WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Karl Storz GmbH & Co. KG v. Grant Mills
Case No. DCO2010-0003
1. The Parties
Complainant is Karl Storz GmbH & Co. KG of Tuttlingen, Germany, represented by St. Onge Steward Johnston & Reens LLC, United States of America.
Respondent is Grant Mills of Fernandina Beach, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <karlstorz.co> (the “Domain Name”) is registered with GoDaddy.com, Inc
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2010. On August 2, 2010, the Center transmitted by email to GoDaddy.com, a request for registrar verification in connection with the disputed Domain Name. On August 3, 2010 GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On August 5, 2010 the Center sent an email communication to Complainant requesting a confirmation that a copy of the Complaint had been transmitted to Respondent. The Complainant provided the Center with such confirmation on August 5, 2010.
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 Respondent of the Complaint, and the proceedings commenced on August 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2010. The Response was filed with the Center on August 25, 2010.
The Center appointed Clive L. Elliott as the sole panelist in this matter on September 6, 2010. 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
Complainant is a German corporation, manufacturing medical and surgical products and originator of endoscopy development, with its principal place of business at Tuttlingen, Germany. It is the owner of hundreds of trademark registrations throughout the world for the trademark KARL STORZ for medical and surgical products.
According to the publicly available WhoIs database, the Domain Name was registered on July 22, 2010.
5. Parties’ Contentions
Complainant contends that, as well as being a world renowned manufacturer of medical and surgical products, and the originator of endoscopy development, it has also been using the KARL STORZ trademark continuously for approximately 65 years, since 1945. Complainant also contends that it is the owner of over 160 domain name registrations throughout the world comprising the trademark KARL STORZ for medical and surgical products, and all such registrations are dated prior to Respondent’s registration of the Domain Name.
Complainant submits that due to the substantial and exclusive use of the trademark KARL STORZ by it, the voluminous trademark registration portfolio owned by it, the multiple of domain registrations owned by and websites operated by it, the KARL STORZ family of marks has become well-known and famous in the medical, surgical and healthcare fields and therefore Complainant believes that it is entitled to substantial protection.
Complainant suggests that Respondent is a cyber squatter engaging in a pattern of registering domain names which incorporate the trademarks of others, parking them on click-through sites for commercial gain and maximizing its illegitimate revenues. Complainant contends that Respondent has registered and used, without authorization, the Domain Name to redirect Internet users to websites which offer medical and surgical products that compete with its services. Complainant states that it attempted to resolve the matter by notifying Respondent of Complainant’s rights in and to the trademark KARL STORZ and seeking the transfer of the Domain Name to the Complainant.
Complainant advises that Respondent replied to Complainant’s letter stating that would remove the advertisements from the domain, but that he intended to keep the Domain Name and use it for his own personal use.
Complainant submits that the Domain Name is confusingly similar to its trademark because it incorporates all elements of the mark, specifically KARL STORZ, and only contains the designator “.co”. Complainant contends that the use of such designations are not a consideration when comparing domain names to marks and is without legal significance.
Complainant also contends that Respondent has no rights or legitimate interests in the Domain Name because Respondent is not authorized to use its mark KARL STORZ, and nor is Respondent commonly known by the Domain Name or any term incorporated therein. Complainant submits that Respondent is using the Domain Name to divert Internet users to links displayed on the associated website and these include links to third parties that provide services that are in direct competition with Complainant’s services. This, Complainant contends, is not a bona fide offering of goods and services, and nor does it constitute a legitimate noncommercial or fair use of the Domain Name, and therefore Respondent has no legitimate rights or interests in the Domain name.
Complainant further contends that Respondent has registered the Domain Name in bad faith and that Respondent’s actual and/or constructive notice of Complainant’s right in the mark KARL STORZ provides further evidence of bad faith registration. Complainant believes that Respondent’s registration of the Domain Name, incorporating Complainant’s mark, suggests that Respondent had actual notice of Complainant’s rights in KARL STORZ which is further evidence of bad faith registration and that Respondent’s refusal to transfer the Domain Name is an example that Respondent was aware of Complainant’s mark and of Complainant’s domain names when Respondent registered the Domain Name.
