WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pantaenius GmbH & Co. KG v. Whois-Privacy.Net Ltd/PrivacyProtect.org, Domain Admin
Case No. D2010-1479
1. The Parties
The Complainant is Pantaenius GmbH & Co. KG of Hamburg, Germany, represented by FPS Fritze Wicke Seelig Partnerschaft, Germany.
The Respondent is Whois-Privacy.Net Ltd of Pénama, Vanuatu/ PrivacyProtect.org, Domain Admin of Moergestel, Netherlands.
2. The Domain Name and Registrar
The Disputed Domain Name <pantenius.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2010. On September 3, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the Disputed Domain Name. On September 8, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 8, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 10, 2010.
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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2010.
The Center appointed Lana I Habash as the sole panelist in this matter on October 12, 2010. 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.
4. Factual Background
The Complainant Pantaenius GmbH & Co. KG (“Pantaenius”), a German limited liability company by shares, is an insurance services provider, doing business under the name Pantaenius GmbH & Co. KG, and owns numerous trademark registrations of the word mark PANTAENIUS, the earliest with application date of 1997. The Complainant also owns the domain names <pantaenius.com> and <pantaenius.de>, which point to the Complainant’s official website.
The Disputed Domain Name <pantenius.com> was created on June 19, 2007 in the name of the Respondent. The Disputed Domain Name directs Internet users to a website that includes links leading to websites of insurance service providers that are identical to the Complainant’s services, among other listings and links.
The Complainant attempted to contact the Respondent on the contact details provided on the website to which the Disputed Domain Name points, with no success.
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks PANTAENIUS, Complainant’s company name and Complainant’s domain names, as the only difference between the Complainant’s trademarks and names is the omission of the letter “a” in the second syllable.
The Complainant further contends that the Disputed Domain Name is a misspelled version of the Complainant’s trademarks and names, with identical pronunciation, and that considering that the words “Pantenius” and “Pantaenius” do not have a given meaning, the registration of the Disputed Domain Name was made in bad faith.
The Complainant also contends that the Disputed Domain Name directs Internet users to a website that includes links to other service providers, who are competitors of the Complainant’s, which has a commercial adverse effect on the Complainant.
Moreover, the Complainant contends that the Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name <pantenius.com>, as there is no such enterprise of commercial entity or a person existing under that name, and that there is no indication of a bona fide use of the Disputed Domain Name by the Respondent, as the website to which the Disputed Domain Name directs the Internet users includes links to other sponsored links of insurance providers, which indicates that the Respondent is using the Disputed Domain Name to generate revenue by linking the advertisements to the other websites.
The Complainant contends that the Disputed Domain Name <pantenius.com> has been registered and is being used in bad faith, considering that the owner of the Disputed Domain Name hides behind the privacy protection organization and the Complainant further contends that the Respondent consciously misspelled the domain name with the intention to block and bypass the Complainant’s official website and his marketing efforts under its trademarks, company name and owned domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated its rights in the trademark PANTAENIUS, as evidenced by the excerpts presented in the annexes to the Complaint; the trademark PANTAENIUS was registered prior to the registration of the Disputed Domain Name <pantenius.com>.
The misspelling of the Complainant’s trademarks, company name and domain names in the Disputed Domain Name, which do not have any generic meaning, constitutes a classic case of Typosquatting, which typically involves the intentional registration and use of a domain name that is a common misspelling or predictable mistyping of a distinctive mark. On comparing the Complainant’s trademarks with the Disputed Domain Name, the Panel finds that the latter is confusingly similar to the Complainant’s trademark, and as such the first element of the Policy is satisfied. See Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150, Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517, and ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627.
B. Rights or Legitimate Interests
Under the Policy, the Complainant is required to make a prima facie case of lack of rights or legitimate interest in the Disputed Domain Names on part of the Respondent. The failure to submit a response by a respondent in some cases supports a finding of the lack of such rights, particularly in the absence of any license from the Complainant to use the Complainant’s trademark or incorporate it in a domain name. See AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017, Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437, F. Hoffmann-La Roche AG v. Global Communciations Link / Domains by Proxy, Inc. WIPO Case No. D2009-0640, and Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
The Panel is convinced that the use of the Disputed Domain Names by the Respondent in the current manner does not qualify as a legitimate interest, since the Respondent is using the Disputed Domain Names to point to a website that includes other sponsored links to websites competing with the Complainant’s business, particularly in the absence of any show that the Respondent is known by the Disputed Domain Name or has any legitimate rights to it. Various UDRP panels have held that such sites, providing click through sponsored links to other websites do not generally grant the registrant rights or legitimate interests in the domain name. See Société National des Chemins de Fer Français v. Ostrid Company/ Domains by Proxy, Inc. WIPO Case No. D2008-0627; Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031 and The Knot, Inc. v. Ali Aziz, domain name <myknot.com>, WIPO Case No. D2007-1006; F. Hoffmann-La Roche AG v. Global Communciations Link / Domains by Proxy, Inc. WIPO Case No. D2009-0640.
Based on the above, the Panel finds that the Complainant has established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of the Policy, bad faith may be determined by evaluating four factors, which are mentioned in the Policy on a non-exclusive basis (paragraph 4(b)):
(i) circumstances indicating that the registrant has registered or 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 registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant 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 registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’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 registrant’s website or location or of a product or service on the registrant’s website or location.
As the Panel discussed under the first element, the Complainant has successfully demonstrated its rights to the trademark PANTAENIUS and its use in connection with insurance services through its company name and the information provided on the Complainant’s official website; it is unlikely that the Respondent was not aware of the proprietary rights of the Complainant in the trademark and subsequently in the Disputed Domain Name, particularly that the Disputed Domain Name points to a website that includes listing of links directing to the website of other insurance providers competing with the Complainant. Various UDRP panels ruled that the knowledge of the Complainant’s proprietary rights in the trademark that is reflected in the Disputed Domain Name at the time of registration supports a finding of bad faith registration. See Alstom v. Domain Investments LLC, WIPO Case No. D2008-0287.
Moreover, considering the facts of this case, the Panel is convinced that bad faith according to the fourth factor can be inferred and that the Disputed Domain Name was consciously misspelled; the fact that the Respondent is using the Disputed Domain Names to point to the website that includes inter alia links to websites offering information about insurance service providers competing with Complainant’s supports the finding of knowledge on part of the Respondent of the good will of the Complainant. Therefore, the Panel believes that the Disputed Domain Names were registered to direct consumers to competing websites, for the purpose of commercial gain. See AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017, Check Into Cash, Inc. v. Rico Marquez, WIPO Case No. D2007-0942; Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319; Verisign, Inc. v. jumbo domains, WIPO Case No.D2006-1582; and F. Hoffmann-La Roche AG v. Global Communciations Link / Domains by Proxy, Inc. WIPO Case No. D2009-0640.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <pantenius.com> be transferred to the Complainant.
Lana I Habash
Dated: October 29, 2010