WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ocean Estates International v. Dirk Wunsch
Case No. D2004-0822
1. The Parties
The Complainant is Ocean Estates International, Malaga, Spain, represented by Mr. Simon Smith, Schillings, London, England.
The Respondent is Mr. Dirk Wunsch, Sankt Augustin, Germany.
2. The Domain Names and Registrar
The disputed domain names: <ocean-estate.com> and <oceanestateblanca.com> (the “Disputed Domain Names”) are registered with Cronon AG Berlin, Niederlassung Regensburg, Germany, (“Cronon”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2004. On the same date, the Complaint was sent to Cronon and the Respondent by e-mail and courier service. Until November 24, 2004, the courier service attempted to deliver the hardcopy of the Complaint to the Respondent on several occasions. The Respondent, however, refused to accept delivery of the Complaint.
On October 8, 21, 25, 26, 29, 2004, and on November 1 and 2, 2004, respectively, the Center transmitted by e-mail to Cronon a request for registrar verification in connection with the Disputed Domain Names at issue.
On November 2, 2004, Cronon transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).
On November 2, 2004, the Center requested the Complainant to provide evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English in that the Center noted that the Complaint had been submitted in English although, pursuant to Paragraph 11 of the Rules, in the absence of an agreement between the parties, the language of the administrative proceedings shall be in the language of the registration agreement, which according to Cronon is German.
By e-mail dated November 3, 2004, the Complainant’s representative asked the Respondent whether it would agree to have English as the procedural language and gave notice that it would submit a formal request in this regard if the Respondent did not agree. Absent any reaction from the Respondent to this e-mail, the Complainant, by e-mail dated November 4, 2004, submitted a formal request to the Center that the proceedings should be conducted in English. The Complainant emphasized that all previous communications between the parties had been in English and that the costs of translating the Complaint into German would result in the Complainant incurring unnecessary costs and further delay the proceedings.
By e-mail dated November 5, 2004, to the Center, the Respondent confirmed that the proceedings could be conducted in English, and by e-mail dated November 8, 2004, the Center informed the Complainant that the parties agreed to use English as the procedural language.
In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 11, 2004.
In accordance with the Rules, Paragraph 5(a), the due date for submitting a Response was December 1, 2004. The Respondent did not, however, submit any Response. Accordingly, the Center on December 2, 2004, notified the Respondent of its default in regard to submitting a Response.
The Center appointed Dr. Kamen Troller as the Sole Panelist in this matter on December 14, 2004. The Panel finds that it was properly constituted. On December 9, 2004, the Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.
The Center transmitted the documents of the case file to the Panel by mail and e-mail on December 15, 2004.
4. Factual Background
The only facts before the Panel are those submitted by the Complainant, and since the Respondent has not submitted any Response to the Complaint, the Panel regards the facts provided by the Complainant as undisputed and will accordingly base its decision on them in accordance with Paragraph 5(e) of the Rules and established practice, (see for instance Dr. Ing. h. c. F. Porsche AG v. The Training Shed, WIPO Case No. D2003-0644 and Pfizer Inc. v. Blue Viagra, WIPO Case No. D2004-0732 and precedents indicated).
The facts of the matter can be summarized as follows:
The Complainant is the largest real estate agency on the Costa Del Sol and the Costa Blanca in Spain. Since its incorporation in 1985 the Complainant has developed an excellent, worldwide reputation for real estate services and has won several awards within this field.
The Complainant is the owner of the Community Trademark (“CTM”), “OCEAN ESTATES MARBELLA”, registration number 002226793, registered in class 36, which includes insurance; financial affairs; monetary affairs and real estate affairs. The CTM application was filed on May 18, 2001. Shortly thereafter a copy of the application would have been a matter of public record and has thus been available as such for over three years.
The Complainant is also the owner of the CTM, “OCEAN ESTATES INTERNATIONAL”, registration number 003386695, also registered in class 36. The application for this trademark was filed on October 8, 2003. Shortly thereafter a copy of the application would have been a matter of public record and has thus been available as such for over one year.
