WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Greenfort Partnerschaft von Rechtsanwälten mbB v. CheapYellowPages.com

Case No. D2016-0796

1. The Parties

The Complainant is Greenfort Partnerschaft von Rechtsanwälten mbB of Frankfurt, Germany, internally represented.

The Respondent is CheapYellowPages.com of Denver, Colorado, United States of America (“United States”), internally represented.

2. The Domain Name and Registrar

The disputed domain name <greenfort.com> (“Disputed Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2016. On April 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 25, 2016, 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.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2016. The Response was filed with the Center on May 13, 2016.

The Center appointed Gabriela Kennedy, Stephanie Hartung and Diane Cabell as panelists in this matter on June 3, 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 June 7, 2016, the Complainant filed a Supplemental Filing with the Center. In response, the Respondent filed a Supplemental Filing with the Center on June 8, 2016. Neither the Complainant’s nor the Respondent’s Supplemental Filings are accepted by the Panel. The Panel finds that they do not add any new argument and consider it is not necessary to take them into consideration.

4. Factual Background

The Complainant is Greenfort Partnerschaft von Rechtsanwälten mbB, a limited liability partnership of lawyers in Germany. The Complainant first obtained a trade mark registration for GREENFORT in Germany on June 2005 and subsequently obtained a European Union trade mark registration for GREENFORT in January 2006. These trade mark registrations have an application date / priority date of March 9, 2005.

The Respondent is in the business of marketing, developing, buying and selling generic, intuitive, geographic, surname and common use domain names.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

A. The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

(a) The Complainant owns trade mark registrations for GREENFORT in Germany and the European Union. The Complainant has been using the GREENFORT trade mark worldwide to provide high quality legal advice for international clients, including those in the United States.

(b) The Disputed Domain Name is identical to the Complainant’s GREENFORT trade mark.

B. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

(c) Neither Brian Wick personally nor CheapYellowPages.com has obtained a trade mark registration for GREENFORT in the United States.

(d) The Respondent is not commonly known by the name “Greenfort”.

(e) The Respondent does not use the Disputed Domain Name, as it automatically redirects to “www.realestatecatalog.com”.

(f) The fact that the Respondent offers the Disputed Domain Name for sale shows that the Respondent does not have a legitimate interest in the Disputed Domain Name.

C. The Disputed Domain Name was registered and is being used in bad faith

(g) The Respondent is a so-called “domain-grabber”. The WIPO database contains at least ten cases that name Brian Wick as the respondent, and he has lost every single one of them. The Respondent’s business model evidently is to register domain names that contain other people’s or companies’ trade marks and business names in order to sell these domain names to the trade mark owners – including many law firms.

(h) The Disputed Domain Name was obviously acquired for the purpose of selling it for valuable consideration in excess of the Respondent’s out-of-pocket costs related to the Disputed Domain Name.

(i) In 2010, the Complainant initially contacted Brian Wick and asked to purchase the Disputed Domain Name for the Respondent’s out-of-pocket expenses. Brian Wick refused and demanded USD 15,000. In 2015, the Complainant again contacted Brian Wick and asked for the price of the Disputed Domain Name, and this time Brian Wick demanded USD 12,500, a consideration still well in excess of any possible out-of-pocket expenses. Accordingly to the Policy, this alone would be sufficient for an absolute presumption of bad faith registration and use.

(j) The Respondent prevented the Complainant from using its registered trade mark in a corresponding domain name and has engaged in a pattern of registering as domain names the names of law firms.

B. Respondent

The Respondent’s contentions can be summarized as follows:

(a)The Respondent only resides and does business in the United States. The Respondent does not reside or do business in Frankfurt or Germany - where the Complainant resides. Furthermore, the Respondent does not reside or do business in any other part of the European Union.

The Complainant has not illustrated sufficient rights in GREENFORT

(b) Other than printouts of its trade mark registrations for GREENFORT, the Complainant notably provides absolutely no other hard evidence about itself or its business putting the strength of the its GREENFORT trademark, if any, in question.

(c) This lack of hard evidence can be explained by the Complainant admitting in its email in May 2010 that it is a “start-up situation” and again over five years later in September 2015 that apparently it is a “small law firm in Germany”. This also explains why the Respondent was unaware of the Complainant until they contacted the Respondent in May 2010 and why the Respondent was unaware that the Complainant was apparently a small law firm in Germany until September 2015.

(d) The Complainant provides no evidence supporting its claim that GREENFORT is used worldwide including in the United States - where the Respondent resides and conducts its business. The Complainant did not apply to register GREENFORT in the United States.

(e) There are trade mark applications or registrations for and commercial use of GREENFORT by other entities in the United States and elsewhere. GREENFORT is not a unique and distinctive name and has no secondary meaning.

