WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Enercon GmbH v. Domain Admin, Private Registrations Aktien Gesellschaft / Domain Admin, PrivacyProtect.org
Case No. D2012-2368
1. The Parties
The Complainant is Enercon GmbH of Aurich, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
The Respondent is Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines / Domain Admin, PrivacyProtect.org of Nobby Beach, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <enercon.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2012. On November 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 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 the Complainant on December 3, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 4, 2012.
The Center verified that the Complaint together with the amendment 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 the Respondent of the Complaint, and the proceedings commenced on December 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2013.
The Center appointed Adam Taylor as the sole panelist in this matter on January 14, 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
The Complainant is a German corporation, founded in 1984, which specializes in the development and production of wind-power technology equipment and solutions. The Complainant is the fourth-largest wind turbine manufacturer in the world. The Complainant has installed more than 20,000 wind turbines in over 30 countries, and maintains roughly 300 service stations worldwide. The Complainant also operates production facilities worldwide, including in Germany, Sweden, Brazil, Turkey, Portugal, Canada, Austria, and France.
The Complainant has traded under the name “Enercon” since 1984.
The Complainant owns a number of trade mark registrations for the word mark ENERCON, including Community Trade Mark No. 000218735 filed April 1, 1996, in classes 7, 9, 11, 37 and 42.
The Complainant’s main website is located at “www.enercon.de” and it is available in German, English, Spanish, French, Italian and Portuguese.
The disputed domain name was first registered on January 24, 1997. An archive WhoIs search dated February 3, 2011, indicates that the disputed domain name was then in the status of “pending renewal or deletion”. At some point between that date, and March 6, 2011, the disputed domain name was acquired by a registrant using a proxy service “Private Registrations Aktien Gesellschaft”, with an address in Kingstown, Saint Vincent and the Grenadines. As of October 30, 2012, the disputed domain name was registered in the name of another privacy service “Domain Admin, PrivacyProtect.org”, with an address in Australia.
As of November 29, 2012, the disputed domain name resolved to a parking page with links to a range of alternative-energy products including wind turbines and solar panels.
5. Parties’ Contentions
Identical or Confusingly Similar
The disputed domain name is identical to the Complainant’s trade marks.
The test for identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trade mark alone, independent of the products or services for which the disputed domain name is used or other marketing and use factors. In this case, the text of the disputed domain name is entirely identical to the Complainant’s longstanding registered mark, with no additional distinguishing text.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant’s mark has no dictionary meaning, and is not a generic or descriptive term.
The Complainant has not licensed or otherwise permitted the Respondent to use its trade mark, and has not permitted the Respondent to register or use any domain name incorporating the mark. There is nothing available in the WhoIs records, nor displayed on the website active at the disputed domain name, to indicate that the Respondent is known by the disputed domain name or a name corresponding to the disputed domain name.
There is no evidence that the Respondent has ever used the disputed domain name, or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The only use to which the Respondent has put the disputed domain name (which contains the entirety of the Complainant’s registered mark) is to display PPC links to advertising for the Complainant’s competitors and products in the same industrial sector. The Respondent is therefore earning revenue based on consumer confusion, and by trading on the goodwill associated with the Complainant’s trade mark.
The use of a complainant’s registered trade mark to deceive Internet users and garner unwarranted financial gain thereby is not a bona fide business activity under the Policy. Furthermore, as the Respondent appears to be receiving revenue from the PPC links displayed on its website, it is clearly not making any noncommercial or fair use of the disputed domain name.
The Respondent has, at no time, made any bona fide or fair use of the disputed domain name, as it has been used solely in connection with the sale of advertising space for services and goods competitive with those offered by the Complainant (as well as some unrelated goods/services in similar markets). By registering a domain name containing the Complainant’s well-known registered trade mark, which the Complainant had been actively using in the wind turbine and energy industry for over 15 years prior to the Respondent’s selection of the disputed domain name, it is clear that the Respondent’s only intention was to trade on the goodwill associated with the Complainant’s mark.
Registered and Used in Bad Faith
The Respondent has registered and is using the disputed domain name in bad faith.
The Complainant is well known in the international wind turbine marketplace, and has used its name in connection with its products and services since its founding in 1984. The Complainant’s trade mark had been registered for 15 years before the Respondent selected the disputed domain name in 2012 (or 2011, depending on the identity of the underlying registrant behind the PrivacyProtect.org service), which the Respondent has used solely in connection with PPC advertising, including links to the Complainant’s competitors in the alternative energy industry.
It is thus inconceivable that the Respondent was unaware of the Complainant and its ENERCON mark at the time it selected the disputed domain name. Accordingly, the registration of the disputed domain name was undertaken in bad faith.
The Respondent has also used the disputed domain name in bad faith. The Respondent’s use of the disputed domain name in connection with wind-turbine related advertising makes clear that the Respondent’s intention to trade on the goodwill associated with the Complainant’s brand for the sole purpose of generating unwarranted commercial gain.
Prior UDRP panels have held that the registration of a domain name which appears to be connected to a well-known trade mark has been found to constitute opportunistic bad faith.
It is thus clear that the Respondent has intentionally and deliberately targeted the Complainant’s trade mark, and the goodwill associated therewith, for commercial gain. The Respondent has misled visitors to its webpage, is intentionally riding on the fame of the Complainant’s mark, products and services in order to profit from the sale of advertising space to, inter alia, competitors of the Complainant, and has generated revenue as a direct result of Internet user confusion. Such actions are clearly indicative of bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant undoubtedly has rights in the mark ENERCON by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive, worldwide use of that name over many years.
Disregarding the suffix, the disputed domain name is identical to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the disputed domain name has been used for a parking page with links to alternative-energy products, including those of the kind supplied by the Complainant. Such use of the disputed domain name could not of itself confer rights or legitimate interests. See paragraph 2.6 of WIPO Overview 2.0, which states:
“Panels have generally recognized that use of a domain name to post parking and parking pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services” … especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
In this case, the advertising links are clearly related to the trade mark value of the invented word “enercon”.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The archive WhoIs information supplied by the Complainant indicates that, as of February 3, 2011, the disputed domain name was in “pending renewal or deletion” status, not having being renewed by its previous owner. At some point between that date, and March 6, 2011, the disputed domain name was acquired by a registrant using a proxy service. By October 30, 2012, the disputed domain name had been switched to a different proxy service. To complicate matters further, following service of the Complaint, the second proxy service disclosed that the underlying registrant of the disputed domain name was none other than the first proxy service.
The real identity of the person controlling the disputed domain name has not at any stage been revealed. However, what the evidence does indicate is that the current underlying owner of the disputed domain name acquired it no earlier than February 3, 2011, and therefore many years after the Complainant started trading under the name “Enercon” in 1984. Given this fact, as well as the distinctive nature of the trade mark, the use of the disputed domain name for sponsored links to websites offering products relating to the Complainant’s industry, and the failure of the Respondent to come forward and argue otherwise, the Panel infers that the Respondent acquired the disputed domain name with the Complainant’s trade mark in mind.
In the Panel’s view, paragraph 4(b)(iv) of the Policy applies. By using the disputed domain name, comprising the Complainant’s distinctive trade mark, in connection with a parking page with links to products relating to the Complainant’s industry, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element 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 <enercon.net> be transferred to the Complainant.
Date: January 28, 2013