Furthermore, the Complainant has registered the following domain names: <oceanestates.com>; <oceanestate.com>; <ocean-estates.com>; <ocean-estates.co.uk>.
The Complainant contends that the Respondent, as far as the Complainant is aware, is a former employee of the Complainant’s company. The Respondent has not contested this allegation and the Panel therefore considers this to be a true fact.
On April 24, 2002, the Respondent registered the Disputed Domain Names with Cronon. The Disputed Domain Names connect to a website, which advertises identical services to those provided by the Complainant, namely real estate agent services on Costa Blanca.
The Respondent is not known by the domain name at issue, but in fact, operates his business under the name BENNECKE Investment.
The Respondent is using, in the course of his trade, the sign “Ocean Estate”, which is identical to the Complainant’s figurative CTM “Ocean Estates”, in relation to the goods and services in class 36.
The Respondent is operating the same website found at “www.ocean-estate.com” and “www.oceanestateblanca.com” under other domain names, which include: “www.hg-hamburg.com” and “www.royalambiente.com”.
The Complainant has not consented to the Respondent’s use of this sign, nor has the Complainant authorized the Respondent to register the Disputed Domain Names. The Respondent has not registered “Ocean Estate” or similar signs as a trademark in any jurisdiction.
The Complainant became aware of the Respondent’s use of the Disputed Domain Names by a client who was unhappy that the Complainant had not reacted to an important email. The Complainant went on to discover that, through the websites “www.ocean-estate.com” and “www.oceanestateblanca.com”, the Respondent was receiving numerous e-mails from both current and potential clients intended for the Complainant.
By e-mail dated June 4, 2002, the Complainant notified the Respondent that the font branding on the Respondent’s websites had been taken from the Complainant’s website and that the Complainant would like the websites to be noticeably different.
An exchange of e-mails, in which the Respondent inter alia offered to sell the Disputed Domain Names for 45,000 euros to the Complainant, followed the Complainant’s e-mail of June 4, 2002. The Respondent’s e-mails from this period reflect that the Respondent had managed to build up his websites to attract real estate clients. Some of the Respondent’s e-mails are cited below.
The Complainant continued his efforts to settle this matter amicably during 2003, trying to obtain consent from the Respondent to the transfer of the Disputed Domain Names. However, these efforts were in vain, and therefore, in 2004, the Complainant decided to initiate the present proceedings.
In March 2004, the Complainant instructed Schillings solicitors to make contact with the Respondent in order to negotiate a settlement. Schillings solicitors wrote to the Respondent by letter dated March 19 and April 10, 2004, respectively, and requested the Respondent to refrain from using the Disputed Domain Names.
No settlement has been reached and despite numerous attempts to contact the Respondent by e-mail and telephone, the Complainant has not received any form of communication from the Respondent in regard to settling the dispute. Accordingly, the Complainant initiated these proceedings on October 7, 2004.
5. The Parties’ Contentions
A. The Complainant
The Complainant requests the Panel to issue a decision that the Disputed Domain Names, be transferred to the Complainant, in accordance with Paragraph 4(i) of the Policy.
The Complainant’s contentions supporting this request can be summarized as follows:
The Complainant argues that by setting up a rival business and registering a domain name almost identical to that of the Complainant’s, it is clear that the Respondent’s only intention was to disrupt the day to day business of the Complainant and to deceitfully attract Internet users to his website by creating a deliberate state of confusion with the Complainant’s CTM as to the source, affiliation and endorsement of the Respondent’s website.
The Complainant also states that the Respondent has received e-mails from customers that were intended for the Complainant, but nevertheless illegitimately contacted these customers and thereby diverted potential business away from the Complainant. The Complainant has submitted copies of the below-cited e-mails dated August 28, 2002 and December 2, 2002 from the Respondent, which appear to confirm this allegation
The Complainant submits that at the time of registering the Disputed Domain Names, the Respondent was fully aware of the Complainant’s CTM rights to the name “Ocean Estates”, and that the Respondent was aware of the considerable goodwill, which the Complainant’s company had developed over the years.
