WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EnBW Energie Baden-Württemberg AG v. Contact Privacy Inc. / ICS INC.
Case No. D2013-1069
1. The Parties
Complainant is EnBW Energie Baden-Württemberg AG of Karlsruhe, Germany, represented by Lichtenstein, Körner & Partners, Germany.
Respondent is Contact Privacy Inc. of Toronto, Ontario, Canada / ICS INC. of Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“UK”).
2. The Domain Name and Registrar
The disputed domain name <en-bw.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2013. On June 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 2013, 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 June 18, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 18, 2013.
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 Respondent of the Complaint, and the proceedings commenced on June 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 10, 2013.
The Center appointed Fernando Triana, Esq., as the sole panelist in this matter on July 17, 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 owns several EnBW and EnBW-formative trademark registrations. Among others, Complainant owns a European Community Trademark EnBW (registration no. 000771014) dated February 18, 2000, to identify goods and services in International Classes 4, 9, 35, 36, 37, 38, 39, 40, 41, 42 and an International Trademark EnBW (registration no. 905563) dated May 25, 2005, to identify goods and services in International Classes 04, 06, 07, 09, 11, 12, 16, 19, 32, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
Complainant owns the domain name <enbw.com> since December 15, 1997.
5. Parties’ Contentions
Complainant is a leading energy supply company in Germany, identified with the business name “EnBW” used since 1998.
Complainant owns the domain name <enbw.com> and several EnBW and EnBW-formative trademark registrations.
Respondent identity was covered by a cloaking service. Once the identity of the underlying registrant of the disputed domain name was revealed by the Registrar, Complainant identified it as a prolific cyber squatter with 30 UDRP cases before the WIPO and 41 UDRP cases before the National Arbitration Forum (NAF) all of them decided since 2012.
The disputed domain name is confusingly similar to Complainant’s trademarks and domain name. The only difference lies in a hyphen between “en” and “bw”. For a consumer the hyphen is irrelevant when searching a website. Thus, Respondent would have misled consumers to its website aiming for profits.
The mere addition of a hyphen is not enough to differentiate the trademark from the disputed domain name, as the trademark is completely incorporated in the disputed domain name.
The disputed domain name resolves to a parking website featuring sponsored links related to Complainant’s competitors.
Respondent has no rights or legitimate interests on the disputed domain name.
Respondent has not use or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Respondent has not been authorized to use Complainant’s trademark in the disputed domain name. There is not and has never been a business relationship between the parties.
Respondent has never been commonly known by the disputed domain name.
Respondent is not making noncommercial use of the disputed domain name, since it resolves to a website displaying sponsored links.
Respondent registered and uses the disputed domain name in bad faith.
Respondent was aware of Complainant’s business and its trademarks.
The disputed domain name is confusingly similar with both Complainant’s domain name and trademark. The disputed domain name targets Complainant’s consumers or potential consumers, and misleads them to a website displaying sponsored links of Complainant’s competitors.
Respondent’s constant disregard for third parties trademark rights confirms its bad faith.
Respondent did not reply to Complainant’s contentions, despite of being duly served of the Complaint.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Likewise, paragraph 10(d) of the Rules, provides that “the Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
The Panel wants to place special emphasis on the evidence filed by the parties to prove their assertions, which has been thoroughly studied in order to determine its relevance and weight in arriving to a decision. The statements that have been accompanied by evidence have been given more importance than the mere statements made by the parties without further demonstration to its existence. The Panel is empowered to confirm this evidence ex officio.
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that a disputed domain name be cancelled or transferred:
(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:
First of all, the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights. Secondly, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and thirdly, the Panel will establish whether or not the disputed domain name has been registered and is being used in bad faith by Respondent.
A. Identical or Confusingly Similar
Complainant contends it is the owner of the trademark EnBW in the European Community, Germany and the International Trademark System (Madrid System for the International Registration of Marks), to identify goods and services related to the energy industry.
