WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WIKA Alexander Wiegand SE & Co. KG v. dbluco, Zackary Wika
Case No. D2011-1076
1. The Parties
The Complainant is WIKA Alexander Wiegand SE & Co. KG of Klingenberg, Germany, represented by RWZH rechtsanwälte, Germany.
The Respondent is dbluco, Zackary Wika of Longview, Washington, United States of America (USA).
2. The Domain Name and Registrar
The disputed domain name <wika.org> is registered with Blue Razor Domains.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2011. On June 24, 2011, the Center transmitted by email to Blue Razor Domains a request for registrar verification in connection with the disputed domain name. On June 27, 2011, Blue Razor Domains transmitted by email to the Center its verification response confirming that the Respondent “dbluco” is listed as the registrant and providing contact details. The Complainant filed an Amended Complaint on June 27, 2011 including the correct Registrar.
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 proceedings commenced on June 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2011. The Response was filed with the Center on July 9, 2011.
The Center appointed James A. Barker as the sole panelist in this matter on July 27, 2011. 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.
On August 25, 2011, the Panel issued a Procedural Order in accordance with paragraph 12 of the Rules. Under that Procedural Order, the Panel invited the Respondent, Zackary Wika, to provide material evidence of his claim that Zackary Wika is his personal name (such as a certified copy of a passport of driver’s licence). The Panel also provided for the Complainant to respond to any such further evidence as might be submitted by the Respondent. On August 25, 2011, the Respondent provided a scanned copy of a driver’s licence in the name of Zackary Wika, for the state of Washinton, USA. On September 2, 2011, the Complainant responded to that submission to note that the scanned driver’s licence was not a certified true copy and that it did not prove whether the person shown on the driver’s licence has anything to do with the Respondent. On September 5, 2011, the Respondent sent an email to the Center stating, among other things “I have no idea what I am doing. I am just a college student trying to figure everything out. I cannot afford a lawyer, and the domain name was expensive enough. I bought this domain fairly when this company had every opportunity to purchase it on their own.”
4. Factual Background
The Complainant, WIKA Alexander Wiegand SE & CO. KG, is located in Germany and is in the business of manufacturing and marketing measuring apparatus.
The Complainant is the owner of trademarks in various jurisdictions, both in terms of word marks and word image marks, for WIKA. The German trademark registration of WIKA dates back to January 14, 1953.
The Complaint furthermore has factories in Houston, Texas, USA and Lawrenceville, Georgia, USA. In the USA the Complaint has a subsidiary which uses the company name WIKA Instrument Corporation. The Complainant has been producing and selling measuring instruments and gauges for more than 60 years and the Complainant uses the mark WIKA worldwide among others for its measuring instruments and gauges. The Complainant has branches worldwide and its headquarters in Germany. The company is known worldwide under the company name WIKA and is the leading producer of diverse technical products.
The disputed domain name was registered on October 7, 2005 (as indicated by the “creation” date in the WhoIs record). In its registrar verification, Blue Razor Domains confirmed that the disputed domain name was registered to “dbluco” on January 20, 2011.
5. Parties’ Contentions
It is obvious that the disputed domain name is similar to the Complainant’s WIKA marks and the company name WIKA. The disputed domain name consists of the Complainant’s mark WIKA in its entirety. The WIKA mark is a coined word with no descriptive significance to the goods or services offered under it. It is highly distinctive and it has been reproduced in its entirety in the disputed domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence that the use of the disputed domain name by the Respondent is in connection with a bona fide offering of goods or services. The Respondent has not been and is not commonly known by the disputed domain name. The Respondent’s website suggests that it is an official page of the Complaint or one of its subsidiaries.
The Respondent’s webpage is mainly used as a landing page to transfer Internet users to the website at “www.debluco.com” where the Respondent offers t-shirts for sale1. The products sold at this webpage are not products from the Complainant.
The disputed domain name was registered and is being used in bad faith. The disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant. The Respondent has intentionally attempted to attract for financial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark. This is supported by the fact that the German trademark of the Complainant was registered decades before the Respondent registered the disputed domain name.
Given the long and widespread reputation of the Complainant’s WIKA marks and the company name used in the USA and all over the world for decades, the compelling conclusion is that the Respondent, by choosing to register and use a domain name which is identical to the Complainant’s widely known and distinctive trademark and company name, intended to ride on the goodwill of the Complainant’s trademark in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainant. Potential partners and end users are led to believe that the website <wika.org> is the Complainant’s site or the site of official authorized partners of the Complainant.
The Respondent, Zackary Wika, is located in the U.S.A. and is in the business of professional freelance graphic design, website design, and advertising. By birthright Zackary Wika has had personal ownership to the word “Wika” as it is the Respondent’s surname. The similarity between the Respondent’s surname and the Complainant’s business name is nothing more than coincidental.
The Respondent, Zackary Wika, is working in the areas of graphic design, website design, and advertising. The Respondent’s name is Zackary Wika. Thus it would be obvious that in order to be the most appealing to potential clients the Respondent’s surname would be best fit as his domain name.
The website in question, “www.wika.org”, provides an important resource for the Respondent as a portfolio and portal for potential clients to view current work and contact information. The Respondent currently uses an email address with “@wika.org” through the website in question as the Respondent’s main email address for all of the Respondent’s clients, social networking sites, and business affiliated logins. In no way has the Respondent Zackary Wika represented himself as having any association to the Complainant’s business name, nor has he attempted to exploit the url as a way to trick people into purchasing anything.
