WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ED Enterprise AG v. Guava Softs Pvt Ltd, Anshul Goyal
Case No. D2012-0147
1. The Parties
Complainant is ED Enterprise AG of Grünwald, Germany, represented by RWZH rechtsanwälte, Germany.
Respondent is Guava Softs Pvt Ltd, Anshul Goyal of Ludhiana, Punjab, India, represented by Ankur Raheja, India.
2. The Domain Name and Registrar
The disputed domain name <blaupunkt.biz> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2012. On January 27, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On January 27, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2012. Respondent filed its first Response with the Center on February 14, 2012. On February 14, 2012, Complainant submitted a “Supplemental Filing”. On the same date, the Center acknowledged its receipt and communicated to the parties that the Panel would be informed of the Center’s receipt of the Supplemental Filing, and that it would be in the sole discretion of the Panel to determine whether to consider or admit the Supplemental Filing in rendering its decision or whether to order further procedural steps. On February 17, 2012, a second Response was submitted by Respondent to the Center.
The Center appointed Richard G. Lyon as the sole panelist in this matter on February 22, 2012. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On March 6, 2012, the Panel issued the Administrative Panel Procedural Order No. 1, requesting Respondent to clarify certain references in the Response. Respondent did so that same day.
4. Factual Background
Complainant is an investor that, among other things, licenses intellectual property rights. Among the many trademarks that Complainant owns and exploits is BLAUPUNKT. This mark has been used in Germany for car radios since 1920, and registered as a trademark there in 1939. The BLAUPUNKT mark has been registered in many countries around the world, including a registration in India, Respondent’s home country, in 1985. BLAUPUNKT is a well-known mark for radio products in many countries.
Respondent registered the disputed domain name on October 26, 2011. The disputed domain name currently resolves to a standard registrar’s parking page, on which the registrar’s name is printed at the top and the registrar’s advertising for domain name services appears very prominently. There is a column of hyperlinks for radio products, including (listed first) those of Complainant.
5. Parties’ Contentions
The Panel summarizes Complainant’s contentions as follows:
The disputed domain name is identical to Complainant’s well-known registered trademarks except for the generic Top-Level Domain, “.biz.”
Complainant has never authorized Respondent to use its marks, and Respondent has never been known by the word “blaupunkt.” Respondent has never used the disputed domain name for any legitimate business. Its only use has been the parking page, which without authorization is not bona fide or legitimate for Policy purposes. Indeed the parking page implies authorization from or affiliation with Complainant, to the confusion of Internet users seeking Complainant.
Complainant’s BLAUPUNKT mark is well-known (“famous”) around the world, and Respondent registered it to gain a free ride on the renown of that mark by misleading Internet users, for commercial gain, by implying the false notion that Respondent is or is affiliated with Complainant. Further Respondent registered the disputed domain name to deprive the mark owner (Complainant) from registering a domain name that incorporates its mark, and to disrupt Complainant’s business.
The Panel summarizes Respondent’s contentions as follows:
Respondent acknowledges identity of the disputed domain name with Complainant’s mark, but denies any bad faith intention or commercial use.
Respondent is making a legitimate, noncommercial use of the disputed domain name. Respondent has been developing a business at a website “www.email.biz” from which customers may make use of various domain names with “.biz”. This business is described at a YouTube page prepared by Respondent. The “default parking page” was generated by the registrar without Respondent’s participation, and has never generated any revenue for Respondent. Respondent never sought to take advantage of Complainant’s BLAUPUNKT mark other than to provide a noncommercial service involving free email.
Respondent has never sought to sell the disputed domain name to Complainant or anyone else. Respondent registered the disputed domain name without any intent to take advantage of Complainant’s mark or violate anyone’s intellectual property rights, or for any reason other than its intended free email service. Thus Complainant has not established Respondent’s bad faith in registration or use.
