WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wort & Bild Verlag Konradshöhe GmbH & Co. KG v. Domains by Proxy, LLC, DomainsByProxy.com / Lorenz Wendel
Case No. D2012-2248
1. The Parties
Complainant is Wort & Bild Verlag Konradshöhe GmbH & Co. KG of Baierbrunn, Germany, internally represented.
Respondent is Domains by Proxy, LLC, DomainsByProxy.com of Arizona, United States of America / Lorenz Wendel of Albterstadt, Germany.
2. The Domain Name and Registrar
The disputed domain name <apotheken-umschau24.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2012. On November 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 22, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 22, 2012.
The Center verified that the Complaint together with the amended 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 November 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 17, 2012.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 15, 2013. 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 publishing company with legal domicile in Baierbrunn, Germany, which focuses on print and online media in the health and medical business. Complainant, inter alia, is the publisher of the German language customer magazine “Apotheken Umschau” (translation “Pharmacy Review”) which is provided for free in pharmacies in Germany.
Complainant has submitted evidence that it is the registered owner of the following national (German) trademark relating to the designation “Apotheken Umschau”:
- Word/design mark APOTHEKEN UMSCHAU, German Patent and Trademark Office (DPMA), Registration Number: 993964, Registration Date: November 27, 1979; Status: Active.
Complainant, furthermore, has submitted an opinion survey conducted by the German Market Research Institute Ipsos GmbH in July 2012, according to which the trademark APOTHEKEN UMSCHAU is familiar to 92.5% of the German speaking population (over 14 years old) in Germany; moreover, as evidenced by recent statistics of the German Institute “Information Community to Determine the Distribution of Advertising Media (IVW – Informationsgemeinschaft zur Feststellung der Verbreitung von Werbeträgern e.V.), every month over 9.7 million copies of the “Apotheken Umschau” are sold to pharmacists by Complainant.
The disputed domain name <apotheken-umschau24.com> was created on February 25, 2012. It resolves to a website at “www.apotheken-umschau24.com”, which displays postings/text snippets on a variety of subjects as well as advertisements related to the health business.
Respondent appears to be an individual located in Germany; however, the postal contact information for Respondent provided in the WhoIs for the disputed domain name is apparently false. Accordingly, on June 1, 2012, Complainant sent a Cease and Desist letter to the then active registrar instead.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant asserts to publish the “Apotheken Umschau” already since January 1, 1956. Complainant concludes that as a result of the above-mentioned statistics submitted by Ipsos GmbH as well the IVW, the brand “Apotheken Umschau” is extraordinarily recognized among the German market and is, therefore, granted trademark protection also by virtue of extraordinary recognition.
Complainant claims to own the domain names <apothekenumschau.de> as well as <apotheken-umschau.de> under which Complainant operates a website with health related information taken from its Germany-wide well-known magazine.
Complainant suggests that the disputed domain name is confusingly similar to Complainant’s APOTHEKEN UMSCHAU trademark, because (1) the disputed domain name is comprised of Complainant’s trademark in its entirety and (2) the mere addition of the descriptive element “24” does not detract from the confusing similarity between the APOTHEKEN UMSCHAU trademark and the disputed domain name.
Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name, because (1) given the extraordinary recognition of the APOTHEKEN UMSCHAU trademark in Germany, it is utterly out of question that Respondent did not know of Complainant’s rights in the said designation when registering the disputed domain name, (2) Respondent has never been commonly known by the disputed domain name, but it is solely Complainant whose business has for decades been connected thereto and, finally, (3) as a consequence of Complainant’s Cease and Desist letter dated June 1, 2012, an anonymous caller offered to sell the disputed domain name for an amount of EUR 8,000 to Complainant.