Respondent filed a response to the Complaint acknowledging that the Domain Name is identical to the Complainant’s trademark. Respondent claims that it was never the intention to divert traffic to links on the website associated with the Domain Name and that as of August 5, 2010 Respondent’s website contained no such links.
Respondent contends that the links referred to by the Complainant were placed on the website after purchase of the Domain Name without Respondent’s knowledge as part of a standard holding page created by GoDaddy.com. Respondent states that he has never worked with or for GoDaddy.com and does not benefit in any way from GoDaddy.com. Respondent claims that he did not and does not benefit in any way from links placed on those temporary holding pages, and states that upon notification that this page was up Respondent replaced that website with one of his own websites in an attempt to comply with the good faith uses of the Domain Name. Respondent states that all pages up at that Domain Name prior to August 5 were there without the Respondent’s consent, knowledge or creation and Respondent did not benefit financially in any way.
Respondent submits that his intentions and actions have always been to make fair use of the Domain Name without intent for commercial gain and that he has begun and plans to continue using the Domain Name to tell biographical stories about himself and a fictional cat named “Karl Storz”. Respondent further submits that pictures and content located on the site currently show evidence of that same intent.
Respondent disputes Complainant’s assertion that he registered the Domain Name in bad faith and states that as well as not benefiting financially from the site, he did not purchase the Domain Name for the purpose of selling it. Respondent states that no contact has been made between Complainant and Respondent discussing sale of the Domain Name and claims that the Domain Name is the very first purchased by the Respondent.
Respondent claims that he did not purchase the Domain Name in an attempt to prevent Complainant from reflecting the mark and asserts that it was his understanding that all companies in possession of the “.com” variant of a domain name were given a fair period of time in which to purchase the corresponding “.co” domain name prior to it going to public auction. Respondent states that he thought Complainant must not desire to use the <karlstorz.co> Domain Name and that he purchased the Domain Name for good faith use on his fictitious cat fiction site.
C. Complainant’s Response
Complainant filed a response to Respondent’s submissions pointing out that according to paragraph 4(c) of the Policy a respondent may establish its rights or legitimate interests in a disputed domain name before the respondent has received any notice of the dispute and that it must show that it has been commonly known by the domain name even if respondent has not acquired trademark or service mark rights. Complainant submits that Respondent did not make a bona fide offering of goods or services before receiving notice of the dispute and that it did not demonstrate that it is commonly known by the Domain Name.
Complainant asserts that after receiving notice from Complainant of its intention to file an UDRP Complaint, Respondent devised a web page in an attempt to make it appear that Respondent had a legitimate noncommercial or fair use of the Domain Name. Complainant contends that Respondent’s acts are transparent and Respondent has provided no evidence to support a legitimate or fair use.
Complainant disputes Respondent’s assertions that it did not know that GoDaddy.com used the holding page to generate links to medical supply ads and that Respondent had no control over the holding page in any way. Complainant contends that Grant Mills, Respondent, is a web developer employed by “www.mywebrefresh.com” and according to their website is responsible for the “effective and quality delivery of website projects”, which Complainant states suggests that Respondent is a website specialist and as such it is unlikely that he was unaware of GoDaddy.com’s practice of utilizing advertising links. Complainant further disputes Respondent’s claim that he was without knowledge and states that this is contradictory to the fact that Respondent was given notice of such practice via his acceptance of GoDaddy.com’s registration agreement under registration of the Domain Name which, in section 8 of the agreement, outlines the section entitled “Parked Pages”. This section, Complainant advises, indicates that the domain name owner is responsible for the content of the parked pages and is responsible to insure that the content of the parked pages do not infringe upon any third party’s intellectual property rights.
Complainant also disputes Respondent’s assertion that he planned to use the website to tell biographical stories about himself and his fictional cat named “Karl Storz” because Respondent did not attach any evidence to support this claim or show that he has authored any works. Nor, Complainant contends, did Respondent demonstrate how he derived the name “Karl Storz” for his Domain Name and cat. Complainant submits that Karl Storz is a globally well-known and famous trademark and is registered throughout the world and unique to Complainant.