6. Discussion and Findings
A. Supplemental Filings
Before turning to the merits the Panel addresses whether to consider Complainant’s Supplemental Filing and Respondent’s second Response, which is a reply to Complainant’s Supplemental Filing. Complainant submitted its Supplemental Filing to challenge Respondent’s allegation that the disputed domain name was not offered for sale to Complainant, citing an email sent subsequently to the filing of the Complaint in which Respondent offered to transfer the disputed domain name to Complainant for USD 250, “the price for which [Respondent] paid” for it. For two reasons firmly grounded in Policy precedent the Panel determines not to admit the parties’ supplemental filings.
First, Complainant did not ask the Panel’s permission or identify exceptional circumstances that would warrant its consideration and admission of the supplemental filing. After more than a decade of Policy practice it should be clear – especially to a professional representative of a party – that any pleading outside the two expressly authorized by the Policy and Rules rests in the Panel’s discretion. The Rules stipulate that further filings may be made only at the Panel’s discretion and the principles under which unsolicited supplemental filings are readily discernable from previous decisions and as distilled in public WIPO resources such as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) (see paragraph 4.2, Consensus View, and Rules, paragraph 12). In the present case, the Panel does not find such exceptional circumstances.
Second, matters in a Policy proceeding turn on pre-Complaint conduct, and Respondent’s email came after the Complaint was filed. This is particularly pertinent, as Respondent’s email could easily be taken as its consent to transfer the disputed domain name upon reimbursement of its out-of-pocket costs “directly related to the disputed domain name.” Policy, paragraph 4(b)(i); WIPO Overview 2.0, paragraph 4.13, Consensus View. It is difficult to argue that USD 250 is extortion, blackmail, “valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name” (Policy, paragraph 4(b)(i)), or anything more than reimbursement. Furthermore, Respondent indicated that the disputed “[d]omain [name] is all [Complainant’s] either [Complainant] pay[s] 250$ or not.” Assuming Respondent’s offer in this respect was genuine, it is conceivable that in accepting this proposal from Respondent Complainant could have saved Respondent the time and trouble of preparing a Response and the Panel the time to write a decision on the merits. However this may be, this did not transpire, and as will be seen below, the issue of whether Respondent offered the disputed domain name for sale is irrelevant to the Panel’s decision.
For these reasons the Panel declines to admit either Complainant’s Supplemental Filing or Respondent’s second Response and will take no account of them in its decision.
B. Identical or Confusingly Similar.
Respondent concedes identity, so paragraph 4(a)(i) of the Policy is satisfied. Use to which the disputed domain name has been put has no bearing on the Panel’s determination under this Policy head. WIPO Overview 2.0, paragraph 1.2, Consensus View.
C. Rights or Legitimate Interests.
Respondent also concedes Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy, that Complainant has not authorized Respondent to use its BLAUPUNKT mark and that Respondent has never been commonly known by the word “blaupunkt”. Respondent seeks to overcome that case by showing that it is using the disputed domain name in connection with a bona fide business and that it is making a legitimate noncommercial use of the disputed domain name.
Respondent operates several web-based businesses at its principal website “www.guavasofts.com”. A tab on the Services page at that website includes a link entitled “www.Email.biz”, which Respondent asserts will in future be used to provide customers with a choice of domain names with top-level suffix, “.biz” for “free email service.” Respondent points to a YouTube video that includes further information about this planned service. While not entirely clear as to the details, this video does include the phrases “choose your premium email ID” and “free email,” and a plethora of “.biz” domain names. All the illustrative domain names are letter combinations, number combinations, or common words or phrases (e.g., <guys.biz> and <loud.biz>); the Panel noted no contrived words or trademarks. The disputed domain name is not included. It is not clear to the Panel how the service will work or what (if any) service is without charge. Based on this Respondent contends it is using the disputed domain name in connection with a bona fide offering of goods or services (see Policy, paragraph 4(c)(i)), and making a legitimate or noncommercial fair use of the disputed domain name (Policy, paragraph 4(c)(iii)).
