WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Heraeus Kulzer GmbH v. Whois Privacy Services Pty Ltd / Stanley Pace
Case No. D2016-0245
1. The Parties
The Complainant is Heraeus Kulzer GmbH of Hanau, Germany, represented by Rittershaus Rechtsanwälte Notar, Germany.
The Respondent is Whois Privacy Services Pty Ltd of Fortitude Valley, Australia / Stanley Pace of Flower Mound, Texas, United States of America (“USA”), represented by Law Office of Howard M. Neu, PA, USA.
2. The Domain Name and Registrar
The disputed domain name <kulzer.com> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2016. On February 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 11, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 15, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 19, 2016.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2016. The Response was filed with the Center March 11, 2016.
The Center appointed Nicholas Smith, Thomas Hoeren and Tony Willoughby as panelists in this matter on April 12, 2016. The Panel finds that it was properly constituted. Each member of 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 15, 2016, the Panel issued a Panel Order to the Parties, the relevant text being reproduced below.
“Under the Rules for Uniform Domain Name Dispute Resolution Policy (the ‘Rules’), the Panel may, at its sole discretion request, in addition to the complaint and the response, further statements or documents from either of the Parties.
The Panel seeks clarification of the following statements made in the Response:
1) ‘Respondent, a Texas, USA resident, registered the subject domain name KULZER.COM on December 6, 1995 (21 Years ago).’
2) ‘From the date of acquisition till today the domain name has been parked and is available for lease or email, the same as Respondent’s 60,000 other domain names.’
The Panel has visited the DomainTools.com database and the Internet Archive Wayback Machine, both of which appear to indicate that for a period of time that included 2007, the Domain Name was owned by a ‘Heraeus Kulzer’ and appeared to redirect to a website at ‘www.heraeus-kulzer-us.com’ which appears to be a site connected with the Complainant.
Therefore the Panel makes the following orders:
1) The Respondent has until April 21, 2016 to make further submissions or file any additional evidence that it sees fit to:
a) clarify the date on which it registered or acquired the <kulzer.com> Domain Name;
b) clarify any use that it has made of the <kulzer.com> Domain Name.
2) The Complainant shall thereafter have an opportunity to provide any submission or any evidence in reply it may choose to make regarding the Respondent’s additional evidence/submissions in response to this Panel Order, by April 27, 2016.
3) Any submissions or amended documents should be submitted to the WIPO Arbitration and Mediation Center by email to firstname.lastname@example.org for forwarding to the Panel.
4) The Panel will deliver its decision on or before May 11, 2016.”
On April 21, 2016 the Respondent filed a further submission in response to the Panel Order. On April 27, 2016, the Complainant filed a further submission in response to the Panel Order.
4. Factual Background
The Complainant is a supplier of dental supplies based in Germany. It has 1,500 employees operating in 26 locations, including Australia, USA and the United Kingdom and supplies dentists and dental technicians with supplies relating to cosmetic dentistry, tooth preservation, prosthetics, periodontology and digital dentistry.
The Complainant is the owner of a number of figurative trademarks containing the word “Kulzer” sometimes with a colon (the “KULZER Mark”), for various dental related products and services, first registered in Germany in 1988.
The Domain Name <kulzer.com> was first registered on December 6, 1995. However, at some point after that date the registration expired and the Domain Name became available for registration. The Respondent registered the Domain Name through a Namejet auction on January 13, 2008. The Domain Name resolves to a website (the “Respondent’s Website”), that presently appears to be a pay-per-click site operated by Sedo. The Respondent’s Website also contains the message “Buy this Domain. The domain kulzer.com may be for sale by its owner”! Prior to the commencement of this proceeding, the Respondent’s Website consisted of a pay-per-click site operated by Sedo that included numerous links related to dental supplies, including dental instruments, dental laboratories and dental implants.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s KULZER Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the KULZER Mark. It owns trade mark registrations for the KULZER Mark in Germany, Australia and through the Madrid Protocol.
The Domain Name consists of the KULZER Mark and the generic Top-Level Domain “.com”. The Domain Name is confusingly similar to the KULZER Mark as the KULZER Mark is incorporated in its entirety in the Domain Name.
The Respondent has no rights or legitimate interests in the Domain Name. The Complainant has not authorized the Respondent to use and register any domain name incorporating the KULZER Mark, nor is the Respondent commonly known by the Domain Name. The Respondent’s Website is a pay-per-click parking page which, when used in connection with a domain name that corresponds with a trademark, does not give rise to rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. The Domain Name was registered despite the Respondent being aware of the Complainant and having no prior rights in the KULZER Mark. From at least late 2008, the Domain Name was used as a pay-per-click page that made specific reference to the Complainant’s dental products. It is being used to attract, for commercial gain, Internet users to the Respondent’s Website by creating a likelihood of confusion with the Complainant’s KULZER Mark. This is sufficient to establish bad faith registration and use. Furthermore the Respondent has a long history of cybersquatting and has registered a number of domain names corresponding to the trademarks of others in bad faith.
