WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Franck-Kosmos Verlags-GmbH v. CINIPAC IBC
Case No. D2012-1659
1. The Parties
The Complainant is Franck-Kosmos Verlags-GmbH of Stuttgart, Germany, represented by Rechtsanwälte Rasch, Germany.
The Respondent is CINIPAC IBC of Kuala Lumpur, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <diedreifragezeichen.net> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On August 28, 2012, the Center notified the Complainant of a formal deficiency with the Complaint, which was duly amended by Complainant on the same date.
The Center verified that the Complaint together with the amendment 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 September 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2012.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on October 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 registered several trade marks for DIE DREI ??? with the German Patent and Trademark Office, including Reg. No. 30513937 registered on October 20,2005; Reg. No. 39923200 registered on January 20, 2000 and Reg. No. 30665715 registered on January 19, 2007. The Complainant also registered Community Trademark No. 003165917 ??? and device on January 26, 2010; No. 003700291 ??? KIDS and device on October 16, 2012; No. 008979437 ??? THE THREE INVESTIGATORS WE INVESTIGATE ANYTHING registered on October 24, 2012; and has obtained international trade mark registrations, designating a number of categories of goods and services.
The disputed domain name was registered on April 15, 2012.
5. Parties’ Contentions
The Complainant asserts that it is a publishing house based in Stuttgart, Germany and that it publishes a series of books of detective stories for adolescents and children under the name “Die drei ???” which in German equates to “Die drei Fragezeichen”, “Fragezeichen” being the German word for “question mark”. The series has its origins in the United States of America (“The three investigators”) and was launched in Germany in 1968, according to the Complainant. Since 1979, audio books have also been sold, published by the label “Europa” to which the Complainant assigned audiovisual rights. The Complainant asserts that the books are classics with cult status in German speaking countries and that to date 167 books and 155 audio plays have been published with over 27 million audio recordings sold, some episodes having sold more than 600,000 copies. The 25th anniversary of the series was celebrated with a reading before 120,000 spectators in a football stadium, according to the Complainant. DIE DREI ??? trade marks have an extraordinary level of recognition, the Complainant contends, and it has registered several relevant trade marks and asserts a vested interest in significant trade mark protection.
The Complainant contends that at the time of drafting of the Complaint the disputed domain name resolved to a website from which audio books could be streamed by way of a drop down menu, in a manner unauthorized by the Complainant. This constitutes piracy as no rights in the audio content or the pictured covers have been granted by the Complainant. As “Die drei ???” is pronounced “Die drei Fragezeichen” the Complainant contends that the disputed domain name and its trademarks are phonetically identical. Since punctuation marks cannot be registered in domain names, the word “Fragezeichen” is the domain name equivalent of “?”. In any case, the Complainant contends, the disputed domain name and the Complainant’s trade marks are confusingly similar as they are identical in meaning and the Complainant’s trade mark is recognizable within the disputed domain name.
Further, the Complainant asserts that it has never granted the Respondent permission to use the disputed domain name, nor is the Respondent known by the name “Die drei Fragezeichen”. The Complainant contends that the disputed domain name was registered to take advantage of its trade mark and capitalize on its value, which constitutes abusive registration and does not give rise to legitimate interests.
According to the Complainant, even if the Registrant is not exercising direct control over content of the website at the disputed domain name, it will normally be deemed responsible for that content. The website to which the disputed domain name resolves contains pop-up windows and links to third party websites, which the Complainant infers allows the Respondent to earn commissions. The Complainant asserts that the Respondent also generates income by asking for donations at its website. The relevant website therefore serves a commercial purpose, according to the Complainant, without any authorization from it. The Respondent’s use of the Complainant’s trade mark is thus not non-commercial fair use nor a bona fide offering of goods or services. It is being used to provide illegal streams of audio content, a form of piracy that cannot ground rights or legitimate interests.
The Complainant also asserts that a privacy or proxy service that has registered the disputed domain name to protect the privacy of a third party, as the Complainant presumes is the case here, is nonetheless the correct Respondent, in support of which it cites RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987) and RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), WIPO Case No. D2010-0894. The fact that the true underlying Respondent may not be shown does not, according to the Complainant, affect a finding that the Respondent has no rights or legitimate interests.
