WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Asbach GmbH v. Econsult Ltd., d.b.a. Asbach Communities and Whois-Privacy Services
Case No. D2012-1225
1. The Parties
Complainant is Asbach GmbH of Rüdesheim, Germany, represented by Klinkert Zindel Partner, Germany.
Respondent is Econsult Ltd., d.b.a. Asbach Communities of Saint Petersburg, Russian Federation and Whois Privacy Services, Saint Petersburg, Russian Federation. A representative of Econsult Ltd., d.b.a. Asbach Communities has submitted a Response.
2. The Domain Name and Registrar
The disputed domain name <asbach.com> is registered with DomReg Ltd. d/b/a LIBRIS.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2012. On June 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2102, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to Complainant on June 27, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 29, 2012; the Panel discusses the substance of the amendment in Sections 6-C and 6-F below.
The Center verified that the Amended Complaint (referred to in this decision as 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 July 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2012. The Response was filed with the Center on July 25, 2012.
The Center appointed Richard G. Lyon as the sole panelist in this matter on July 31, 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 August 2, 2012, Complainant filed a Supplemental Filing with the Center. On August 3, 2012, the Center advised Complainant that the Policy and the Rules contain no express provision for supplemental filings by either party, except in certain circumstances not present in this case. The Center advised Complainant that its Supplemental Filing would be forwarded to the Panel and that “It will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision, and whether to order further procedural steps, if any.”
Respondent Econsult Ltd., d.b.a. Asbach Communities (“Econsult”) submitted a Supplemental Filing in reply to Complainant’s Supplemental Filing on August 8, 2012, after the Panel had submitted his draft decision to the Center.
4. Factual Background
Complainant, based in Germany, makes spirits and related products that it distributes worldwide under the brand name “Asbach”. Complainant holds trademarks, duly registered with the appropriate national authorities, in its home country and many other countries around the world, the dominant feature of which is “Asbach.” Most of Complainant’s marks are for brandy and brandy-filled chocolates. Complainant actively markets its branded products on the Internet and owns many domain names featuring its ASBACH trademark.
Respondent is a Russian entity based in Saint Petersburg. The disputed domain name was created on March 6, 2000. Respondent acquired it by purchase from an unrelated entity in June or July 2011. At present, and apparently since Respondent’s acquisition, the disputed domain name does not resolve to an active website; an Internet user who enters it into her browser receives the following:
5. Parties’ Contentions
Complainant contends as follows:
1. The disputed domain name is identical to Complainant’s ASBACH marks, which are valid and registered around the world.
2. Respondent lacks rights or legitimate interests in the disputed domain name. Complainant’s ASBACH trademark rights predate by many years the creation of the disputed domain name in 2000. Complainant has not licensed either Respondent to use its ASBACH marks. Whois-Privacy Services is not known by the disputed domain name and while Asbach Communities is part of Respondent Econsult’s name there is no evidence to show that it has been commonly known, commercially or otherwise, by that name. As Respondents have made no use of the disputed domain name, there has been no bona fide offer of goods and services.
3. “When registering the [disputed domain name] the Respondents must have known of the Complainant’s trademarks and worldwide distributed famous products.” It is “opportunistic bad faith” to register a domain name incorporating a “well-known trademark” by one having no connection with the relevant product. Bad faith in registration is further illustrated by Respondent’s use of a privacy shield service. “Last but not least, the [R]espondent is engaged in a pattern of conduct which proves the registration of [the disputed domain name] in bad faith.” Citing five UDRP cases, Complainant asserts that Respondent Whois-Privacy Services “registered famous trademarks of third parties as domain names occasionally.”
Respondent contends as follows:
1. While not contesting Complainant’s trademark rights, Respondent asserts that permission from all trademark owners is not required to register a domain name; Complainant has not actively enforced or protected its rights; Complainant has waited too long – over a decade since the disputed domain name was first created – to seek a transfer; and that the existence of many other businesses that include the word Asbach in their names or domain names “highly dilut[es]” Complainant’s trademark rights.
