WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bundesanzeiger Verlag GmbH v. Protected Domain Reg Ltd / Transfer Pending Status
Case No. D2013-0248
1. The Parties
The Complainant is Bundesanzeiger Verlag GmbH of Cologne, Germany, represented by Loschelder Rechtsanwälte, Germany.
The Respondent is Protected Domain Reg Ltd of London, the United Kingdom of Great Britain and Northern Ireland (the “UK) and Transfer Pending Status of the United States of America (the “US”).
2. The Domain Name and Registrar
The disputed domain name <bundesanzeiger.org> is registered with Alantron Bilişim Ltd Şti. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2013. On February 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is the current registrant of the disputed domain name and provided the full contact details for the disputed domain name registrant, which differed from the one indicated in the Complaint. Further to the Registrar’s verification response and with reference to the Registrar’s email communication of February 11, 2013 (concerning the expiry of the disputed domain name), the Center sent an email communication to the Registrar on February 15, 2013 noting that it will proceed on the understanding that the Respondent as named in the Complaint by the Complainant, “Protected Domain Reg Ltd”, is the current registrant of the disputed domain name and that the registrant details (“Transfer Pending Status” as indicated in the Registrar’s verification response) reflect the deletion by the customer “before [you] were notified about the UDRP proceeding”, as indicated in the Registrar’s email communication of February 11, 2013. The Center also informed the Registrar that it would proceed on the basis that the Respondent “Protected Domain Reg Ltd” is properly named by the Complainant, subject to any final determination or procedural steps by the Administrative Panel, upon appointment.
On February 15, 2013, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On February 18, 2013, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
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 the Respondent of the Complaint, and the proceedings commenced on February 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2013.
The Center appointed Kaya Köklü as the sole panelist in this matter on March 25, 2013. 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 a limited liability company registered under the laws of Germany. It is a privately owned publishing company established in 1949. Since that year, it is mandated by the Federal Republic of Germany to publish the “Bundesanzeiger” (which is a German term and can be translated into the English language as the “Federal Gazette”), an official publication edited by the German Federal Ministry of Justice. It is used for publishing official documents such as treaties between the Federal Government and a Federal State, certain directives, decrees and administrative guidelines. Moreover, the “Bundesanzeiger” is also used for announcing mandatory legal and judicial announcements. Various German Acts explicitly refer to the “Bundesanzeiger”, such as the German Securities Trading Act, the German Limited Liability Company Act and the German Stock Corporation Act. The German Commercial Code even imposes the obligation that any registered corporation in Germany needs to disclose its annual financial statements in the “Bundesanzeiger”.
Beyond the above, the Complainant is also active as a publisher of legal and technical books.
The Complainant owns and operates the domain name <bundesanzeiger.de> as an official platform for its publications mentioned above. However, the Complainant has no registered trademark rights in the term “bundesanzeiger”, but claims to enjoy unregistered trademark rights to it on the basis of its extensive prominence and use in the meaning of Art. 4 no. 2 German Trademark Act.
Hardly anything is known about the Respondent. According to the concerned Registrar’s WhoIs database, the initial Respondent was Protected Domain Reg Ltd from London, United Kingdom. However, the contact details revealed in the initial registration indicated an individual located in Hong Kong, China, who, for whatever reason, used Turkey as its designated country. As evidenced by the Complainant, a reverse WhoIs look-up revealed that this individual controls more than 3,600 domain names (Annex 3 of the Complaint). As at the time of the Panel’s decision, the disputed domain name was locked in “transfer pending status”, the Panel was not able to clearly determine the identity of the Respondent. However, for purposes of this proceeding, Panel accepts the privacy service designated as the Respondent in the Complaint as well as the entity “Transfer Pending Status” as the Respondent, on the basis of the WhoIs record and confirmation by the concerned Registrar.
According to the provided evidence in the case file, the Respondent has used the homepage linked to the disputed domain name for publishing an article with sexually offensive content about an individual from Hamburg, Germany in German language. The website linked to the disputed domain name additionally referred to a German limited liability company, accusing that company of being bankrupt and committing crimes. As evidenced by the Complainant, all these allegations were accessible via a starting page linked to the disputed domain name, which used the title BUNDESANZEIGER in combination with “herausgegeben vom Bundesministerium der Justiz”, which means “edited by the Federal Ministry of Justice” in the English language. The starting page also showed a picture from the interior of the German Constitutional Court.
5. Parties’ Contentions
First, the Complainant argues that it has long standing trademark rights to the trademark BUNDESANZEIGER, acquired by extensive use and its reputation among the relevant public’s perception. In this regard it is alleged that the official domain name <bundesanzeiger.de> operated by the Complainant had more than 3.2 million accesses per month in the year 2011. Additionally, it is alleged that approximately 84,000 annual financial statements published in the <bundesanzeiger.de> were accessed daily in the year 2011. The Complainant concludes that “the notion BUNDESANZEIGER enjoys trademark protection under Art. 4 no. 2 German Trademark Act and has to be considered (at least) as a well-known mark”. Based on this conclusion, the Complainant believes that the disputed domain name is identical to the Complainant’s BUNDESANZEIGER trademark.
Second, it is argued that the Respondent has no rights or legitimate interests in using the disputed domain name. The Complainant alleges that it has not licensed or otherwise permitted the Respondent to use its BUNDESANZEIGER trademark and has not permitted the Respondent to register or use any domain name incorporating the BUNDESANZEIGER trademark. The Complainant additionally asserts that the Respondent has never used the disputed domain name, nor made any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Quite the opposite, the Complainant believes that the Respondent tries to disseminate false allegations, insults, defamations and pornographic pictures under the notion “bundesanzeiger”.