The Complainant also contends that the disputed domain name was registered by the Respondent with knowledge and intent to take unfair advantage of the Complainant’s trade marks in bad faith and obtaining pay-per-click advertising revenues and donations thus demonstrating use of the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not strictly speaking identical to any registered trade mark of the Complainant. The trademarks of the Complainant all contain the actual punctuation question marks “???” whereas the disputed domain name contains the word ‘Fragezeichen’ instead, the German language term for “question mark”. Nonetheless, as the Complainant points out, punctuation marks cannot be registered as part of a domain name, and therefore the Complainant, as any other party, has no choice but to render the symbol “?” as “Fragezeichen”. That term constitutes an accurate representation of the symbol, which is pronounced and used as such. Therefore the disputed domain name is in effect the closet possible representation of the Complainant’s trade mark “Die drei ???” in a domain name. If not identical, it so closely equates to the Complainant’s trade mark as to be confusingly similar. Any Internet user familiar with the Complainant’s trade marks would instantly recognize the disputed domain name to be the proper rendering of the Complainant’s trade marks in a domain name.
Therefore, the Panel holds that the disputed domain name is identical or confusingly similar to the Complainant’s trade marks.
B. Rights or Legitimate Interests
The Complainant asserts that it has not granted any rights in its trade marks to the Respondent, and the latter is not known by the name ”Die drei Fragezeichen” or anything similar. The Complainant suggests that it may be inferred from the facts that the Respondent is a proxy or privacy service provider and not in fact the real party holding the domain name. This may give rise to a conclusion that the wrong party is identified as the Respondent, as the latter is defined in the Rules as “the holder of a domain-name registration against which a complaint is initiated”. A further question may then in theory arise as to whether it is correct to ask whether CINIPAC IBC, as opposed to another party or entity, has rights or legitimate interests in the disputed domain name.
However, the Rules contain no definition of who is “the holder of the domain-name registration” for these purposes. As the panel in Mrs. Eva Padberg v. Eurobox Ltd, WIPO Case No. D2007-1886 points out: “5.9 So who is the Respondent for the purposes of 3(b)(v) of the Rules? In the Panel’s opinion the only sensible answer to this question is that it is prima facie the entity that is recorded in the registrar’s register as revealed by a Who Is search. There may be cases where it is believed by the complainant that this is a false address or pseudonym for the “true” or “real” owner of the domain name, and in such a case if the complainant believes it knows who the “true” or “real” owner is, this should be disclosed. However, in a case where this is not known to the complainant, it is sufficient that it simply identifies the individual or entity recorded in the Who Is search results at the time the Complaint is filed. In such a case, the complaint is compliant so far as this aspect of the Rules is concerned.” The panel thus finds that the Complainant in this case has therefore done enough by identifying as the Respondent the entity identified in the WhoIs search results at the time the Complaint was filed, and addressing the Policy’s requirements on that basis.
The Complainant asserts that the website to which the disputed domain name resolved at the time, allowed Internet users to stream the Complainant’s copyright protected content. The website also displayed infringing copies of covers of the Complainant’s books. The Complainant asserts in correspondence with the Center of August 28, 2012 that a “Google DMCA Complaint” was filed to have content removed from the search engine, and that the relevant website could subsequently no longer be found via the Google search engine. This was indeed the case when the Panel attempted to access the relevant website on October 14, 2012. A similar complaint concerning the “Bing” Microsoft search engine was also filed, according to the Complainant.
Further, the Complainant asserts that when it accessed the relevant website, hyperlinks to third party content were present as well as a request for donations. None of these features of the website to which the disputed domain name resolved are consistent with the Respondent acquiring rights or legitimate interests in the domain name. Instead they reflect a deliberate and abusive attempt to gain commercially or financially from incorporating, knowingly and without authority, the Complainant’s distinctive trade mark in the disputed domain name.
Under the circumstances, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, that the Respondent is neither commonly known by the disputed domain name, making a noncommercial or fair use of the disputed domain name, nor otherwise making a bona fide offering of goods and services, and can find no other basis to conclude that the Respondent has rights or legitimate interest in the disputed domain name.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Although in theory the disputed domain name contains an ordinary descriptive phrase (“The three question marks”), the reality is that this short phrase constitutes the representation in words of the Complainant’s well known mark DIE DREI ???. As the Complainant asserts, that mark is associated with its published works which have sold in very large numbers over a considerable number of years, and that in a number of German speaking countries. The trade mark thus had considerable acquired distinctiveness at the time of registration of the disputed domain name. Further, it is apparent from the immediately subsequent use made of the disputed domain name, that the Respondent was fully aware of the nature and extent of the Complainant’s business and its attached reputation.
In fact it is apparent to the Panel that the Respondent obtained the disputed domain name for the purpose of making available pirated versions of cover art and audio content from the corresponding website. The Respondent apparently sought to turn the disputed domain name to account by way of click-through fees and donations, for which purpose it rode on the coat-tails of the Complainant’s reputation.
Therefore the Panel holds that the disputed domain name was registered and has been used in bad faith.
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 <diedreifragezeichen.net> be transferred to the Complainant.
WiIliam A. Van Caenegem
Dated: October 22, 2012