The Complainant further alleges that the Respondent, by his own admission, continues to trade off the excellent reputation and goodwill established by the Complainant, and as a result is bringing the name into disrepute. The Complainant further submits that the Respondent purchased the Disputed Domain Names and operates the website as a revenge for a past experience he had with the Complainant’s company.
Also, the Complainant contends that the Respondent had, and still has, the potential to reap commercial gain for himself by misleading customers into thinking that they are in contact with the Complainant, and that this may have resulted in considerable financial loss to the Complainant.
The Complainant further contends that the Respondent has no rights or legitimate interest in the Disputed Domain Names, which he has offered to sell to the Complainant for 45,000 euros, which is far in excess of the Respondent’s own out-of-pocket expenses directly related to the purchase and maintenance of the Disputed Domain Names.
Finally, the Complainant states that the Respondent has chosen to ignore its attempts to reach a settlement, with the intention of frustrating the matter further, and that the Respondent continues to use the Disputed Domain Names with the aim of deliberately diverting bone fide customers to his website, offering them identical services to those offered by the Complainant.
In support of its allegations that the Disputed Domain Names are confusingly similar to the Complainant’s trademarks the Complainant has submitted an extract from the Respondent’s websites, which as of the date of this Panel decision contains the following text:
“Your specialist for properties at the Costa Blanca – Costa Blanca North and South
Are you looking for a property?
We work with some well selected partners on the whole Costa Blanca. They are established as real estate agents for a long time and offer only price proofed properties. So use our contacts and fill in the following form
We are sure you will enjoy our service
You want to sell a property?
Having a couple of well selected partners from different countries, we are able to present your property to many people. But you will only have one person to turn to
Find out more about our service”. (Original emphasis).
In support of its allegations concerning the Respondent’s use of the Disputed Domain Names in bad faith, the Complainant has submitted copies of e-mail correspondence between the Respondent and the Complainant.
In an e-mail dated August 28, 2002 from the Respondent to the Complainant, the Respondent among other things stated:
I think you will find a good offer for the domain if you think about the fact that I sold six houses in only four month[s] with the Internet page www.ocean-estate.com and www.oceanestateblanca.com without doing any promotion for it.
I can’t imagine how they find me :):)
Sorry that I can´t give you all messages, but some are [of] interest for
myself because I´m placed in Calpe”.
In another e-mail dated December 2, 2002, to the Complainant, the Respondent stated:
I thought I have done it. As I told you, I already earned some money with the domain and it gets very frequent in the moment (you can see the loogfiles), without doing any promotion for it.
But the important think is, that saving that domain, started as a joke, because your arrogant dutch employer, sorry I forgot his name (he acts as the director of your moraira office), treats me like a idiot when I moved to spain. Unfortunatly for him I want to show him, who is the idiot and then developed the idea which you know about.
I also think that the joke is over, because as you know, I get some information, which are defenitly not for me.
I want to sell both domains: www.ocean-estate.com and www.oceanestateblanca.com. I only sell them together, because I want to finish the situation.
But as I told you in the beginning I earned money with nothing and I don´t want to loose money. I know that I can earn much more with the domains, but I explained it to you.
I only will sell both domains if I get a offer from 45.000 Euro, because I think doing promotion with it, you can earn that price in less the one month.
I think, that some big estate agents in the U.K. will agree to me.
Dirk”. (Original spelling cited).
Finally, in response to an e-mail dated April 10, 2003 from the Complainant, asking whether the Respondent was still willing to sell the Disputed Domain Names, the Respondent stated as follows:
I hope you are well.
As you know there are two sides of a coin.
