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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Trodat GmbH v. Alexander Schatzl, whois privacy

Case No. D2017-2527

1. The Parties

The Complainant is Trodat GmbH of Wels, Austria, represented by Salomonowitzl Horak, Austria.

The Respondent is Alexander Schatzl, whois privacy of Taipei, Taiwan Province of China.

2. The Domain Name and Registrar

The disputed domain name <trodat.taipei> (the “Domain Name”) is registered with Net-Chinese Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2017. On December 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 22, 2017, 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 January 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2018.

The Center appointed Dawn Osborne as the sole panelist in this matter on January 31, 2018. 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 in the business of self inking stamps and is the owner of, inter alia, an International registration for TRODAT registered since 1984 (international registration No. 484432, registered on March 30, 1984).

The Domain Name has not been used and has been registered on September 21, 2017 with a false name and address, the name given being an employee of the Complainant who did not, in fact, register the Domain Name.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarised as follows:

According to ICANN’s WhoIs database the Respondent in this administrative proceeding is “Alexander Schatzl”, however the real Alexander Schatzl works for the Complainant as IT project manager and he did not register the Domain Name. The mailing address given for the Domain Name is unknown to the Complainant and appears to be fraudulent as they are the details for a registrar.

The Complainant is a market leader in the business of self inking stamps and is the owner of, inter alia, an International trade mark registration for TRODAT registered since 1984 in relation to its business. TRODAT has been used as a trade mark for stamps since 1947.

The Domain Name consists of the Complainant’s trade mark plus the Top-Level Domain (“TLD”) “.taipei”. Since the TLD is to be ignored when assessing the identity or similarity of a mark and a domain name, the Domain Name must be considered to be identical to the Complainant’s TRODAT trade mark.

The Complainant has not given any licence for the Respondent to use its mark and the Domain Name has not been registered by the real Alexander Schatzl of the Complainant. The Respondent has no rights or legitimate interests relating to the Domain Name.

TRODAT is an invented word and the Respondent would not choose it unless it was seeking to create an impression of an association with the Complainant. This is all the more so since the Respondent has sought to associate itself with the Complainant by using the name of one of the Complainant’s employees.

The Domain Name has been registered and used in bad faith. Providing false contact details is evidence of registration and use in bad faith.

The Domain Name has not been used. Passive holding of a domain name can be registration and use in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical and/or Confusingly Similar

The Domain Name in this Complaint combines the Complainant’s TRODAT mark (registered as an international registration for, inter alia, stamps since 1984) and the TLD “.taipei”.

The TLD “taipei” does not serve to distinguish the Domain Name from the TRODAT mark, which is the distinctive component of the Domain Name.

Accordingly, the Panel finds that the Domain Name is identical to a mark in which the Complainant has rights for the purpose of the Policy.

B. Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and has falsely used the name of an employee of the Complainant. As such, there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name and only evidence to show the registration is not legitimate. There has been no use of the Domain Name. Accordingly there has not been any bona fide offering of goods and services or legitimate noncommercial use in relation to it.

As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

C. Registration and Use in Bad Faith

The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing the Complainant’s mark. The use of the name of one of the Complainant’s employees to register the Domain Name shows the Respondent was aware of the Complainant and its business at the time of registration of the Domain Name. Registering a domain name with false contact details is commonly held by UDRP panels to be bad faith under the Policy.

The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another. Passive holding of a domain name containing a mark with a reputation can be bad faith registration and use. See Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003.

As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and is being used in bad faith and has satisfied the third limb of the Policy.

7. Decision

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 <trodat.taipei> be transferred to the Complainant.

Dawn Osborne
Sole Panelist
Date: February 6, 2018

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