The disputed domain name was registered by Zackary Wika and is not being used in bad faith in any way. The domain name was registered to provide a recognizable email and website for the Respondent’s clients, partners, and friends. With the Respondent’s surname being “Wika”, the best possible website to represent the Respondent on the Internet for his clients, partners, and friends would obviously be “www.wika.org”. The Respondent has used the disputed domain as a portal to view example websites for potential clients, but only as a way of transferring people to example work. In no way has “www.wika.org” directed traffic to any sales of any items. The Complainant’s claim of redirection to “www.dbluco.com” was purely for the Respondent’s clients observation, and no items were sold or available to be sold.
6. Discussion and Findings
The Panel notes that Blue Razor Domains, the concerned registrar for the disputed domain name, has indicated that Zackary Wika is not the registrant of the disputed domain name and that “dbluco” is the registrant of record. The Panel also notes that Zackary Wika is the administrative contact of the disputed domain name and that the Response was filed by and on behalf of Zakary Wika only. Both “dbluco” and Zackary Wika are identified as the Respondent in the Complaint. There was no evidence that “dbluco” is a legal entity or anything other than a term that the Respondent, Zakary Wika, has chosen to associate with himself. Accordingly, the Panel has treated Zakary Wika as the Respondent-in-fact and references below to the Respondent are both references to Zakary Wika and the named registrant, “dbluco”.
To succeed under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These three elements are discussed in turn as follows.
A. Identical or Confusingly Similar
The Complainant provided evidence of its rights in the registered mark WIKA. The Panel finds that the disputed domain name is relevantly identical to that mark. The Respondent does not dispute this conclusion. Being identical, there is an obvious potential for the disputed domain name to be confusingly similar to the Complainant’s mark. Accordingly, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests. In the disputed domain name once the Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with the Complainant. See e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant has established a prima facie case against the Respondent in this case. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) “before any notice to you [the Respondent] 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 [the Respondent] (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.”
The Respondent’s primary argument rests on paragraph 4(c)(ii) of the Policy. The Respondent says that the disputed domain name corresponds to his personal name. For that reason, he says he has used the disputed domain name in connection with an email address, and as a website for his “clients, partners, and friends.”
This is a case that turns on the credibility of whether the Respondent is, in fact, commonly known as Zackary Wika. The evidence in the case file is that the Respondent uses an email addresses with “@wika.org”; and that the name Zackary Wika appears in in the website and is the name in which the disputed domain name was registered (in the WhoIs record). In response to the Procedural Order issued on August 25, 2011, the Respondent provided a scanned copy of a driver’s licence in the name of Zackary Wika, for the state of Washington, USA.
The Complainant objected to that evidence on the basis that the scanned driver’s licence was not a certified true copy and stated that it did not prove whether the person shown on the driver’s licence has anything to do with the Respondent. The Panel has taken into account that the additional evidence provided by the Respondent was not certified. However, the Respondent’s copy of his driver’s licence is consistent with his primary case. The Panel has no reason to believe the copy of the Respondent’s licence is not a true reflection of the Respondent’s identity. As to the Complainant’s argument that this evidence does not show that the person named in the licence has anything to do with the Respondent, the Panel finds this implausible. Zackary Wika is the person named as the administrative and technical contact for the disputed domain name in the WhoIs details verified by the concerned registrar Blue Razor Domains. While the Respondent provided little explanation as to the term “dbluco”, it seems plain that that term is not the name of a natural person.
It is also notable that the Complainant did not otherwise present a strong case. In particular, the Complainant suggested that the disputed domain name reverted (at some time not specified) to a website at “www.dbluco.com”. What evidence does the Complainant provide to support this? None. And, even though the Complaint names the Respondent also as Zackary Wika, the Complaint did not address in its Complaint the question of whether the Respondent was commonly known by the disputed domain name, for the purpose of paragraph 4(c)(ii) of the Policy.
The Panel accepts the Complainant’s evidence that the WIKA mark is used in various jurisdictions. As a coined term associated with an extensive business, it may be possible that the Respondent was aware of it. But even if the Respondent were aware of that mark, such an awareness would not remove the legitimate interest which the Respondent has established under paragraph 4(c)(ii) of the Policy. This is because there is little evidence in this case that the Respondent registered the disputed domain name to capitalize on confusion with the Complainant’s mark. With evidence that the disputed domain name corresponds to the Respondent’s personal name, the obvious inference is that the Respondent registered it for that purpose. As noted by the panel in Ken’s Foods Inc. v. kens.com, WIPO Case No. D2005-0721: “Without proof that the Respondent registered the disputed domain name in order to capitalize on the Complainant’s goodwill in its mark, the Complainant cannot successfully invoke the Policy’s narrow exception to the primary ‘first come, first served’ rule in relation to domain name registrations.”
For these reasons, the Panel finds that the Respondent has demonstrated rights or legitimate interests in the disputed domain name. It follows that the Complainant has not established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the reasons set out above, it is unnecessary for the Panel to address this element.
For all the foregoing reasons, the Complaint is denied.
James A. Barker
Dated: September 9, 2011