Beeing an estate agent for my self I know how expensive promotion, employer and all the thinks around are, and sometimes I feel like a thief when I use the contacts which normaly arenŽt for me. But IŽm not such a bad salesman with a big holy touch that I can ignore them. Sometimes I wish I have never done it, but I explained you why I have done it. But I realise that you canŽt sell something without a good backround. So I decided to develope a real page, give her a good ranking and then I can sell it. No money for nothing. (like in real life) I wonder how stupid the people are who wants to work for you. It canŽt be true that they want to work for you and arenŽt able to adress there c.v. to the correct emailadress. I get a lot dutch e-mails in the moment.... The other funny thing (which I realy like) are the e-mails between your employers. You will be very suprised when you realise what they somtimes think about the company. I hope that our employers donŽt do it, but IŽm sure they do. I know it isnŽt allowed but as you know there can stay copies of the e-mails on your server, which you can.......
Dirk” (Emphasis added, original spelling cited).
As stated above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural Matters
For cases where the Respondent has not submitted a Response, Paragraph 5(e) of the Rules provides that in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
The Panel notes that the Respondent, after having refused to accept delivery of the Complaint for more than one month, was at long last notified of the Complaint on November 11, 2004, and that the Respondent was given an adequate period of 20 days to respond to the Complaint (or request an extension of the deadline), which elapsed on December 1, 2004. The Respondent, however, has not filed any Response to the Complaint nor has he filed a request for an extension of the deadline.
On this basis, the Panel determines that there are no exceptional circumstances in the present case, which prevents him from deciding the dispute based on the Complainant’s submissions alone.
B. Substantive Matters
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case, transfer of the Disputed Domain Names), the Complainant must prove that each of the three following elements are present:
(i) the Disputed Domain Names are identical or confusingly similar to a trademark 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 Names; and
(iii) the Disputed Domain Names has been registered and is being used in bad faith.
(i) Identical or Confusingly Similar
The Complainant is the proprietor of the trademarks: “OCEAN ESTATES MARBELLA” and “OCEAN ESTATES INTERNATIONAL”.
The Complainant alleges that the Disputed Domain Names: <ocean-estate.com> and <oceanestateblanca.com> are confusingly similar to these trademarks.
In the assessment of whether a domain name and a trademark are confusingly similar, all relevant circumstances must be taken into account, in particular, the degree of oral, visual or conceptual similarity between both terms, the similarity of the goods or services they are used for, and the distinctiveness the trademark has either per se or by virtue of the mark’s recognition (Tchibo Frisch-Röst-Kaffee GmbH v. Hans Reischl WIPO Case No. D2001-0079).
The Panel considers that:
- the first two words in the Complainant’s trademarks, “Ocean Estates”, are embodied in and form a distinctive part of both of the Disputed Domain Names;
- in accordance with a now well-established international Panel jurisprudence, the fact that “Estate” is spelled in plural in the Complainant’s trademarks as opposed to the Disputed Domain Names; and the fact that the trademarks contain the words “Marbella” and “International”, respectively, which are not also found in the Disputed Domain Names, do not prevent confusion. Nor does the hyphen in <ocean-estates.com> or the addition of the word “blanca” in <oceanestateblanca.com> prevent confusion, which is both visual, phonetic and conceptual (V&S Vin & Sprit AB v. Canal Prod Ltd., WIPO Case No. D2002-0437);
- the Complainant’s trademark and trade name “OCEAN ESTATES” is used for real estate services on the Costa Del Sol and Costa Blanca in Spain. The Respondent is using the Disputed Domain Names to promote identical services in the same geographic area, as evidenced by the above-cited text from the Respondent’s websites. Therefore, there is clearly similarity in the goods and services connected with the Complainant’s trademarks and the Disputed Domain Names; and finally
- the fact that several of the Complainant’s customers and even the Complainant’s own employees, according to the above-cited e-mails from the Respondent, have mistakenly contacted the Respondent via the Disputed Domain Names thinking that they were contacting the Complainant, demonstrates that the Disputed Domain Names and the Complainant’s trademarks are effectively confusingly similar.
