WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Haufe-Lexware GmbH & Co. KG v. ITS, Joachim Feise
Case No. D2011-1661
1. The Parties
The Complainant is Haufe-Lexware GmbH & Co. KG of Freiburg im Breisgau, Germany, represented by Friedrich Graf von Westphalen & Partner, Germany.
The Respondent is ITS, Joachim Feise of Munich, Germany.
2. The Domain Name and Registrar
The disputed domain name <lexware-schulung.com> is registered with FastDomain, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2011. On September 30, 2011, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On September 30, 2011, FastDomain, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 4, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2011.
The Center appointed Brigitte Joppich as the sole panelist in this matter on November 10, 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is one of Germany’s leading specialized publishers in the fields of economics, tax, and law, with a history dating back to 1934. Among other names, it trades as “Lexware” and operates via various websites located under the domain names “<exware.com>, <lexware.de> and <lexware-akademie.de>.
The Complainant is registered owner of numerous trademark registrations for LEXWARE, including German registration no. 39744859 LEXWARE registered on February 6, 1998 for goods and services in classes 9, 16, 35, 36, 38, 41 and 42 and German registration no. 39737189 “LEXWARE & DESIGN“ registered on January, 18 1999 for goods and services in classes 9, 16, 35, 36, 38, 41 and 42 (hereinafter referred to as the “LEXWARE Marks”).
The disputed domain name was registered on November 3, 2010 and is used in connection with a website offering inter alia training courses related to the Complainant’s products, third parties’ products and own services of the Respondent, including the programming of individual software.
The Complainant sent several warning letters to the Respondent in respect of the registration and use of the disputed domain name, which were all returned undeliverable. Based on the infringement of its trademarks, the Complainant then pressed criminal charges against a person unknown with the competent criminal authorities in January 2011. The German police identified the Respondent “Joachim Feise” as being identical to a certain “Thomas Reinhardt”. Furthermore, the police found that neither a company called “ITS” nor a person called “Joachim Feise” or “Thomas Reinhardt” was listed on the doorbell panels, nameplates or mail boxes at the Respondent’s contact address at Schlierseestrasse 5, 81541 Munich. In September 2011, the Complainant was informed by the criminal authorities that “Thomas Reinhardt” alias “Joachim Feise” was currently living in China. After the Complainant had contacted the Registrar, requesting him to delete the content of the website at the disputed domain name, the Respondent transferred the disputed domain name to the present registrar, which is based in the United States of America.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the Complainant’s well-known LEXWARE Marks as it includes the identical sign “lexware”, while the additional word element “-schulung” does not distinguish the domain name as it is the German word for “education” or “training” and therefore merely descriptive.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as the LEXWARE Marks are associated exclusively with the Complainant and have no separate or independent meaning save in relation to the Complainant’s business, as the Respondent is not an authorized and certified training partner of the Complainant, and as there is no need for the Respondent to use the disputed domain name to refer to the services offered, other than to mislead consumers.
(3) The disputed domain name was registered and is being used in bad faith as it was clearly intended to exploit the Complainant’s well known trademarks and its reputation. With regard to bad faith registration, the Complainant states that the Respondent knew of the Complainant's well known LEXWARE Marks at the moment of the registration of the disputed domain name in 2010, as the way in which such domain name combines the Complainant's LEXWARE Marks with the generic term “-schulung” clearly shows that it was chosen to lead users searching for the terms “Lexware” and “Schulung” (“training”) to the Respondent’s website. With regard to bad faith use, the Complainant contends that the Respondent intentionally attempts to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source of the Respondent’s website. The Complainant argues that the Respondent tries to give the impression that he is authorized by the Complainant and that he is actively using the disputed domain name by offering training courses for the Complainant’s products. The Complainant finally contends that the Respondent conceals his identity by only providing a fake name and an inexistent and thus incorrect address to the Registrar.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trade mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s LEXWARE Marks in which the Complainant has exclusive rights and is confusingly similar to such marks.
Firstly, the fact that some of the Complainant’s LEXWARE Marks include additional graphical elements does not hinder a finding of confusing similarity under the Policy. It is well established that the similarity between a trademark and a disputed domain name is not eliminated by the fact that the trademark includes additional graphical elements (cf. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932).
Secondly, the additional word “schulung” (German for “training) in the disputed domain name is merely generic. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. International Organization for Standardization ISO v. Noblitt & Rueland, WIPO Case No. D2007-1809 (<isotraining.com> et al.); Boehringer Ingelheim Pharma GmbH & Co. KG v. Reps, Inc., WIPO Case No. D2006-0459 (<boehringer-ingelheimtraining.com> et al.); Commission on Graduates of Foreign Nursing Schools v. Techindia Infoway Pvt Ltd., NAF Claim No. 152122; International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028).
Therefore, the Panel finds that the Complainant satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of production that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy, and the burden of rebuttal is correspondingly shifted to the Respondent.
The Respondent did not deny the Complainant’s assertions in any way.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Respondent’s use is not bona fide under the Policy. The Panel acknowledges that a reseller can make a bona fide offering of goods and services and thus have a legitimate interest in a domain name if the use fits certain requirements, including the actual offering of goods, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder (cf. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Mariah Boats, Inc. v. Shoreline Marina, LLC, NAF claim No. 94392; Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095). According to the documents available to the Panel, the website available at the disputed domain name does not only offer courses related to the Complainant’s products but also to third parties’ products and the Respondent’s own services, including the programming of individual software. Therefore, the Respondent’s use of the disputed domain name does not meet the criteria set out in Oki Data Americas, Inc. v. ASD, Inc (supra).
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’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 trade mark 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 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 Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the LEXWARE Marks. The disputed domain name is composed of the Complainant’s mark LEXWARE and the additional word “schulung” (German for “training”), which describes one of the Complainant’s services. Furthermore, the Respondent’s website available at the disputed domain name offers training courses related to the Complainant’s products as well. Based on these facts, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant and its rights in the LEXWARE Marks.
As to bad faith use, by fully incorporating the LEXWARE Marks into the disputed domain name and by using such domain name in connection with a website offering also products and services other than the Complainant’s products and services, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy.
The finding of bad faith is supported by the fact that the Respondent is using wrong contact data in the WhoIs Register as well as on the website available at the disputed domain name and therefore tries to conceal his true identity (cf. Blue Bell Creameries, L.P. v. Private Whois / Telecom Tech Corp., WIPO Case No. D2011-0316; dm-drogerie markt GmbH + Co. KG v. Aleksey Maksimyuk, WIPO Case No. D2011-0589; Forte Communications, Inc. v. Service for Life, WIPO Case No. D2004-0613; BellSouth Intellectual Property Corporation v. Real Yellow Pages, WIPO Case No. D2003-0413).
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <lexware-schulung.com> be transferred to the Complainant.
Dated: November 24, 2011