WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Globalways AG v. Frank Dirks and WE ICT

Case No. D2012-1380

1. The Parties

Complainant is Globalways AG of Stuttgart, Germany.

Respondents are Frank Dirks and WE ICT of Nijmegen, Netherlands.

None of the parties are represented by outside counsel.

2. The Domain Names and Registrar

The disputed domain names <globalways.com> and <globalways.org> are registered with GoDaddy.com, LLC (the “Domain Names”).

3. Procedural History

The Complaint was filed against Respondent Frank Dirks with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2012. On July 6, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Domain Names. On July 10, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that Respondent Frank Dirks, for one of the Domain Names, was listed as registrant. It also provided the contact details and contact information for the second Domain Name which differed from the contact information in the Complaint and disclosed registrant WE ICT as Respondent. The Center sent an email communication to Complainant on July 10, 2012 providing the registrant and contact information disclosed by the Registrar and informing Complainant of the deficiencies in its Complaint. Complainant filed amendments to the Complaint on July 10, 2012 and July 11, 2012. The amended Complaint then named as Respondents Frank Dirks and WE ICT.

The Center verified that the Complaint together with the amendments to 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 Respondents of the Complaint, and the proceedings commenced on July 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 1, 2012. The Response was filed with the Center on July 19, 2012.

The Complainant submitted a supplemental filing on July 23, 2012. The Center acknowledged receipt and informed the parties of the Panel’s sole discretion to determine the admissibility of such supplemental filings.

The Center appointed Bernhard F. Meyer as sole panelist in this matter on July 26, 2012. The Panel finds that it was properly constituted. 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.

4. Factual Background

The Complainant is an IT infrastructure provider and offers carrier services as well as corporate network services. It is the registered owner of the following trademarks:

- the German figurative trademark GLOBALWAYS filed under no. 302008043491, on July 8, 2008 for the classes 35, 38 and 42 and registered on March 4, 2009.

- the European Community trademark GLOBALWAYS filed under no. 010432508, on January 5, 2012, for the classes 35, 38 and 42.

Additionally, according to Complainant, it owns and uses the domain names <globalways.net> and <globalways.de> since 2001 and is the holder of further country level domain names that include the trademark GLOBALWAYS.

5. Parties’ Contentions

A. Complainant

Complainant objects against the use of the Domain Names by Respondents on the following grounds:

1. First, Complainant contends that the Domain Names are identical to a trademark in which the Complainant has rights.

According to Complainant, apart from the gTLD suffix, the Domain Names <globalways.com> and <globalways.org> are literally identical with its trademarks GLOBALWAYS.

2. Complainant further argues that Respondents have no rights or legitimate interests in respect of the Domain Names.

Due to the lack of any respective trademarks, Respondents are not allowed to use the Domain Names, particularly as the parties are acting in the same business area.

Additionally, Respondents are not commonly known by the expression "globalways" and do not have any rights or legitimate interests in the Domain Names as they do not make active use of them.

3. Finally, Respondents registered/acquired (and use) the Domain Names in bad faith.

At the time of the registration of the Domain Names, Respondents must have been aware of Complainant's existence and its rights in GLOBALWAYS as Complainant already owned the domain names <globalways.net> and <globalways.de> in addition to its trademark rights. Moreover, Complainant contends that its link was the first hit on “www.google.com” at the time.

Offering the Domain Name <globalways.org> for sale shows Respondents’ intention to make money out of it.

Not making active use of a Domain Name indicates bad faith registration and use. Furthermore, the registration of more than one Domain Name containing the GLOBALWAYS trademark is additional evidence of Respondents’ bad faith registration and use. Consequently, Complainant qualifies Respondents as domain grabbers and domain brokers respectively, who are not making legitimate use of the Domain Names.

B. Respondents

1. Respondents contend that they are entitled to use the Domain Names for the following reasons:

Respondents mention a fund named “Stichting Global Only”, allegedly owned by the Respondent Frank Dirks. According to Respondents, there is an (unspecified) connection between the Domain Names, the fund and the development of a certain concept “Global Way of Life” that shall be promoted, amongst others, through the Domain Names.