(f) The Respondent bought the Disputed Domain Name from a “SnapNames” auction on June 24, 2007. The Disputed Domain Name was in the Respondent’s wish list of surnames, and geographic and environmental terms – such as <greenrealty.com> and <greengrove.com> which are also owned by the Respondent.

(g) “Archive.org” reveals the Disputed Domain Name was operated on November 11, 2001 by a business called “Greenfort & Lord” in Arizona. On March 16, 2005 the Complainant registered <greenfort.net>, and by virtue of this Complaint, no doubt at that time tried to register the Disputed Domain Name as well and realized it was already owned and operated by “Greenfort & Lord” in Arizona. This demonstrates as part of the Complainant’s due diligence, they conceded they would not need the Disputed Domain Name to operate their business and they would never have exclusive rights in GREENFORT – otherwise they would have selected a different “.com” domain name they could associate with a trade mark.

The Respondent’s use of the Disputed Domain Name is legitimate and bona fide.

(h) The Respondent maintains a portfolio of about 3,000 generic, surname, common use and intuitive domain names it began acquiring in 1999. GREENFORT is a surname, geographic and a generic “green” environmental term as well – which is why the Disputed Domain Name was on the Respondent’s wish lists while looking for non-renewals in the auctions.

(i) Some of the Respondent’s domain names, such as <greenfort.com> and <greengrove.com> are used to collect and sell leads and offers in the United States relating to computers, automotive, medical, insurance, real estate, repairs, accounting, remodeling, legal, rentals, loans, banking, foreclosures and essentially every other product and service – a very common business model for domain owners and registrars, such as Name.com where <greenfort.com> is kept. In fact, the Complainant’s exhibit of the Respondent’s use of the Disputed Domain Name shows a map of the United States for foreclosures - not the European Union, Germany or any other part of the world.

(j) The Respondent only collects and sells leads and offers within the United States. The Respondent does not collect and sell leads and offers in the European Union. The Respondent does not collect and sell leads and offers in Germany where the Complainant resides.

(k) For approximately the last ten years the Respondent has utilized the United States Patent and Trademark Office (“USPTO”) online database, “Archive.org” and “DomainTools.com” prior to buying a domain name in a secondary market. Prior to buying <greenfort.com> in June 2007 at a “SnapNames” auction, as part of its due diligence, the Respondent did a search on the USPTO for GREENFORT and GREEN FORT and found no results – including no results for the Complainant and determined at that time, that given the surname and the generic nature of GREENFORT and GREEN FORT in general, it would not be infringing on any service marks or trademarks. And the “Archive.org” search revealed the previous owner of <greenfort.com> was “Greenfort & Lord” – who appeared to have stopped doing business causing the domain name to be in the “SnapNames” auction.

(l) The Respondent was unaware of the EUIPO and the Complainant’s GREENFORT trademark until it received this Complaint on May 2, 2016. As the Respondent only conducts its business in the United States, it has no reason to know about the EUIPO and the GREENFORT EUIPO trade mark unless of course, it was also registered with the USPTO – which it is not – or it was a strong common law trade mark – which it is not.

(m) Even registrars offer domain names for sale, whether they are newly registered domain names or secondary market and auction domain names – this is actually part of the registration agreement the Respondent must agree to. If registrars can sell domain names at market prices then certainly the Respondent can as well.

(n) Furthermore, on several occasions, the domain name buyers have been grateful the Respondent bought their desired domain name previously – so at least they had a chance to own it versus some other entity already using the domain name in a different way where it could not be bought.

The Respondent has not engaged in bad faith with the Disputed Domain Name

(o) If registrars can sell domain names at market prices then certainly the Respondent can as well. And that is exactly how the Respondent handled negotiations with the Complainant’s unsolicited email offers initiated in May 2010 and September 2015. Furthermore, the Respondent does not have to sell <greenfort.com> at any price should it decide to continue with expanding it uses internally with its own business models.

(p) The Respondent did its proper due diligence in determining <greenfort.com> was generic for any use in the United States where it does all its business - including by searching the USPTO for GREENFORT and GREEN FORT trade marks prior to buying the Disputed Domain Name in the “SnapNames” auction. And since the Respondent only does business in the Unites States it had no reason to search trademark databases outside of the United States – such as the EUIPO.

(q) The Respondent is making commercial use of <greenfort.com> - by collecting and selling foreclosure information, leads and offers in the United States under the co-brand of “RealEstateCatalog.com”. A commercial use is a legitimate use of the domain name.