2. As to paragraph 4(a)(ii) of the Policy, Respondent rights in “Asbach” are “superior” to Complainant’s, and the Complaint should be denied because of Complainant’s “unclean hands”, illustrated by providing misleading or incomplete information to the Panel. Respondent also identifies two uses to which it has put the disputed domain name that furnish it a right or legitimate interest. The first of these is internal use of the disputed domain name only, for email purposes. The second is use in connection with a planned business involving social networking, communications and “virtual infrastructure” within regions and communities in the Russian Federation and Germany, Asbach among them. Respondent represents a joint venture that was formed for the following purposes (Response, paragraph 220.127.116.11):
“- capitalize on the interest of the inhabitants (along with the other people who can identify themselves, for example, as “Asbachers” as well as their relatives, friends and colleagues) of the German and Russian towns and villages including Asbach (and 10 other destinations), in social networking and communicating within their local communities at web-site at www.asbach.com; by establishing e-mail addresses; by creation of their personal web-sites; news portals and IP-radio and TV-studios and etc.
- all this can be performed by the virtue of creative and interacting versatility of subdomains to be created on the Domain platform);
- formation of the virtual infrastructure for the peoples communication and entertainment within the local communities in Europe, provided that “Asbach community” is supposed to be one of the projects within the general business strategy of the JVA [Joint-Venture Agreement], called “Virtual Communities” (the name for the JVA Project).”
3. Actual rather than constructive knowledge of Complainant’s mark at the time of registration is required to prove bad faith, and Complainant has shown no evidence of Respondent’s knowledge of the ASBACH mark in 2011, at the time Respondent bought the disputed domain name from a company named OfficeMail Ltd. (Response, Annex 6) as it was agreed by the parties to the JVA (Response, Annex 7). Complainant has similarly offered no proof to show that Respondent’s use or contemplated use interferes or competes with Complainant’s business. Respondent’s use of a “very prominent provider of [privacy] services” was entirely legitimate.
6. Discussion and Findings
A. Language of the Proceedings
The registration agreement under which the disputed domain name was registered is in Russian, so ordinarily Russian would be the language of this proceeding. Rules, paragraph 11(a). Complainant argues that English is appropriate for a variety of reasons, and submitted the Complaint in that language. Respondent elected1 to reply in English, thus mooting any controversy on this issue.
B. Complainant’s Supplemental Filing
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either party. The proper procedure to submit additional materials is to file the proposed submission with a statement of why the Panel should depart from standard practice and allow the requested submission. Here Complainant states, in its Supplemental Filing, “[Respondent’s] Response contains a large number of false allegations that have to be corrected.”
It is now well settled that, consistent with the Policy’s stated objective of prompt and efficient resolution of a
limited class of disputes, unsolicited supplemental filings (i.e., those not expressly requested by the panel) will be allowed only in exceptional circumstances. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2. With very limited exceptions the “exceptional circumstances” involve matters that arise after the complaint was filed and which could not reasonably have been anticipated when the complaint was filed. See, e.g., Digital Ceramic Systems Limited v. Baltea SRL, WIPO Case No. D2012-1198 (“ the supplemental filings should address relevant issues which were not known by the filing party at the time that it filed its documents”); Mani Brothers, LLC v. Lincoln Gasking, WIPO Case No. D2008-0097 (“[p]anels that have allowed additional pleadings generally do so only when the response includes a matter that the complainant could not reasonably have anticipated when the complaint was filed”).
There is nothing exceptional in Complainant’s proposed Supplemental Filing. On the contrary (and also contrary to Complainant’s stated basis for an extraordinary filing) almost all of that pleading is re-argument of matters in the Complaint, legal argument in response to Respondents’ contentions, or unsubstantiated charges of Respondent’s misleading the Panel. The Panel found nothing in the Response that Complainant could not and should not have reasonably anticipated. Accordingly the Panel disallows the proposed Supplemental Filing and will not take it into account in his decision.2 Respondent’s Supplemental Filing is disallowed on the same basis, and as moot.