Finally, Complainant asserts that the disputed domain name was registered and is being used in bad faith, since (1) considering the extraordinary level of recognition of the APOTHEKEN UMSCHAU trademark, it is obvious that Respondent was aware thereof when registering the disputed domain name, (2) Respondent intentionally attempted to attract Internet users, who wanted to visit Complainant’s website at e.g. “www.apotheken-umschau.de” by creating a likelihood of confusion with Complainant’s APOTHEKEN UMSCHAU trademark, thus aiming to increase the traffic to Respondent’s misleading and deceptive website, being accordingly more valuable for advertisement and in terms of sale and (3) Respondent ultimately aims to sell the disputed domain name to Complainant for valuable consideration in excess of Complainant’s out-of-pocket costs as evidenced by the anonymous telephone call of June 13, 2012.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <apotheken-umschau24.com> is confusingly similar to the APOTHEKEN UMSCHAU trademark in which Complainant has shown to have rights.
The disputed domain name incorporates the APOTHEKEN UMSCHAU trademark in its entirety. Moreover, it has been held in numerous UDRP decisions and has meanwhile become a consensus view among panelists (see WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the generic or descriptive term “24” is not capable to dispel the confusing similarity arising from the incorporation of Complainant’s APOTHEKEN UMSCHAU trademark into the disputed domain name.
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain.
Complainant has produced evidence that the disputed domain name resolves to a website at “www.apotheken-umschau24.com”, which displays both postings/text snippets as well as advertisements, both of which relate to the health industry, which is the core subject of Complainant’s “Apotheken Umschau” magazine.
The Panel, therefore, concludes that Respondent – irrespective of the alleged extraordinary reputation and favorable consumer recognition of the APOTHEKEN UMSCHAU trademark – apparently was aware of the said trademark at the time of the registration of the disputed domain name and that the latter obviously alludes to Complainant’s trademark and business. Such use of the disputed domain name to divert Internet users who are obviously trying to reach Complainant, but due to the confusing similarity of the disputed domain name with Complainant’s APOTHEKEN UMSCHAU trademark end up with Respondent’s Internet presence at “www.apotheken-umschau24.com”, is neither “noncommercial” because it was predominantly for the purpose of generating advertising revenues, nor it is “fair”, because Internet users by confusion are brought to a general website with information about a variety of (health-related) matters that are not specifically tailored to Complainant.
Moreover, such use is also not fulfilling the requirements of a bona fide offering of goods or services, because (1) Respondent apparently has neither been authorized to use Complainant’s APOTHEKEN UMSCHAU trademark as a domain name or on Respondent’s website or in any other way and (2) Respondent’s name apparently does not correspond to Complainant’s APOTHEKEN UMSCHAU trademark nor is any other reasonable explanation apparent why Respondent should rely on the designation “Apotheken Umschau” as it is contained in the disputed domain name.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on November 26, 2012.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
Given the notoriety of the APOTHEKEN UMSCHAU trademark in Germany and the fact that Respondent apparently is located in Germany, this Panel finds that Respondent had Complainant and its APOTHEKEN UMSCHAU trademark in mind when it registered the disputed domain name.
The Panel takes the view that the redirection of the disputed domain name, which is confusingly similar to Complainant’s APOTHEKEN UMSCHAU trademark, to a website in order to generate advertising revenues without Complainant’s permission to do so is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s APOTHEKEN UMSCHAU trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Moreover, the Panel has reason to believe from Complainant’s undisputed contentions that Respondent has registered and is using the disputed domain name primarily for the purpose of selling it to Complainant, who is the owner of the APOTHEKEN UMSCHAU trademark, for an amount of EUR 8,000, thus for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name. These circumstances shall in turn be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
In connection with this finding, it finally also carries weight in the eyes of the Panel that Respondent not only made use of a privacy service in order to conceal its true identity, but that Respondent apparently provided improper WhoIs information. Those circumstances taken all together throw a light on Respondent’s behavior which at least supports the finding of a registration and use of the disputed domain name in bad faith.
Therefore, the Panel holds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) 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 <apotheken-umschau24.com> be transferred to Complainant.
Stephanie G. Hartung
Date: January 28, 2013