(r) Considering the notable lack of evidence provided by the Complainant about itself and its use of its GREENFORT trade mark and its distorted views on how the Respondent operates its own legitimate business, the entire Complaint relies solely on the Respondent’s antiquated “wild-west” type UDRP cases that go back 12 to 16 years where the Respondent challenged the use of a trademark domain for noncommercial Constitutional purposes (USA First Amendment Free Speech) – and that project was abandoned a dozen years ago. And certainly if the Respondent still engaged in that noncommercial Constitutional project, the case references - the Complainant seems to pander and grandstand over - would be current and longer - and the Respondent would have been sued and litigated out of business and existence long ago and many times over.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark 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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the GREENFORT mark based on its trade mark registrations with a priority date of March 9, 2005.

The Disputed Domain Name incorporates the Complainant’s GREENFORT mark in its entirety. It is well-established rule that in making an enquiry as to whether a trademark is identical or confusingly similar to a domain name, the generic Top-Level Domain (“gTLD”) extension, in this case “.com”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).

Accordingly, the Panel finds paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Majority of the Panel accepts that the Respondent is not commonly known by the name “Greenfort”. Accordingly, the Majority of the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests in the Disputed Domain Name.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Disputed Domain Name currently redirects to “www.realestatecatalog.com”, where the Respondent operates a webpage collecting and selling foreclosure information, leads and offers in the United States under the co-brand of “RealEstateCatalog.com”. The website also contains a link “Click here to buy GreenFort.com”, apparently for Internet users to contact the Respondent should they be interested in purchasing the Disputed Domain Name.

The Majority of the Panel is of the view that domain name resellers in general may have legitimate interests in the domain names being offered for sale at least where such domain names do not consist of coined terms, so that such domain names could be re-sold to many possible legitimate users rather than being of value only to particular trade mark owners.

In this case, the Majority of the Panel considers that the Disputed Domain Name consists of the term “Greenfort” or “Green Fort”. Considering this against the background of the Respondent’s apparent business in marketing, developing, buying and selling generic, intuitive, geographic, surname and common use domain names over the years, and that there is no evidence of the Respondent intentionally targeting the Complainant and/or its business in using the Disputed Domain Name, the Majority of the Panel considers the Respondent has rights or legitimate interests in the Disputed Domain Name.

The Majority of the Panel accordingly finds that the Complainant has not satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name.

C. Registered and Used in Bad Faith

As the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy, the Majority of the Panel does not need to consider whether the requirements of paragraph 4(a)(iii) are met.

7. Decision

For the foregoing reasons, the Complaint is denied.

Gabriela Kennedy
Presiding Panelist

Stephanie Hartung
Panelist (Dissenting)

Diane Cabell
Panelist
Date: June 16, 2016

DISSENTING OPINION

With due respect to my distinguished fellow Panelists, I agree with the majority of the Panel in finding that the Disputed Domain Name is identical with the trademark in which the Complainant proved to have rights. However, I may not agree with the majority of the Panel on the questions of the Respondent’s rights or legitimate interests in the Disputed Domain Name and its registration and making use of by the Respondent in bad faith.

Rights or Legitimate Interests

The majority of the Panel considered that the Disputed Domain Name consists of the term “Greenfort” or “Green Fort”. Against the background of the Respondent’s apparent business in buying and selling domain names and in the absence of evidence of the Respondent intentionally targeting the Complainant and/or its business in using the Disputed Domain Name, the majority of the Panel found that the Respondent has rights or legitimate interests therein.

The Dissenting Panelist accepts that the (bulk) domain name reseller business is not at all per se illegitimate. The specific question, however, still remains whether or not the Respondent has rights or legitimate interests with respect to the Disputed Domain Name <greenfort.com>.

There is a consensus view among UDRP panels that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, may not of itself confer rights or legitimate interests, but that normally the Disputed Domain Name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied upon meaning - and not, for example, to trade off third party rights in such word or phrase (see WIPO Overview 2.0., paragraph 2.2).