C. Identity of Respondent
In accordance with paragraph 1 of the Rules (“Respondent means the holder of a domain-name registration against which a complaint is initiated”), Complaint named Whois-Privacy Services as the respondent in its initial Complaint. Following the Registrar’s notification of a different registrant, the Center, following its customary practice (see WIPO Overview 2.0, paragraph 4.9), so notified Complainant and invited Complainant to amend its Complaint to take account of the registrant indicated by the registrar.
Complainant did so, albeit reluctantly, and added Econsult Ltd., d.b.a. Asbach Communities as a second named Respondent. Complainant asserts that a transfer from Whois-Privacy Services to Econsult after notice of the Complaint constituted a breach by the Registrar of paragraph 8(a)(i) of the Policy.
The Policy and Rules make no mention of privacy services or proxy registrations, a practice that has become relatively common in recent years. Though as discussed below (Section 6-F) in certain circumstances use of a privacy service may be evidence of bad faith, most panels have come to recognize that the widespread use of such services coupled with the Policy’s focus on cybersquatting dictate attention to the “real party in interest”, the principal for which the proxy registered the applicable domain name. Thus, nearly every panel that has considered the matter looks to the Policy’s requirements as they apply to the underlying registrant, which in this case is Econsult.
That is the approach this Panel consistently takes and would ordinarily take in this proceeding. Econsult is the principal and it is Econsult that has filed the Response. To take account of Complainant’s contrary view (Complaint, paragraph 6quinquies), that Whois-Privacy Services is the proper Respondent, however, this Panel will discuss their applicability to both named Respondents.
D. Identical or Confusingly Similar
Respondent has conceded the operative facts upon which this Policy head turn – that Complainant holds valid trademarks for ASBACH, and that the disputed domain name incorporates the mark verbatim. In a Policy proceeding identity or confusing similarity to the complainant’s mark is a “threshold” or “standing” requirement, see WIPO Overview 2.0, paragraph 1.1. Defenses often available in trademark infringement litigation, such as laches, dilution, non-enforcement, or abandonment, have no bearing under paragraph 4(a)(i) – although they may bear upon the panel’s determination of the latter two requirements of paragraph 4(a). Ibid; see also General Motors LLC v. Flashcraft, Inc DBA Cad Company, WIPO Case No. D2011-2117.
Complainant has proven this Policy element.
E. Rights or Legitimate Interests
Complainant has failed to carry its evidentiary burden under this Policy head, for separate reasons as to each Respondent.
Respondent Econsult has submitted a joint venture agreement dated June 2011, about the time it acquired the disputed domain name from OfficeMail Ltd., under which Econsult would on behalf of the joint venture register a number of domain names, including the disputed domain name, for the purposes noted in paragraph 18.104.22.168 of the Response, quoted above, and additional materials that support its claim of rights and legitimate interests in the disputed domain name. Asbach is in fact a name of a number of communes in Germany and Respondent has in fact registered other domain names incorporating other similar geographic identifiers.
While Respondent provided no evidence that it has commenced this business, these materials well exceed what is needed to prove the “demonstrable preparations” to do so required under the Policy’s safe harbor in paragraph 4(c)(i). That threshold is not high, “Even perfunctory preparations have been held to suffice for this purpose.” Télévision Française 1 (TF1) v. Khaled Bitat, WIPO Case No. D2007-0137. Nothing in the record beyond the fact that Respondent has chosen a domain name for a region that coincides with Complainant’s mark indicates or suggests that Respondent’s proposed business will compete with Complainant or otherwise play off the goodwill attached to Complainant’s mark. Respondent has produced evidence to show that it does have a right or legitimate interest in the disputed domain name.
Respondent Whois-Privacy Services’ only use of the disputed domain name was to register it as agent or proxy for its principal, as it is contractually obliged (both to its customers and to ICANN) to do. As there is no evidence of impropriety in that registration (see Section 6-F below) that use is bona fide and entirely legitimate for Policy purposes.
F. Registered and Used in Bad Faith
While not necessary to its Decision, the Panel elects to discuss this Policy head because of Complainant’s charge of Registrar misconduct.