Existence of a trademark or service mark in which Complainant has rights
Firstly, it is important to point out that paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. As a matter of general principle, trademark rights are typically acquired by registration before a competent office.
The generally accepted definition of a trademark involves the concept of a distinctive force as the most relevant element. It is this “distinctiveness” that gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks1 and thus, it is well established that a complainant is not required to own a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark to deserve legal protection, based solely on its use in commerce.
In this case, Complainant has proven its rights in the trademark EnBW, as indicated in Section 4. This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use it in connection with the stated goods and services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive.
Thus, Complainant established its rights in the trademark EnBW.
Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark ENBW for purposes of paragraph 4(a)(i) of the Policy.
Identity or confusing similarity between the disputed domain name and Complainant’s trademark
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s trademark with the mere addition of a hyphen which does not affect the appearance and it is irrelevant for the consumer.
In the first place, before establishing whether or not the disputed domain name is confusingly similar to Complainant’s trademark EnBW, the Panel wants to point out that the addition of generic top-level domains (gTLD), i.e., “.com,” “.biz,” “.edu” or “.org” are not generally considered when determining if the disputed domain name is identical or confusingly similar to the registered trademark2. Neither do the addition of country code top-level domains (ccTLD), i.e., “.co.”, “.de”, “.cr”, “.es”, nor the insertion of a gTLD have a distinctive function3.
UDRP panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is typically not a factor in analyzing whether the disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477, the panel stated that:
“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services”.
Furthermore, the Panel believes that the disputed domain name is confusingly similar to the trademark EnBW as per the typical UDRP criteria. Moreover, the spelling similarity is a criterion used by several trademark offices4 to determine whether or not two trademarks are confusingly similar5. It refers to the coincidence in the position of the letters that make up the trademarks compared, making emphasis on the similarities rather than on the differences. In this case, the Panel will use the same criterion to determine if the trademark EnBW and the disputed domain name are similar. The Panel observes that the disputed domain name reproduces the entire trademark EnBW. The only difference is the hyphen in the middle of the disputed domain name. Thus, they are confusingly similar.
The Panel confirms that the disputed domain name is indeed a way of representing the trademark EnBW, which does not seem to be accidental but rather a purposeful decision of Respondent. This topic will be further addressed in Section 6C below.
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark EnBW and thus, the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with.
B. Rights or Legitimate Interests
Prima Facie Case
Regarding this second element of paragraph 4(a) of the Policy, UDRP panels have agreed that requiring a complainant to prove the lack of rights or legitimate interests of a respondent in the disputed domain name is often an impossible task: it not only requires proving a negative but also demands access to information that is usually within the knowledge of a respondent6.
In Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121, the panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.
Therefore, a complainant is required to make a prima facie case that respondent lacks rights or legitimate interests in a domain name. Once this prima facie case is made, the burden of production shifts to respondent, who must come forward with concrete evidence of its rights or legitimate interests7. If a respondent fails to do so, a complainant is deemed to have met the second element of paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because: i) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services because the disputed domain name resolves to a website featuring sponsored links of Complainant’s competitors, hence, Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name; ii) Respondent has not made any preparations to use the disputed domain name; iii) Respondent is not commonly known by the disputed domain name; iv) Respondent has not been authorized by Complainant to use the trademark EnBW in any manner; v) Respondent has no prior rights or legitimate interests in the disputed domain name; and v) Respondent is not making noncommercial use of the disputed domain name.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.
Respondent’s rights or legitimate interests in the disputed domain name
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a disputed domain name:
(i) Before any notice of the dispute, 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) 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 Panel notes that Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that Respondent has failed to submit a Response to the Complaint filed against it. In particular, Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests to the disputed domain name. In accordance with the Rules paragraph 14, the Panel thus draws such inferences as it considers appropriate, which is that Respondent is unable to adduce evidence of any rights or legitimate interests in the disputed domain name.
