WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Super-Max IPR Holdings AG v. WhoisProtector Inc., WhoisProtector supermax.com / Arrow Media
Case No. D2011-1977
1. The Parties
The Complainant is Super-Max IPR Holdings AG of Zug, Switzerland, represented by J. A. Kemp & Co, United Kingdom of Great Britain and Northern Ireland.
The Respondent is WhoisProtector Inc., WhoisProtector supermax.com of Chicago, Illinois, United States of America and Arrow Media of Chicago, Illinois, United States of America, represented pro se.
2. The Domain Name and Registrar
The Disputed Domain Name <supermax.com> is registered with DomainPeople, Inc..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2011. On November 11, 14, 16, 18, 21 and 22, 2011, the Center transmitted by email to DomainPeople, Inc. requests for registrar verification in connection with the Disputed Domain Name. On November 22, 2011, DomainPeople, Inc. 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 November 23, 2011 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 amended Complaint on November 25, 2011.
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 November 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2011. The Response was filed with the Center on December 17, 2011.
The Center appointed Charné Le Roux as the sole panelist in this matter on January 10, 2012. 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 is Super-Max IPR Holdings AG, based in Switzerland. It asserts rights in the trade mark SUPERMAX through registration of this mark in Australia, Canada, Germany, New Zealand and United Kingdom. It registered these trade marks respectively in 1968 up to and including 1991.
The Disputed Domain Name was registered on February 5, 1997. The Disputed Domain Name is currently owned by the Respondent on record and it is connected to a website which features sponsored links to the websites of third parties offering a broad range of goods and services.
5. Parties’ Contentions
The Complainant contends that it is the owner of the trade mark SUPERMAX through registration of this trade mark in a number of countries. The assertion is also made by the Complainant that it has used the trade mark in respect of the goods for which it is registered, including shaving systems and safety razors.
The Complainant contends that the Disputed Domain Name is identical to its SUPERMAX trade mark.
The Complainant also contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name for the following reasons:
a) the Respondent is not making use of or showing preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with the bona fide offering of goods or services. The Complainant supports this contention with archived materials indicating that since the registration of the Disputed Domain Name, the website connected to it was indicated either as being under construction, or functioned as a PPC site hosting sponsored listings;
b) the Respondent has never been commonly known by the Disputed Domain Name; and
c) the Respondent is not making legitimate, non commercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark at issue.
The Complainant furthermore contends that the Respondent has registered and is using the Disputed Domain Name in bad faith, because in response to an anonymous offer to purchase the Disputed Domain Name, the Respondent posted a counter offer of USD50,000 with the following notice: “Sorry, your offer is too low to be considered. Separately, we are not interested in selling this name.” Consequently, the Complainant is of the view that the Disputed Domain Name has been registered primarily for the purpose of selling, renting or otherwise transferring the Disputed Domain Name to the owner of a corresponding trade mark or to a competitor for a valuable consideration in excess of the Respondent’s out of pocket costs.
The Complainant also indicates that it has not been in a position to uncover any information about the Respondent which has made it impossible for it to determine whether the Respondent engaged in a pattern of conduct in registering domain names in order to prevent the owners of corresponding trade marks from reflecting their own marks.
The Complainant also offers, as an indication of bad faith, the fact that the Respondent has not for a period in excess of ten years, used the Disputed Domain Name other than a parking site or to host sponsored listings, which suggests that the Disputed Domain Name was only registered for the purpose of disrupting the business of the owner of the corresponding mark and/or for the purpose of selling it to the owner of a corresponding mark for a valuable consideration in excess of the Respondent’s out of pocket costs.
The Complainant requests that the Disputed Domain Name be transferred to it.
The Respondent denies that the Disputed Domain Name is confusingly similar to the trade mark in which the Complainant has rights. It expresses that the words “super” and “max” are merely descriptive and together form a phrase commonly used when describing something that is “the best” or “the most” either by quality or by quantity. The Respondent contends that the Disputed Domain Name itself is descriptive and cannot be considered to be confusingly similar to the Complainant’s trade mark, particularly if it is not applied to products similar to that of the Complainant.
The Respondent advises in connection with any rights or legitimate interests that it may have in respect of the Disputed Domain Name that it intends to use it for a shopping and price comparison search engine website. It is critical of the archived records used by the Complainant, on the basis that they do not provide an accurate indication of the Respondent’s use of the Disputed Domain Name over the course of its ownership term.