Complainant acknowledges that registration and use of the disputed domain name in bad faith must be proven separately (Complaint, paragraph 30). The claimed bases for use in bad faith (beyond use of its ASBACH marks) are Respondent’s use of a privacy service, the Registrar’s “pattern” of bad faith conduct in “occasionally” registering domain names that incorporate well-known marks and any registration of a domain name incorporating a “well-known trademark” by one having no connection with the relevant product.
The first two of these reveal a misunderstanding of both the domain name registration system and the nature of private or proxy registration. An ICANN-accredited registrar is required to register a domain name designated by its customer the registrant upon the customer’s certification as prescribed in the Policy. The registrar makes no investigation and is not permitted to make any investigation of the veracity or completeness of its customer’s undertakings, among them that “to [registrant’s] knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party” and “It is [registrant’s] responsibility to determine whether [its] domain name registration infringes or violates someone else’s rights.” Policy, paragraph 2. The registrant, not the registrar, makes these undertakings. In each of the cases cited by Complainant in its contention of “pattern” of bad faith (see Policy, paragraph 4(b)(ii)), it was the conduct of the underlying registrant, not the registrar, that was found by the panel to constitute bad faith. In each of those cases the panel, without discussion, followed accepted practice by treating the registrant rather than the registrar or privacy service as the respondent in determining bad faith.
A registrant may elect privacy services for many legitimate reasons; ease of account management, ease of re-registration, avoiding accidental failure to renew, avoiding identity theft and evasion of spam all come quickly to mind. The consensus view in WIPO Overview 2.0, paragraph 3.9, begins “[a]lthough use of a privacy or proxy registration service is not in and of itself an indication of bad faith”.
In this case the only Registrar conduct identified as improper is the alleged post-Complaint transfer of the disputed domain name from the privacy service to the registrant Econsult Ltd., d.b.a. Asbach Communities. As explained in paragraph 4.9 of WIPO Overview 2.0, this may not and very likely was not a transfer at all, rather it was the Registrar’s disclosure to the Center as dispute resolution provider of the identity of the underlying registrant. Many registrars follow this practice, including a contractual agreement with their customers that the real party in interest’s identity will be disclosed upon receipt of a UDRP complaint. This practice, which this Panel has elsewhere commended,3 allows the UDRP proceeding to go forward in much the ordinary course, without undue delay caused by difficulties in identifying the underlying registrant. For one thing it permits the complainant to amend its complaint to address any arguments dependent upon the identity of an underlying registrant whose identity might otherwise be concealed.
This practice, together with the Center’s practice of inviting amendment, is almost certainly what has occurred in this case. The Registrar disclosed the proxy’s underlying registrant and Complainant was given and accepted an opportunity to amend prior to commencement of the proceeding. The Panel based his decision on contentions applicable to both named Respondents. The Panel detects no impropriety on the part of the Registrar or the Center.
Complainant has “reserved the right to notify ICANN” of its charges of Registrar misconduct. Complaint paragraph 6ter. Should it choose to do so the Panel requests that Complainant include a copy of this Decision.
Complainant’s final contention on use in bad faith may be swiftly dispensed with. Registration of even a famous mark, standing alone, is not enough to find bad faith. As Respondent contends, both actual knowledge of the mark and targeting Complainant and its mark are necessary. By Complainant’s own statement (Complaint, paragraph 29) Respondent has made no use at all of the disputed domain name other than to register it. Even if actual knowledge could be inferred from the strength of Complainant’s marks (an inference this Panel probably would not make on the evidence presented), the record contains no evidence of targeting.
As to each Respondent Complainant has not proven bad faith use of the disputed domain name.
For the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Date: August 7, 2012
1 The Center notified the Complaint in both English and Russian.
2 The Panel, following his customary practice, did read the proposed Supplemental Filing and notes that nothing in it would alter the decision in this case.
3 Arbella Mutual Insurance Company v. Private, Registration, Domains By Proxy, LLC, DomainsByProxy.com / David Haan, WIPO Case No. D2012-0615; Bittorrent Marketing GmbH v. AdIntensity Ltd, Adam Smith, WIPO Case No. D2007-1033.