It is undisputed between the parties that the Respondent has no IP-related rights in the designation “Greenfort”, but that it is aiming to sell the Disputed Domain Name <greenfort.com> to any interested third party. Therefore, the Respondent obviously acquired the Disputed Domain Name not for use in connection with its relied-upon meaning (whether as a dictionary or geographical phrase), but for the purpose of selling it e.g. to the Complainant. In order to determine whether such use of the Disputed Domain Name qualifies as bona fide within the meaning of paragraph 4(c)(i) of the Policy, the Dissenting Panelist recognizes that the Respondent’s portfolio of about 3,000 domain names includes and/or has included in the past numerous domain names reflecting the trademarks of third parties, many of which are law firms as is the Complainant. Against this background, it must be found that the Respondent is at least systematically accepting that his buying and selling of bulk domain names be infringing upon third parties’ trademark rights. In this context, the Respondent is arguing that it is merely based in the United States and that it cannot be obliged to research worldwide on any possible conflicting third parties’ trademark rights. Such line of argumentation is not convincing to the Dissenting Panelist insofar as the Respondent is not trading domain names under the country code Top-Level Domain (“ccTLD”) “.us”, but that its business obviously is built upon trading the usually much more valuable domain names under the gTLD “.com”. Doing so, certainly broadens the Respondent’s duty to look even across the United States boarders in order to find out about possible third parties’ conflicting trademark rights. In the case at hand, the Complainant e.g. owns a European Union trademark GREENFORT (EUIPO 004545562), the application of which was made public in the EUIPO online register already on January 30, 2006, thus well before the acquisition of the Disputed Domain Name by the Respondent. Searching at least the EUIPO trademark register for possible third parties’ trademark rights when dealing with domain names under the gTLD “.com” (which has undoubtedly the broadest scope that a TLD may have!) must be assumed to be an essential part of any due diligence a domain name reseller should be obliged to undertake shall its business be considered bona fide. With respect to the Respondent, this is particularly true given the many domain names in its domain name portfolio that are/were clearly in conflict with third parties’ trademark rights, e.g. many well reputed law firms worldwide (see e.g.: Chadbourne & Parke LLC v. American Distribution Systems, Inc. dba DefaultData.com and Brian Wick, WIPO Case No. D2003-0553; Kirkland & Ellis LLP v. DefaultData.com, American Distributions Systems, Inc., WIPO Case No. D2004-0136). Moreover, the Respondent itself points to the fact that it indeed undertook a due diligence in 2007 prior to buying the Disputed Domain Name which, however, did not include any research outside of the United States or the USPTO trademark register as the Respondent purports that its business allegedly is restricted to the United States. The Dissenting Panelist takes the view that this line of argumentation is in fact short-sighted. After all, it is the domain name holder’s responsibility to determine whether the domain name registration infringes or violates someone else’s rights (see paragraph 2 of the Policy); also, the domain name holder shall represent that “neither the registration …nor [use of the domain name] infringes the legal rights of any third party” (see Registrar Accreditation Agreement (RAA) Section 3.7.7.9). Buying and selling domain names under the gTLD “.com” is a business that is per se not restricted to any country boarders, especially when it comes to domain names comprised of dictionary words or geographical names and the Respondent’s due diligence with respect to the Disputed Domain Name may not have necessarily required to check out a specific national trademark register such as the German Patent and Trade Mark Office (“DPMA”) in Germany, but at least to research e.g. on the truly international EUIPO online register which would have immediately revealed the Complainant’s rights in the GREENFORT trademark.

The Dissenting Panelist, therefore, finds that under the special circumstances to the case at hand, the Respondent cannot be found to have rights or legitimate interests with respect to the Disputed Domain Name <greenfort.com>.

Registration and use in bad faith

While the majority of the Panel need not address to the third element under the UDRP, the Dissenting Panelist in fact holds that in her opinion the Disputed Domain Name was also registered and is being used in bad faith.

Against the background that the Respondent is a professional domain name reseller who has proven to at least take into account on a regular basis to infringe upon third parties’ trademark rights (as shown in a number of UDRP cases ruled against it), it is only just and fair to somewhat “raise the bar” and to argue in line with WIPO Overview 2.0., paragraph 3.4, that the Respondent was at least willfully blind with respect to the Complainant’s trademark rights in the designation “Greenfort” by the time of registering the Disputed Domain Name, as the Complainant’s GREENFORT trademarks had been made public in the respective online registers of both EUIPO as well as DPMA well before that time. In this context, again, the Respondent’s line of argumentation that it is purely based in the United States and, therefore, was not obliged to research on any trademark rights outside of the United States, obviously shows that the Respondent systematically accepts to overlook any existing trademark rights outside of its home country – though the Respondent’s reach of business is not at all restricted to the boarders of the United States!

Moreover, there is no other way but to find that the Respondent’s only interest in acquiring the Disputed Domain Name was to sell it either to the Complainant as the trademark owner or to any other interested third party. As has been held in e.g. Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066, “there is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. Although Respondent’s offer of the domain name for sale was not made specifically to Complainant or its competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy.” In the case at hand, this is especially against the background that the Respondent was asking a sales price from the Complainant for the Disputed Domain Name that was far in excess of his out-of-pocket expenses (as clearly demonstrated by the e-mail correspondence between the Complainant and the Respondent of 2010 as well as of 2015).

These circumstances taken altogether serve as evidence under e.g. Policy, paragraph 4(b)(i) of the registration and making use of the Disputed Domain Name by the Respondent in bad faith.

Consequently, the Dissenting Panelist considers that the Disputed Domain Name should have been transferred to the Complainant.

Stephanie Hartung
Panelist (Dissenting)
Dated: June 16, 2016