WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TETRIS Grundbesitz GmbH & Co. KG v. PrivacyProtect.org / PAPADOPOULOU DORA
Case No. D2012-0444
1. The Parties
The Complainant is TETRIS Grundbesitz GmbH & Co. KG of Reichenschwand, Germany, represented by Rau, Schneck & Hübner, Germany.
The Respondent is PrivacyProtect.org of Nobby Beach, Queensland, Australia / PAPADOPOULOU DORA of Larisa, Greece.
2. The Domain Name and Registrar
The disputed domain name <tetris-built.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2012. On March 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2012, the Registrar 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 March 9, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed two amendments to the Complaint on March 13, 2012, and March 15, 2012.
The Center verified that the Complaint together with the amendments 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 March 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2012.
The Center appointed Andrew D.S. Lothian as the sole panelist in this matter on April 18, 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.
On April 23, 2012, the Panel issued Administrative Panel Procedural Order No. 1 requesting that pursuant to paragraph 11(b) of the Rules the Complainant provide: (1) a translation into the English language of the Complainant’s Annex 2 (being a series of screenshots of the website associated with the disputed domain name in the Greek language dated September 29, 2010); (2) a translation into the English language of an up to date version of the homepage of the website associated with the disputed domain name, which was published in the Greek language; and (3) a translation into the English language of the Complainant’s Annex 4 (being a copy of the Complainant’s German trademark in the German language). On April 25, 2012, the Complainant filed its Annex 2.1 being a translation of item (1) above and Annex 4.1 being a translation of item (3) above. On April 27, 2012, the Complainant filed a translation of item (2) above.
The Procedural Order allowed the Respondent a period of five days from receipt of the translated documents to comment upon them however the Respondent did not provide any comments.
4. Factual Background
The Complainant is a German entity. The Complainant is the owner of two trademarks in respect of the word mark TETRIS, namely German Trademark No. 2902145 registered on February 20, 1995, and Community Trademark No. 3099281 registered on November 18, 2004, each in respect of the services: “Building development, namely planning of foreign building projects with regard to organization. Building development, namely planning of foreign building projects with regard to financing; services in the field of real estate affairs and house and property management. Building promoter services, namely the conducting of building projects, for others.” The Complaint states that the Complainant uses the TETRIS trademarks for these services, although it provides no further evidence regarding its said use or of its business activities.
The disputed domain name was registered on August 6, 2010. As at the date of this Decision, the disputed domain name redirects to a website at the domain name <tetris-built.gr>. Screenshots of the website produced by the Complainant dated September 29, 2010, together with the Complainant’s translation of these from the Greek into the English language indicate that the subject matter of the website at the disputed domain name relate to a Greek company named “Tetris Built Environment”, which offered architecture and development services. The Complainant’s screenshots of April 26, 2012, featured the same company however its offering had been changed to renewable energy consulting and related construction projects. The most recent translation also featured the Respondent, “Dora Papadopoulou”, and stated that the Respondent is a project manager for “Tetris Built Environment”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant submits that the disputed domain name consists of the term “tetris”, which is identical to the Complainant's trademarks and the further element “built”, which serves as a hint to the building business that is the line of business for both parties.
The Complainant asserts that the Respondent does not seem to hold any trademarks or other rights in regard to the term “tetris” nor any other rights in the term “tetris”, which are older than the Complainant's trademarks.
The Complainant states that there are no indications that the Respondent has been commonly known by the name “Tetris-Built”. The Complainant adds that the Respondent is using the disputed domain name to advertise services in regard to the building business, which are similar to the services for which the Complainant's marks are registered.
The Complainant states that the Respondent has been contacted via mail by the Complainant's representatives in Greece and was asked to refrain from further use of the name “Tetris” for building business as well as the cancellation of the disputed domain name however the Respondent has failed to answer this letter.
The Complainant notes that the disputed domain name was registered through an anonymity service and states that this service has been frequently involved with domains found to have been registered in bad faith. The Complainant asserts that there is no necessity to register a domain name for business dealings using an anonymity service. The Complainant also submits that the content of the website at the disputed domain name consisted exclusively of pictures in order to avoid being found by Google search.
The Complainant states that the website associated with the disputed domain name is used as a forwarding site to the website “www.tetris-built.gr” and that it is therefore impossible to access the content of “www.tetris-built.com”. The Complainant asserts that this also shows that the Respondent has no genuine interest in the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 Complainant has provided evidence of its rights in its registered trademark TETRIS. This trademark differs from the disputed domain name only in respect that the disputed domain name adds the hyphen, the generic word “built” and the top level domain “.com” to the Complainant’s trademark. The top level domain may be disregarded for the purposes of comparison as is customary in cases under the Policy. Likewise, the hyphen may be disregarded as this is merely acting as a space between the words “tetris” and “built” in the disputed domain name, typographical spaces being not permitted in domain names.
Accordingly, the question for consideration is whether the addition of the generic word “built” is sufficient to distinguish the disputed domain name from the Complainant’s trademark. Numerous previous cases under the Policy have found that where a trademark is incorporated in its entirety within a domain name, the addition of a generic word will generally not distinguish that domain name from the trademark (see, for example, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409). In the Panel’s assessment, the dominant part of the disputed domain name is the Complainant’s trademark and not the word “built”. Furthermore, the Complainant points out that it is engaged in the building business and that the word “built” is itself associated with the Complainant’s business and its trademark.
In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that accordingly the first element under the Policy has been established.
B. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy, including that the disputed domain name has been registered and is being used in bad faith, will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding under the next head, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
In the present case, the Complainant has provided extremely bare submissions on the question of bad faith and has not framed its averments in accordance with any of paragraphs 4(b)(i) to 4(b)(iv) inclusive. As each of the circumstances expressed in those paragraphs are however non-exclusive, the Panel will proceed to consider whether any of the Complainant’s submissions demonstrate that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant first notes that the disputed domain name was registered through an anonymity service and that the service used has frequently been involved with domain names found to have been registered in bad faith under the Policy. The question of whether the use of a privacy or proxy registration service can form a basis for finding bad faith is considered in paragraph 3.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") which provides the following consensus view:
“Although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. For example, registrant use of a privacy service in combination with provision of incomplete contact information to such service or a continued concealment of the "true" or "underlying" registrant (possibly including that registrant's actual date of acquisition) upon the institution of a UDRP proceeding may be evidence of bad faith. Identification by a registrar or privacy or proxy service of another such service as the purported registrant of the domain name may also constitute evidence of cyberflight and bad faith, as may failure in response to a UDRP provider's request to timely confirm the identity and contact information of the registrant of the domain name where the registrant listed in the WhoIs is a privacy or proxy service (although such failure would not prevent a panel from deciding such cases, with the privacy or proxy service typically being regarded as the relevant respondent of record). Reference is sometimes made to paragraph 220.127.116.11 of the ICANN Registrar Accreditation Agreement aiming to regulate the “licensing” of a domain name.”
The Panel respectfully adopts the consensus view. The Complainant states that there is “no necessity” for a business to employ a proxy registration service. While that may be true, in the opinion of the Panel, there are perfectly legitimate reasons for using such a service, many of which are consistent with good faith and which would not be inconsistent with a registration by a business. One such example would be the desire to minimize unsolicited commercial email which is frequently sent to email addresses harvested from publicly available WhoIs information. The Panel does not find any additional circumstances in the present case, such as those envisaged by paragraph 3.9 of the WIPO Overview 2.0, which would result in this constituting a factor indicative of bad faith on the part of the Respondent.
The Complainant states that the content of the website at the disputed domain name consisted exclusively of pictures in order to avoid being found by Google search. According to the Complainant’s screenshots, this is how the website to which the disputed domain name resolves appeared on September 29, 2010; the later screenshots and indeed the website as it appears today do not depict a site based on images alone. In any event, the Panel is at a loss to understand exactly why the Complainant believes this to be an indicator of bad faith. Even if it were true that the Respondent had initially constructed its site in such a way for the purpose described, the Panel fails to see why any bad faith motivation should be ascribed to it for so doing and the Complainant does not explain further. In these circumstances the Panel does not find any merit in the Complainant’s submission on this point.
The Complainant states that the website associated with the disputed domain name is used as a forwarding site to the website “www.tetris-built.gr”, that it is therefore impossible to access the content of “www.tetris-built.com” and that this demonstrates that the Respondent has no genuine interest in the disputed domain name. The Panel simply does not accept this contention. In the Panel’s assessment there is nothing intrinsically indicative of bad faith in what the Respondent has done here, namely the registering of a second level domain name in one particular top level domain (in this case “.com”) in order to forward traffic to an identical second level domain registered in a different top level (in this case, the Greek country code “.gr”). Indeed, it is a practice which in the Panel’s experience is widely adopted by businesses for legitimate purposes, such as to have one primary domain name for a corporate website yet maintaining a “family” of related domains in other top levels. Clearly no content is maintained on a forwarding domain name but that does not mean that the registrant thereof has no interest in it. Accordingly, the Panel does not consider that this submission points to any bad faith on the part of the Respondent.
The above analysis addresses each of the specific submissions of the Complainant on the subject of bad faith registration and use. It is worth adding for the sake of completeness that it is generally accepted by UDRP panels that in order for a complainant to succeed under paragraph 4(a)(iii) of the Policy there must be some evidence that the respondent is targeting the complainant in some way, whether it be with intent to damage the complainant, to extract money from the complainant or to derive some unfair benefit on the back of the goodwill of the complainant. It is very unlikely that a respondent ignorant of the existence of the complainant and its trade marks can be said to have registered the domain name in question in bad faith, Kalahari, A Division Of Nasboek Ltd. (Sa) -V- Host Start Internet Services, Inc., WIPO Case No. D2001-0992.
In the present case the Panel considers that all the indications are that the website associated with the disputed domain name is that of a business operating in Greece providing a bona fide offering of services related to renewable energy. It appears to the Panel that the Respondent is one of the principals of that business. The Complainant has provided no evidence of how the Respondent would have had any knowledge of the Complainant (other than by way of the existence of the Complainant’s community trademark alone) and has put forward no circumstances from which it is reasonable for the Panel to infer that the Respondent is seeking to derive some unfair benefit on the back of the goodwill of the Complainant; moreover, the Complainant has provided no evidence whatsoever of the extent of the Complainant’s business, its goodwill or the fame of its trademark which would enable to Panel to take a more informed view regarding any likelihood that the Complainant or its trademark is being targeted by the Respondent.
This does not mean that the Complainant may not have other remedies in other fora relating to its Community Trademark however, on the evidence and submissions which it has placed before the Panel, the Panel considers that the Complainant is not entitled to the remedy which it seeks under the Policy.
In all of the above circumstances, the Panel finds that the Complainant has failed to prove on the balance of probabilities that the Respondent has registered and is using the disputed domain name in bad faith.
For the foregoing reasons, the Complaint is denied.
Andrew D.S. Lothian
Dated: May 8, 2012