By registering and holding the Domain Names, Respondents allegedly do not infringe the Complainant's trademark rights as the business of the Complainant and the one of “Stichting Global Only” are active in different areas. Hence, no confusing situations for potential customers can arise.

Furthermore, Respondents allegedly bought several similar domain names (amongst others the disputed Domain Names) in order to increase traffic to other websites, all related to their concept in the development “Global Way of Life”.

2. Respondents did not register the Domain Names in bad faith for the following reasons:

Despite the awareness of Complainant's existence and of its domain name <globalways.net>, Respondents contend not to have registered the Domain Names in bad faith because of the completely different business areas in which the relevant companies are active.

Furthermore, the fact that Respondents paid USD 880 for the Domain Names, according to them, shows a motivation to use the Domain Names in a constructive way for promotion of their services.

Respondents allege that the fact that the website under the Domain Names is still linked to the standard domain registration page of “GoDaddy” is no proof of bad faith. It rather shows that the website is not yet ready. According to Respondents, the development of the business concept "Global Way of Life" has been ongoing for the last three years.

6. Discussion and Findings

A. Supplemental Filing of Complainant

Prior to rendering its decision, the Panel would like to note that the barebones Complaint as initially filed contained numerous deficiencies; while these were eventually cured, the matters addressed should have been briefed in the initial filing – the result has been a delay and extra work for both the Center and the Panel, not to mention the Complainant. The Complainant would have done well to familiarize itself with the Policy and its jurisprudence in advance. Indeed, the Panel finds that in addition, the arguments advanced in the Complainant’s Supplemental Filing should have been made in the initial filing, but has chosen to admit them nonetheless

B. Registrant Identity

On January 27, 2012, the Domain Name <globalways.com> was registered to Frank Dirks, Nijmegen, Netherlands and on November 13, 2011, the Domain Name <globalways.org> was registered to WE ICT, Nijmegen, Netherlands. According to the Complainant, and uncontested by the Respondents, WE ICT is a sole-trader company owned by Frank Dirks. Its business purpose is computer facility management and other IT-related work. Noting in particular that the two registrants share the same postal and email address, the Panel finds it appropriate to proceed with the case as against the Respondents who are in effect one and the same entity.

Paragraph 4(a) of the Policy provides that Complainant must prove each of the following three elements in order to succeed in an administrative proceeding. Thus, if Complainant fails to prove any one of the three elements, it fails on its Complaint under the Policy.

(i) Respondents’ Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondents have no rights or legitimate interests in respect of the Domain Names; and

(iii) Respondents’ Domain Names have been registered and are being used in bad faith.

C. Identical or Confusingly Similar

The goods and/or services for which trademarks are registered are generally irrelevant for the purpose of finding rights in a trademark under paragraph 4(a)(i) of the Policy. Domain names are to be considered identical or confusingly similar to trademarks on the basis of a comparison between the domain names and the trademarks only, without considering whether the domain names are or could be used in a way avoiding confusion (Deutsche Telekom AG v. Oded Zucker, WIPO Case No. D2004-0749). But, in any event, it remains unclear why, according to Respondents, the activity of the fund “Stichting Global Only” should be decisive and not the activities of Respondents themselves.

Disregarding the gTLD suffix, which is a technical necessity, a domain name being identical to a registered trademark meets the demands established by paragraph 4(a)(i) of the Policy. Thus, the Panel finds that the Domain Names in dispute are confusingly similar in the sense of the mentioned provision of the Policy.

D. Rights or Legitimate Interests

The Complainant asserts that Respondents have no rights or legitimate interests in the Domain Names. According to paragraph 4(c) of the Policy, the following circumstances may demonstrate Respondents’ rights to or legitimate interests in a domain name:

(i) before any notice was given to Respondents of the dispute, Respondents used, or made demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or

(ii) Respondents (as individuals, businesses, or other organizations) have been commonly known by the Domain Names, even though they have not acquired any trademark or service mark rights; or

(iii) Respondents are making a legitimate noncommercial or fair use of the Domain Names.