Accordingly, in regard to Paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name, <ocean-estate.com> is identical to the Complainant’s trademarks, and the Disputed Domain Name, <oceanestateblanca.com> is confusingly similar to the Complainant’s trademarks.
(ii) Rights or Legitimate Interests
In accordance with Paragraph 4(c) of the Policy, a Respondent may demonstrate its rights or legitimate interests to the Disputed Domain Names by proving, on a non-exhaustive basis, any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s 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) 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 consumers or to tarnish the trademark or service mark at issue.
The Complainant contends that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names.
As mentioned, the Respondent has not responded to the Complaint and has thus not demonstrated any rights or legitimate interests whatsoever in the Disputed Domain Names.
There is no information before the Panel indicating that the Respondent may have a right or legitimate interest in the Disputed Domain Names. On the contrary, the content of the above-cited e-mail correspondence from the Respondent demonstrates that there is absolutely nothing legitimate about the Respondent’s use of the Disputed Domain Names in this case, that Respondent is intentionally using the Claimant’s trademarks to take advantage of the Claimant’s established reputation on the real estate market in Spain.
Specifically, in regard to Paragraph 4(c)(i) of the Policy, the Panel notes that the Respondent has not made, prior to receiving a notice of the dispute, a bona fide offering of goods or services or a legitimate non-commercial or fair use of the Disputed Domain Names, but is rather using them to intentionally compete with the Complainant. In regard to Paragraph 4(c)(iii) of the Policy, the Panel notes that the Respondent has acted in flagrant contradiction with the principles set forth in that paragraph. Finally, in regard to Paragraph 4(c)(ii), according to the Complainant’s submissions, the Respondent is not commonly known by the Disputed Domain Names, but operates his business under the name Bennecke Investment.
On this basis, the Panel determines that the Respondent does not have a right or legitimate interest in the Disputed Domain Names according to Paragraph 4(c) of the Policy.
(iii) Registered and Used in Bad Faith
Paragraph 4(a) (iii) of the Policy requires the Complainant to prove use in bad faith as well as registration in bad faith.
Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances each of which shall be evidence that the registration and use of a domain name is in bad faith:
(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
The Complainant contends that the Respondent has registered and used the Disputed Domain Names in bad faith.
The Panel considers that:
- in regard to Paragraph 4(b)(iii) and (iv) of the Policy, the Respondent registered the Disputed Domain Names primarily for the purpose of disrupting the business of the Complainant and in order to attract, for commercial gain, Internet users to his websites, by creating a likelihood of confusion with the Complainant’s trademarks as evidenced by the Respondent’s e-mail dated August 28, 2002 where he inter alia stated: “I sold six houses in only four month[s] with the Internet page www.ocean-estate.com and www.oceanestateblanca.com without doing any promotion for it. I can’t imagine how they find me:):)”;
- in regard to Paragraph 4(b)(i) of the Policy, the Respondent attempted to sell the Disputed Domain Names to the Complainant for the amount of 45,000 euros, which is considered to be in far excess of the Respondent’s out-of-pocket costs directly related to the Disputed Domain Names, as evidenced by the e-mail dated December 2, 2002, in which the Respondent inter alia stated: “I also think that the joke is over, because as you know, I get some information, which are defenitly not for me. I want to sell both domains: www.ocean-estate.com and www.oceanestateblanca.com. […]. I only will sell both domains if I get a offer from 45.000 Euro, because I think doing promotion with it, you can earn that price in less the one month”; and finally
- The Respondent in the e-mail dated April 10, 2003 apparently admitted that he was acting in bad faith by using the Disputed Domain Names in that he stated: “sometimes I feel like a thief when I use the contacts which normaly arenŽt for me […]” and “Sometimes I wish I have never done it”.
Based on these considerations, the Panel finds that the Complainant in accordance with Paragraph 4(a)(iii) of the Policy has succeeded in proving that the Respondent has registered and used the Disputed Domain Names in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names: <ocean-estate.com> and <oceanestateblanca.com> be transferred to the Complainant.
Dr. Kamen Troller
Dated: December 21, 2004