WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EnBW Energie Baden-Württemberg AG v. Heinz Kuebler, RS Reiseschutz AG
Case No. DCO2012-0008
1. The Parties
The Complainant is EnBW Energie Baden-Württemberg AG of Karlsruhe, Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondent is Heinz Kuebler, RS Reiseschutz AG of Weinsberg, Germany, represented by Binnewies & Ament, Germany.
2. The Domain Name and Registrar
The disputed domain name <enbw.co> is registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2012 in German. On April 5, 2012, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On April 12, 2012, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In its email, the registrar also informed the Center that the language of the registration agreement is English. On April 13, 2012, the Center transmitted an email communication to the parties in both English and German regarding the language of the proceeding. On April 14, 2012, the Complainant filed an English translation of the Complaint with the Center. The Respondent did not comment on the question of the language of the proceeding within the specified time limit.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 23, 2012. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 13, 2012. The Response was filed with the Center on May 11, 2012 in German.
The Center appointed Brigitte Joppich as the sole panelist in this matter on May 23, 2012. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is one of the four leading energy suppliers in Germany. It is located in the German federal state of Baden-Württemberg and supplies customers throughout this state and elsewhere all over Germany with energy and energy-related services. The business name “EnBW” has been used since 1998.
The Complainant owns numerous trademarks consisting of or incorporating the element “EnBW”, inter alia, German trademark registration no. 39814354 for ENBW, registered on September 13, 1998, German trademark registration no. 302010056328 for ENBW, registered on December 16, 2010, and European Community trademark registration no. 000771014 for ENBW, registered on February 18, 2000 (hereinafter referred to as the “ENBW Marks”). The Complainant’s trademark registrations cover a large variety of goods and services. The Complainant offers its goods and services online at “www.enbw.com”.
The disputed domain name was registered on July 23, 2010 and has been used to redirect Internet users to a parking website with advertising links to websites of the Complainant’s competitors, e.g. Vattenfall, and commercial platforms comparing energy costs.
On February 22, 2012, the Complainant sent a cease and desist letter to the Respondent requesting the Respondent to cease the use of the disputed domain name and to transfer the disputed domain name to the Complainant. Upon receipt of a reminder from the Complainant dated March 9, 2012, the Respondent replied on March 16, 2012 that the parking website was provided by its Internet service provider, that it had no knowledge thereof and that it had not earned any revenues from the advertising links available at the disputed domain name. Furthermore, the Respondent contested that the Complainant’s representatives were duly acting on behalf of the Complainant, arguing that the Respondent had received information to the contrary from the Complainant’s legal department. Finally, the Respondent offered the transfer of the disputed domain name. Such transfer, however, was conditional upon a waiver of the Complainant’s claims for compensation of costs and damages as well as payment of an acceptable compensation to the Respondent. The Respondent stated that if it received no response from the Complainant within six weeks, it would take care of the deletion of the disputed domain name.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 6(a) of the Policy is given in the present case:
(1) The second level of the disputed domain name is identical to the ENBW Marks.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as there has never been a business relationship between the Complainant and the Respondent (and in particular no permission regarding the operation of websites or the registration of domain names or the use of the name “EnBW” or the ENBW Marks), as there have been no actual or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, as the Respondent is not commonly known by the disputed domain name, and as legitimate interests are not established by redirecting a domain name to a parking website.
(3) The Complainant contends that the disputed domain name was registered or has been used in bad faith as set out in the Policy.
The Complainant states that the Respondent was aware of the name and trademark ENBW when registering the disputed domain name, as such name and trademark belong to a globally known enterprise, which is at the same time the main supplier of electricity at the Respondent’s place of business. The Complainant states that the Respondent could under no conceivable circumstances have been legitimately motivated to register or use the disputed domain name, the second level of which is identical with the Complainant’s name and trademarks, while - as to the first level “.co” of the disputed domain name - the Respondent has no relationship with Colombia. The Complainant further states that the Respondent is one of two directors of RS Reise-Schutz Versicherungs AG with its business seat in Weinsberg near Karlsruhe, that the organization “RS Reise-Schutz AG” identified in the public WhoIs record for the disputed domain name does not exist, and that the Respondent is using different company names to avoid legal responsibility. The Complainant contends that the Respondent acts in bad faith under paragraph 4(b)(iv) of the Policy as he registered the disputed domain name for commercial reasons and chose this particular ccTLD because of its similarity to the gTLD ”.com”, under which the Complainant is offering its goods and services online, and to make profit from Internet users mistyping the Complainant’s domain name. In this regard, the Complaint also states that the question if the Respondent was aware of the actual use of the disputed domain name in connection with third parties’ advertising links is irrelevant. The Complainant finally states that the Respondent offered the transfer of the disputed domain name to the Complainant asking for financial compensation and that it was trying to blackmail the Complainant to pay ransom for fear that a third party might register the disputed domain name as soon as it became available after deletion by the Respondent.