The Respondent contends that it is currently using the website associated with the domain name <max.net> as a price comparison search engine and that it intends to re-brand the <max.net> service under the name ”Supermax”. It advises that it has for several years been developing the “Supermax” service and that the website at the Disputed Domain Name defaults only temporarily to a parking page over which the Respondent has no control.
The Respondent denies that there will be any confusion between the Disputed Domain Name and the Complainant’s products because its intention is not to use the Disputed Domain Name in relation to shaving systems, razors and razor blades, which are the goods in respect of which the Complainant has acquired trade mark protection.
The Respondent submits that the intention has not been to obtain any commercial benefit or to sell the Disputed Domain Name to the Complainant or to prevent the Complainant from obtaining a corresponding domain name or to disrupt its business. The Respondent points out that it was not interested in selling the Disputed Domain Name when the Complainant’s third party offer was made and therefore returned it with an excessive counter offer to discourage it. It also points out that it stated clearly in its reply that it was not intent on selling the Disputed Domain Name.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove:
i) that the Disputed Domain Name is identical or confusingly similar to a trade mark ot service mark in which it has rights;
ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or confusingly similar
The Panel finds that the Complainant has demonstrated rights in the trade mark SUPERMAX by virtue of its registered trade marks in several countries. The Panel finds this despite the Respondent’s contention that the Complainant’s trade mark is generic. It is an accepted principle in UDRP proceedings that if a complainant owns a trade mark, it generally satisfies the threshold requirement of having trade mark rights. The descriptiveness concerning the word SUPERMAX may, however, have bearing on whether the Respondent has a right or legitimate interest in the Disputed Domain Name.
The Panel also finds that the Disputed Domain Name is identical to the Complainant’s trade mark SUPERMAX.
B. Rights or legitimate interests
If the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, the Respondent must come forward with evidence demonstrating that it has rights or legitimate interests in the Disputed Domain Name. In the absence of any evidence or basis for rights or legitimate interests, then it may be found that the Respondent lacks a legitimate interest in the Disputed Domain Name, even if the domain name comprises of a descriptive or dictionary word or phrase. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.2 and the cases referred to.
Since the Respondent in this instance has not shown that it has been commonly known by the Disputed Domain Name, much turns on whether it can be found to have made demonstrable preparations to use or has already made use of the Disputed Domain Name or a name corresponding to the Disputed Domain Name as provided in Paragraph 4(c)(i) or (ii) of the Policy, and also whether any such use was for the bona fide offering of goods or services, or non-commercial.
The Panel finds that the Respondent has made out a case in terms of Paragraph 4(c)(i) of the Policy in that it has, before notice of the dispute, used a name corresponding to the Disputed Domain Name in connection with the bona fide offering of goods and services.
The Respondent owns and uses the domain name <max.net>, which, on investigation by the Panel, was found to have been registered in May 1995 and is used in connection with a price comparison search engine service. The Panel is of the view that the domain names <max.net> and <supermax.com> are corresponding domain names (paragraph 4(c)(i) does not require an identical name to be used, but a corresponding one) on the basis that they are conceptually identical, with the only difference between them the word “super” (which in any event has a similar meaning to the word ”max”).
Furthermore, Paragraph 4(c) of the Policy does not provide an exhaustive list of circumstances which may demonstrate a respondent’s rights or legitimate interest in a domain name and in this instance, the Panel also takes cognizance of the following factors in finding, over and above the finding set out in the previous paragraph, that the Respondent has demonstrated rights or legitimate interests in the Disputed Domain Name:
a) The Respondent registered the Disputed Domain Name as long ago as 1997;
b) None of the sponsored links which appear on the website attached to the Disputed Domain Name are in competition with the products offered by the Complainant, which would be an important consideration in determining whether the Respondent’s conduct may be considered fair;
c) The Respondent’s reply to the offer made by the Complainant’s third party to sell the Disputed Domain Name, was that it was not interested in doing so; and
d) The Disputed Domain Name is a common phrase, as demonstrated by a quick glance of the results delivered by any search engine for this phrase, and is not associated exclusively with any single party.
The Panel finds that the Complainant has not discharged its onus in respect of the second requirement and that the Respondent has rights or legitimate interests in the Disputed Domain Name.
C. Registered and used in bad faith
Since the Complainant’s case should meet all three requirements in paragraph B above and has not met the requirement in connection with the Respondent’s rights or legitimate interests, the Panel does not consider it necessary to consider the issue of the registration and use of the Disputed Domain Name in bad faith.
For all the foregoing reasons, the Complaint is denied.
Charné Le Roux
Dated: January 24, 2012