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(i) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of legitimate use of the disputed domain name or reasons to justify the choice of the expression “en-bw” in its business operation.
(ii) There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the EnBW trademark or to apply for or use any domain name incorporating the EnBW trademark;
(iii) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name.
(iv) There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name.
(v) The disputed domain name is confusingly similar to Complainant’s EnBW trademark.
(vi) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Thus, Complainant established that Respondent does not have rights or legitimate interests in the disputed domain name, which Respondent did not rebut. Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is duly complied with.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the disputed domain name 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 Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
Complainant asserts that Respondent registered the disputed domain name in bad faith, since he must have had knowledge of the trademark EnBW.
The Panel agrees with Complainant. The fact that Respondent chose the expression “en-bw” to make up the disputed domain name is in this Panel’s view evidence per se of its bad faith. The Panel finds this selection was deliberate and not product of chance: “en-bw” is not a common word in the English, Spanish, German or French languages as the Panel confirmed through searches conducted on July 23, 2013, in different online dictionaries8. Thus, the Panel finds Respondent deliberately took someone else’s trademark to register a domain name and to create a business around it.
Thus, this Panel deems that the mere fact of knowingly incorporating a third-party’s mark in a domain name constitutes registration in bad faith9. See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, where the panel found: “[t]he selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
In addition, Complainant contends in the Complaint that Respondent is using the disputed domain name in bad faith, since the disputed domain name resolves to a parking page displaying sponsored links of Complainant’s competitors, it is obvious that Respondent is intentionally exploiting the user’s confusion between Complainant’s trademark and the disputed domain name in order to obtain a commercial benefit.
The Panel concurs. This intention explains the selection of words with which Respondent made the disputed domain name up. The Panel finds that Respondent must have known that it would attract Internet users seeking Complainant to the website from which he expected to make money. Thus, Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s trademark. The more diverted Internet users Respondent could attract the more profit it would make.
Complainant also mentions that Respondent’s website contains sponsored links and the Panel accepts the uncontested evidence submitted by Complainant that Respondent has used the disputed domain name to host a page consisting of pay-per-click links to commercial websites related to, among other things, the energy industry. As in Microsoft Corporation v. Abdullah Ali, NAF Claim No. 1423605, this Panel believes that “pay-per-click advertisement is a valid Internet advertising model which does not necessarily entail use of a domain name in bad faith. However, this Panel also believes that registering a domain name which comprises someone else’s well-known mark so as to make profit from diverted Internet users in the form of pay-per-click fees, is use in bad faith as per Policy 4(b)(iv)”.
Hence, the Panel concludes that such use of the disputed domain name by Respondent constitutes an attempt to use Complainant’s trademark to attract Internet users to its website for commercial gain which constitutes evidence of bad faith use under paragraph 4(b)(iv) of the Policy.
Consequently, the three elements of the Policy, paragraph 4(a) are satisfied in the present case in respect to Respondent of the disputed domain name.
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 <en-bw.com> be transferred to Complainant.
Fernando Triana, Esq.
Date: July 24, 2013
2 See Altec Industries, Inc. v. I 80 Equipment, NAF Claim No. 1437753.
3 See YottaMark, Inc v. Lukasz Chudy, NAF Claim No. 1392357.
4 The Trademark Offices of the Andean Community member countries (Colombia, Peru, Ecuador and Bolivia) apply this criterion, among others, to determine if two trademarks are similar. The Andean Court of Justice has adopted it from the Hispano-American Trademark doctrine (including authors such as Guillermo Cabanellas de las Cuevas, Carlos Novoa and Luis Eduardo Bertone, among others), and accordingly, has ordered the Andean Trademark Offices to use this criterion to carry out the registrability exams.
8 English: “www.merriam-webster.com”; Spanish: “ www.rae.es”; French: “www.larousse.com/en/dictionaries/french”; and German: “www.canoo.net”.
9 See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, supra.