Complainant states that Respondent resides and works in the United States and believes he has no reason for registering a Colombian (“.co”) domain name other than for typo-squatting. Complainant suggests that Respondent registered the Domain Name for the express purpose of deriving traffic from misspellings of <karlstorz.com> which domain name draws a large volume of internet traffic and that Respondent has engaged in typo-squatting and cyber-piracy.
Complainant contends that Respondent has failed to provide any evidence of rights in the Domain Name and has provided no documentation to support any claim of legitimate interest. Complainant further contends that Respondent has engaged in “passive holding” by directing the Domain Name to a web server parking page, thereby constituting registration in bad faith.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant asserts that it is a world renowned manufacturer of medical and surgical products, which includes being the originator of endoscopy development. It further asserts that it has been using the KARL STORZ trademark continuously since 1945 and is the owner of over 160 domain name registrations throughout the world incorporating the KARL STORZ trademark. The Panel accepts that Complainant is the proprietor of the KARL STORZ trademark (hereinafter the “Trademark”) and that the Domain Name is not identical but at least confusingly similar thereto. That is, as amongst other reasons, the “.co” suffix could be taken as an abbreviation of "company".
Accordingly, the Panel finds that the first element of the Policy is made out.
B. Rights or Legitimate Interests
Respondent contends that the links referred to above were placed on the relevant website without Respondent’s knowledge as part of a standard holding page created by GoDaddy.com and that in any event he has not benefited in any way from these links. Respondent further contends that he has always intended to make fair use of the Domain Name and plans to continue using the Domain Name to tell biographical stories about himself and a fictional cat named “Karl Storz”.
Complainant in turn disputes Respondent’s assertions of innocence and contends that Respondent is a web developer and as a website specialist was unlikely to be unaware of GoDaddy.com’s practice of utilizing advertising links. It also disputes Respondent’s assertion that he planned to use the website to tell biographical stories about himself and his fictional cat “Karl Storz”. That is, on the basis that Respondent did not submit reliable evidence to support this claim or show that he has authored works or indeed how he derived the name “Karl Storz” for his domain name and cat.
In Museum of New Zealand Te Papa Tongarewa v. Greg Nicolas, WIPO Case No. D2004-0288 the panel dealt with a situation not unlike the present. The panel in that case rejected the respondent’s contention that the domain name <tepapa.com> had been registered by the respondent to create a website extolling the beauties and advantages of the many places he had visited and of New Zealand, finding that:
“The Exciting People and Places Around,” the full name for the initials, does not immediately call to mind a website where Filipino migrant workers would find either inspiration as to other places where they might live or solace from their current adversities.”
Accordingly, the Panel concluded that the inference could be drawn that the name, “The Exciting People and Places Around,” was one concocted to give legitimacy to the domain name. In the present case, Respondent has proffered a justification for the choice of the Domain Name but he has not provided any plausible explanation as to why he chose to name his cat “Karl Storz”. Under the circumstances, the Panel infers that the Domain Name was chosen for the reasons advanced by Complainant, rather than those put forward by Respondent and that Respondent has not proven to have any rights or legitimate interests in the Domain Name.
On this basis the Panel finds that the second element of the Policy is made out.
C. Registered and Used in Bad Faith
A finding of bad faith may be made where the circumstances are such that Respondent knew or should have known of the registration and use of the relevant trademark prior to registering the domain name and registered such to illegitimately take advantage of the Complainant’s trademark: see Façonnable SAS v. Names4Sale, WIPO Case No. D2001-1365; Vakko Holding Anonim Sti. v. Esat Ist, WIPO Case No. D2001-1173. Given the long-standing and significant use of the Trademark by Complainant and the failure to provide a plausible explanation for the bona fide adoption of the Domain Name by Respondent the Panel considers that it is most unlikely that Respondent was unaware of the Trademark when he registered the Domain Name.
Given the findings above, inter alia, that the Domain Name is confusingly similar to the Trademark, it is reasonable to infer that Respondent at least permitted the Domain Name to be used for purposes of improper redirection and to draw the inference that Respondent had the requisite knowledge of the Trademark. In consequence, the Panel finds that the Domain Name was registered and used in bad faith.
The Panel finds the third element of the Policy is made out.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <karlstorz.co>, be transferred to Complainant.
Clive L. Elliott
Dated: September 15, 2010