The Respondent is in the business of registering domain names for email addresses, last names or surnames and has accumulated over 10,000 surnames in this manner. The Respondent predominantly leases the websites and sub-domains and email services using the surnames. Many of the surnames are “parked” with companies such as SEDO.com that maintain a website under the domain name and put up links to various other web-sites.
The word “kulzer” is a family name which the Respondent acquired to add to his list of 10,000 family names in his domain name portfolio. The Respondent has never, until now, received any communication from the Complainant asking it to cease the use of the Domain Name. The Domain Name has been parked at SEDO.com since acquisition. It has never been used by the Respondent to trade upon the Complainant’s trademark or sell or promote any competing products.
The Respondent submits that the Complainant tried to purchase the Domain Name, and finding that the Domain Name was not for sale, commenced UDRP proceedings to obtain the Domain Name without having to pay for it. The Respondent alleges this is an example of Reverse Domain Name Hijacking and requests that the Panel make a finding of Reverse Domain Name Hijacking.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the KULZER Mark, having registrations for the KULZER Mark in Germany and Australia.
The Domain Name consists of the KULZER Mark and the ending “.com”. Disregarding the Top-Level Domain, an essential element in a domain name, the Domain Name is identical or confusingly similar to the Complainant’s KULZER Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain names. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain names.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. He has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the KULZER Mark or a mark similar to the KULZER Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar names. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use.
The Respondent has used the Domain Name to operate a website that contains a number of sponsored links to third party commercial sites that offer services many of which compete with the Complainant. It is likely that the Respondent receives revenue from people who mistakenly visit the Respondent’s Website and click on these links. This activity does not amount to a bona fide offering of goods or services.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b) provides that for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, 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 the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owners of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Respondent, in his Response states, “Respondent, a Texas USA resident, registered the subject domain name <kulzer.com> on December 6, 1995 (21 years ago). At the time of registration of the Domain Name, the Respondent had no knowledge of the Complainant’s European Mark.” The Response then makes various arguments based on the Complainant’s extensive delay in filing the Complaint and alleging Reverse Domain Name Hijacking. Following the Procedural Order, the Respondent acknowledged that he registered the Domain Name in 2008 (through a Namejet Auction on January 13, 2008), not 1995 and excuses the “mistake” on the basis that the Complainant made that claim. A proper reading of the amended Complaint is that the Complainant made no such claim.
In his Response, the Respondent produces a current screenshot of the Respondent’s Website showing that the Domain Name redirects to a connected parking page featuring a wide range of generic links having nothing to do with the Complainant and thus claiming that the Respondent’s Website is not targeting the Complainant. However, it is apparent that the screenshot of the Respondent’s Website exhibited in the Response reflects new content generated following the filing of the Complaint. The Respondent’s Website for the preceding years concentrated upon the Complainant’s business area, dental products.
The Respondent has also stated that “the term Kulzer is a common family name that has been used by many different companies and individuals for many different purposes pursuant to a Google search” and exhibits the result of a Google search, which shows inter alia that all but one or two of the entries on the first page relate to the Complainant. He says that he acquired the Domain Name for its value as a family name and for inter alia email purposes, but provides no evidence to support the assertion that his portfolio of domain names is mainly composed of domain names comprising surnames, nor does he produce any evidence to show that his use of the Domain Name has been for the benefit of or directed towards individuals having the Kulzer surname.
Considering the totality of circumstances in the present case, the Panel has come to the conclusion that the Respondent’s assertions including his denial as to any knowledge of the Complainant at date of his acquisition of the Domain Name are not sufficiently substantiated.
Given the failure of the Respondent to provide any evidence in support of his claimed purpose for registering the Domain Name in 2008, and the use to which the Domain Name was put following registration, the Panel finds that it is likely, on the balance of probabilities, that the Respondent was aware of the Complainant and its reputation in the KULZER Mark at the time the Domain Name was registered by him in 2008. Between 2008 and shortly before the commencement of the proceedings, the Respondent’s Website made reference to dental products that compete with those offered by the Complainant, which likely indicates the Respondent’s awareness that the Complainant sells dental products under the KULZER Mark.
The registration of the Domain Name in awareness of the Complainant and the rights it had at the time in the KULZER Mark and the absence of rights or legitimate interests in the Domain Name amount to registration in bad faith.
The Panel finds that the Domain Name was registered and is being used to attract, for commercial gain, Internet users to the Respondent’s Website or other online location, by creating a likelihood of confusion with the Complainant’s KULZER Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. In particular the Respondent’s Website is a page that offers sponsored-links to third-party sites that have in the past and may in the future sell products that directly compete with the Complainant’s dental equipment. Such sites generally advertise by paying registrants on a pay-per-click basis for Internet users redirected to their sites. This means that the Respondent receives a financial reward for every Internet user redirected from the Respondent’s Website to those third-party sites.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. Given the finding above, the Panel does not find that the Complainant has engaged in Reverse Domain Name Hijacking.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <kulzer.com>, be transferred to the Complainant.
Date: May 2, 2016