Third, it is the Complainant’s view that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant is convinced that the Respondent registered the disputed domain name well aware of the Complainant and its rights in the BUNDESANZEIGER mark. It is asserted by the Complainant that the Respondent tries to catch web traffic intended for the Complainant and divert Internet users to its own website. Since that the Respondent not only uses the notion “bundesanzeiger” in the disputed domain name but also on its starting page of the website linked to the disputed domain name, the Complainant believes that there is no plausible use of the disputed domain name other than the intentionally illegitimate exploitation of the Complainant’s BUNDESANZEIGER trademark by the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To begin with, the Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language. Although the language of the Registration Agreement is the Turkish language, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to formally respond to the Complaint or respond to the Center’s communication with regard to the language of the proceedings, even though communicated in Turkish and in English. The Panel is convinced that the Respondent will not be prejudiced by a Decision being rendered in English, as the Respondent is apparently capable to read, write and understand the English language, in particular as it was apparently well able to conclude an English registration contract with a privacy service located in the United Kingdom, and the website contains some English words.
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights; and
(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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may as appropriately accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
It is further noted that independent research, i.e., visiting the Internet site linked to the disputed domain name, has been performed by the Panel on April 2, 2013. The competence of the Panel to perform such independent research is in line with previous UDRP decisions (see, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038).
Finally, it is noted that the Panel has taken note of the WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.
A. Identical or Confusingly Similar
(i) The preliminary question to answer is whether the Complainant has any trademark rights in the word “bundesanzeiger”. According to the case file, the Complainant has no registered trademark rights. However, the Complainant alleges to be the owner of long standing unregistered trademark rights based on extensive use and prominence in the relevant public’s perception according to Art. 4 no. 2 German Trademark Act.
It is an undisputed and well established practice that the Policy may protect not only registered but also unregistered marks (Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322; SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131).
In the present case, the Panel finds that having no registered trademark rights does not per se preclude the Complainant’s claim of unregistered trademark rights according to German trademark law. The question is whether the Complainant has adduced sufficient evidence to support that claim.
The Panel is aware that trademark rights according to Art. 4 no. 2 German Trademark Act can only successfully be asserted, if the word or phrase has become a distinctive identifier associated with the Complainant or its goods and services (URDP panels may refer to national law in limited circumstances with respect to the question of whether trademark rights exist. 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461). According to the WIPO Overview 2.0, the existence of unregistered trademark rights may be proved by length and amount of activities under the mark, the nature and extent of advertising, consumer surveys and media recognition.
Based on the statements and the provided evidence in the Complaint, the Panel is satisfied that the word “bundesanzeiger” has been used since more than 60 years in connection with the publication of official documents and thus has acquired a distinctive character and a high level of prominence among the relevant public in Germany. This conclusion is supported by undisputed statistics provided by the Complainant concerning the extensive use and overall perception of the word “bundesanzeiger” by the German public.
In light of the above, the Panel finds that the Complainant has provided adequate grounds showing that it holds unregistered trademark rights in the word “bundesanzeiger”.
(ii) Having accepted the above, the second question to answer is whether the disputed domain name is identical or confusingly similar to the Complainant’s mark. The Panel finds the disputed domain name is identical to the unregistered trademark of the Complainant as it fully incorporates the mark BUNDESANZEIGER without any further addition - excluding the generic-top level domain (gTLD) identifier “.org”, which is generally not taken into account by the Panel when assessing identity or confusing similarity (cf. Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786).
(iii) Overall, the Panel finds that the Complainant has rights in an unregistered trademark, to which the disputed domain name is identical. Hence, the first requirement as stated in paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name.
While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements in paragraph 4(a)(ii) of the Policy, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no trademark, valid license or any similar right to use the Complainant’s BUNDESANZEIGER trademark in the disputed domain name.
In the absence of a Response, there is also no indication in the current record that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain name. Especially, the Respondent has failed to show that the disputed domain name has been used in connection with a bona fide offering of goods or services.
Finally, there is also no indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without the intent to mislead Internet users.
Quite the opposite, the Panel is convinced that the Respondent primarily tries to catch web traffic intended for the Complainant and diverts such traffic to is own website in order to somehow benefit from the goodwill and reputation of the Complainant’s BUNDESANZEIGER mark. The website linked to the disputed domain name clearly tries to create the false impression that the website is operated or at least somehow officially authorized by the Complainant.
Overall, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
First, there is no doubt that the Respondent must have known the Complainant and its BUNDESANZEIGER trademark when it registered the disputed domain name many years after the Complainant’s trademark was used and recognized in Germany.
It is further apparent to this Panel that the Respondent tries to somehow benefit from the prominence of the Complainant’s BUNDESANZEIGER trademark. In the Panel’s view, the Respondent’s sole purpose in registering the disputed domain name was to catch web traffic initially intended for the Complainant. The Panel is convinced that the Respondent tries to create the impression that its website linked to the disputed domain name is sponsored or endorsed by the Complainant. This is in particular indicated by the fact that the Respondent uses the mark BUNDESANZEIGER as a highlighted title on the website linked to the disputed domain name.
Additionally, the Panel finds the use of the website at the disputed domain name to link to pornographic material and inappropriate information concerning individuals unrelated to the Complainant or trademark is consistent with and is a basis for finding of registration and use in bad faith (see V&V Supremo Foods, Inc. v. email@example.com, WIPO Case No. D2006-1373; WIPO Overview 2.0, paragraph 3.11).
Neither the appearance of the website linked to the disputed domain name nor its content or structure provide any indication of good faith registration or use by the Respondent.
Overall, the Panel cannot conceive of any good faith use of the disputed domain name by the Respondent.
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.
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 <bundesanzeiger.org> be transferred to the Complainant.
Date: April 7, 2013