Respondent’s proposed “Email.biz” business may be, as it appears to the Panel to be, entirely legitimate. That fact however does not establish that its use of the disputed domain name is bona fide or legitimate under paragraph 4(a)(i). To overcome Complainant’s prima facie case Respondent must provide evidence that it may use Complainant’s mark in connection with the disputed domain name. That Respondent has failed to do. Nothing in the record indicates that use of Complainant’s mark is (or putative use will be) in anything other than the trademark sense, as an identifier. Respondent makes no showing or allegation that it was registered as a common word combination (“blau punkt” means “blue point” in German) or that if so such use is permissible. Respondent acknowledges that its employees selected “.biz” domain names for registration based solely upon popularity, without regard to trademark rights.
Also it is not entirely clear that possible use in the planned “Email.biz” business is as Respondent claims noncommercial. Respondent states that the free email service “may in turn help promotion of Respondent’s online products and services.” That appears to the Panel to be commercial even if email service or another loss leader might be “free.”
Another difficulty with Respondent’s defense is that the only actual use to which the disputed domain name has been put is a parking page that includes links to Complainant and Complainant’s competitors. Respondent claims that this use and webpage content were registrar-generated without Respondent’s participation. That fact, which is likely true, in ordinary circumstances avails Respondent naught. Registrar-generated pages are in most circumstances attributable to the domain name owner. Again the WIPO Overview 2.0 is on point. Paragraph 3.8 provides in pertinent part:
Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an "automatically" generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or "commercial gain" was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant. Reasons may include that a rights holder should be able to rely on the registrant for enforcement purposes, or that such registrant has undertaken not to infringe third party rights in its registration agreement (see paragraph 2 of the UDRP).
Some panels have found that the inclusion of such advertising links may not necessarily be a basis for finding respondent bad faith where shown to be genuinely automated, and there is no evidence that the respondent influenced the advertising content, and the respondent credibly denies knowledge of the complainant's trademark and there is no evidence of the respondent previously being put on notice of such mark, and other indicia of cybersquatting are not present.
This Panel agrees with this approach and the logic supporting it, though it might rephrase the exception somewhat. That leaves the question of whether any circumstances of this case might justify an exception. The Panel finds none. On the contrary, Respondent offers many online products and services, and its YouTube video indicates that it has registered or intends to register many “.biz” domain names in connection with its “Email.biz” business. Anyone professionally conversant with online services and domain name-related business may be presumed to be aware of the fact that registrars will commonly prepare parking pages for undeveloped domain names registered with them, unless the registrant takes the proper steps to opt out of such arrangement, (whether or not at additional expense), to prevent this. In this case the “default parking page,” to use Respondent’s term, is attributable to Respondent. That page is not bona fide use for Policy purposes.
Complainant has satisfied paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith.
For many of the reasons set forth in the preceding section, Respondent’s bad faith in registration and use is clear. As noted in WIPO Overview 2.0, paragraph 3.8, quoted above, a parking page of hyperlinks is usually (and is here) used in bad faith.
Respondent does not deny, and very likely could not credibly deny, knowledge of Complainant’s mark; rather Respondent impliedly concedes this knowledge by pointing out that use of the disputed domain name in the “Email.biz” business might aid Respondent’s other businesses. Respondent has likewise not denied (nor could it credibly deny) that its use or putative use of Complainant’s mark is in the trademark sense, to take advantage in some shape or form of the renown of Complainant and it mark.
The Panel wishes to point out that the possibly pejorative Policy term of bad faith is determined, to extent possible, on the objective evidence. A pure heart will not excuse conduct determined on the evidence to violate a Policy provision or Policy precedent directing a finding of bad faith. Respondent’s conduct as shown in the record has been in many respects praiseworthy. Respondent has not avoided or ignored this proceeding, and upon receipt of the Complaint may well have offered a transfer in return for reimbursement of its out-of-pocket costs. Fatal to Respondent’s case is its failure to overcome Complainant’s undenied showing that Respondent has no right, without authorization, to make use of Complainant’s mark in its business activities.
Complainant has established Respondent’s bad faith in registration and use of the disputed domain name.
For 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 <blaupunkt.biz> be transferred to Complainant.
Richard G. Lyon
Date: March 6, 2012