The Respondent denies the Complainant’s assertions.
First of all, he criticizes that the Complainant did not provide a power of attorney although the Respondent had already contested that the Complainant’s representatives were duly authorized in its reply to the Complainant’s cease and desist letter. The Respondent further argues that it is not obliged to participate in the transfer of the disputed domain name because of the risks resulting from claims by third parties, which might have rights in the disputed domain name predating the Complainant’s rights.
The Respondent also states that it only asked for compensation of the aforementioned risks and to pay for the costs already incurred, and that the Respondent never intended to blackmail the Complainant.
Finally, the Respondent states that it has own legitimate interests in the disputed domain name as it took over a patronage for Colombian students and registered the disputed domain name, which is the acronym of “Expatriate Network Baden Würtemberg”.
6. Discussion and Findings
The first point to be dealt with is the language of the present proceeding. The Registration Agreement, under which the disputed domain name was registered, is in English. However, the Complaint was initially filed in German (followed by an English translation) and the Response was filed in German only.
Given that the registrar confirmed that the language of the registration agreement is English and that neither of the parties has opposed such language, the Panel decides that the proceeding is to be conducted in English according to paragraph 11 of the Rules. However, as the Complainant and the Panel are able to understand the Response in German language, the Panel will consider the Response although it was not filed in the proper language of the present proceeding.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; 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.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s ENBW Marks and is identical to such marks. It is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent claims own legitimate interests in the disputed domain name as it took over a patronage for Colombian students and registered the disputed domain name, which is the acronym of “Expatriate Network Baden Würtemberg”. However, the Respondent failed to give any proof of its patronage and the contested use of the disputed domain name in connection with the “Expatriate Network Baden Würtemberg”. Based on the evidence before the Panel, the Panel therefore cannot find any rights or legitimate interests of the Respondent in the disputed domain name.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s 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 trade mark 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 on line 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 its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the ENBW Marks. Given that the Complainant is the main supplier of electricity in Weinsberg near Karlsruhe, where the business of the Respondent is located, and given that the Complainant is one of the thirty biggest and best known companies in Germany, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant and its rights in the ENBW Marks.
As to bad faith use, by fully incorporating the ENBW Marks into the disputed domain name and by using the website at such domain name as a parking website providing links to third parties, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (see L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623, with further references). The Respondent’s allegation that it had no knowledge of its Internet service provider’s use of the disputed domain name in connection with a parking website does not hinder a finding of bad faith, as it is well established that a respondent (as the registered owner of the disputed domain name) is ultimately responsible for the information available at the website and for all content posted there, regardless of how and by whom such content was generated (see Baccarat SA v. Hiro, WIPO Case No. D2010-1315; Hanover Company Store, LLC v. Domains by Proxy, Inc. / Martha Osborne, WIPO Case No. D2010-1182; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776; Sanofi-aventis v. Transure Enterprise Ltd, Host Master, WIPO Case No. D2008-1636; State of Florida, Florida Department of Management Services v. Bent Pettersen, WIPO Case No. D2008-0039; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Owens Corning v. NA, WIPO Case No. D2007-1143; Grisoft, s.r.o. v. Original Web Ventures Inc., WIPO Case No. D2006-1381; Sanofi-Aventis, Aventis Pharma SA and Aventis Pharma Deutschland GmbH v. 1N4 Web Services, WIPO Case No. D2005-0938). The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of 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 <enbw.co> be transferred to the Complainant.
Dated: June 5, 2012