Complainant has earlier unregistered rights in this mark by virtue of its use.
The Panel further finds that the Domain Name is identical or confusingly similar to the Complainant's mark. The Domain Name is in fact identical to the mark, apart from the generic top level domain suffix, which is discounted for the purpose of this comparison, and the omission of a space, which provides little, if any, distinction.
The fact that confusion between the parties' businesses may be unlikely, in view of the differences between them and the nature of the Respondent's clientele, is irrelevant to this requirement since the question is whether the Domain Name itself is confusingly similar to the Complainant's mark.
The first requirement of the UDRP is satisfied.
The Panel finds on the evidence that the Domain Name has been used for at least a decade in connection with a business called Geologic Data Systems. Although the extent to which the Respondent's website has not been constructed is somewhat surprising, there is no evidence that the Respondent is an imposter and not the business mentioned in the publications exhibited to the Response.
On this record, the Panel finds that before any notice to the Respondent of the dispute, the Respondent used the Domain Name in connection with a bona fide offering of services. In accordance with paragraph 4(c)(i) of the UDRP this demonstrates that the Respondent has rights or legitimate interests in the Domain Name and that the second requirement of the UDRP has not been satisfied.
In view of the above finding, it is not necessary to consider the third requirement. However, it follows from the Panel's finding that the Complainant has not proved that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP is not satisfied.
For all the foregoing reasons, the Complaint is denied.
Dated: May 10, 2010