The Domain Name <globalways.com> directs users to a website without content, containing the message that the site is currently not available. The Domain Name <globalways.org> links to websites of third parties (most likely sponsored links/advertisement) and additionally offers the respective Domain Name for sale. Hence, no legitimate use of the Domain Names is apparent at this time. However, Respondents seek to demonstrate preparations to use the Domain Names in connection with a bona fide offering of goods or services. According to them, Respondents are developing a business concept under the name “Global Way of Life” which shall be promoted – amongst others – under the Domain Names in the future.

By the mere submission of excerpts of another website under the domain name <dev.globalonly.com>, the Panel finds that allegations of the development of a business concept alone have not sufficiently been proven. And even the development of a business concept would not be sufficient to meet the requirement under paragraph 4(c)(i) of the Policy. What would be required is that Respondents show that, before they received notice of this dispute, they engaged in demonstrable preparations to use the Domain Names (Sybase, Inc. v. Analytical Systems, WIPO Case No. D2004-0360). Therefore, the Panel concludes that Respondents have not made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services.

Rather, Respondents admit knowledge of Complainant, but claims it was Respondents’ intent to use the Domain Names for unrelated purposes, which ultimately have not materialized. On the balance though, given Respondents’ offer to sell the Domain Names and lack of any demonstrable preparations to use the Domain Names, the Panel finds it more likely than not that Respondents may have well had a sale to Complainant in mind; this cannot be considered to convey rights or legitimate interests in Respondents.

Furthermore, it is not substantiated that Respondents are commonly known by the Domain Names and, in the Panel’s view, they are neither making a legitimate noncommercial or fair use of the Domain Names.

In light of the above, the Panel finds that Respondents lack rights and legitimate interests under the Policy in respect of the Domain Names and the Panel concludes that the prerequisites of paragraph 4(a)(ii) of the Policy have been proven by Complainant.

E. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the Domain Name has been used and registered in bad faith if:

(i) circumstances indicating that Respondents have registered and have acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondents’ documented out-of-pocket costs directly related to the Domain Names; or

(ii) Respondents have registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondents have engaged in a pattern of such conduct; or

(iii) Respondents have registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Names, Respondents have intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or location or of a product or service on its website or location.

The notice on the website under <globalways.org> (“Interested in this domain?”) suggests that Respondents acquired this Domain Name for the purpose of selling it for valuable consideration in excess of its out-of-pocket expenses (Royal Bank of Canada v. Namegiant.com, WIPO Case No. D2004-0642). As stated above, on the balance though, given Respondents’ offer to sell the Domain Names and lack of any demonstrable preparations to use the Domain Names, the Panel finds it more likely than not that Respondents may have well had a sale to Complainant in mind; this is relevant in assessing bad faith. Moreover, the Panel cannot see any good faith by Respondents in connecting the Domain Name <globalways.org> to a website providing sponsored links to various commercial companies. This constitutes an improper use of Complainant’s trademark <globalways.org> and is evidence of Respondents’ bad faith use (see Micro Electronics, Inc. v. J Lee, WIPO Case No. D2005-0170).

The other Domain Name <globalways.com>, as previously stated, resolves to a webpage that is currently inactive. Also Respondents’ “passive use” of one of the Domain Names may be deemed as bad faith behavior (see Banco Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon, WIPO Case No. D2004-0245). Respondents did not show a bona fide registration or use of this Domain Name either. The purported connection between the development of an alleged business concept “Global Way of Life” and the registration of the Domain Names is too remote and has not been sufficiently outlined in this proceeding either.

In light of these circumstances, the Panel concludes that Respondents’ Domain Names have been registered and are being used by Respondents in bad faith and the requirements of paragraph 4(a)(iii) of the Policy are met.

7. Decision

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 Names <globalways.com> and <globalways.org> be transferred to Complainant.

Bernhard F. Meyer
Sole Panelist
Dated: August 9, 2012