WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Andreas Stihl AG & Co KG v. Andrew Davis
Case No. D2014-0576
1. The Parties
The Complainant is Andreas Stihl AG & Co KG of Waiblingen, Germany, represented by McGuireWoods LLP, United States of America.
The Respondent is Andrew Davis of Port of Spain, Trinidad and Tobago, self-represented.
2. The Domain Name and Registrar
The disputed domain name <stihl.ceo> is registered with 101domain, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 8, 2014. On April 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint together with the amendment to the Complaint/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 the Respondent of the Complaint, and the proceedings commenced on April 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2014. The Response was filed with the Center on May 14, 2014.
The Center appointed James A. Barker as the sole panelist in this matter on May 20, 2014. 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.
On May 20, 2014, the Complainant requested the opportunity to file a reply in support of its Complaint, on the basis that the Respondent had raised several arguments that were not raised or addressed in Complainant's original filing. The Center noted that no express provision is made for supplemental filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel, and that the admission of such filings was at the discretion of the Panel. On May 27, 2014, the Complainant filed a supplemental reply and requested that this be provided to the Panel.
On June 3, 2014, the Center notified the parties that the due date for the decision had been extended by the Panel until June 6, 2014.
4. Factual Background
The Complainant has various registered trademarks for STIHL or marks which incorporate that term. The Complainant's marks are registered with the United States Patent and Trade Mark Office (USPTO). The earliest of those registrations dates from 1968. The Complainant also is the owner of various marks registered with the European Union's Office for Harmonization in the Internal Market (OHIM). In 1996, through its American subsidiary, the Complainant began operating a website at "www.stihlusa.com" to advertise its power tools and other products. The Complainant has also registered a number of domain names featuring its mark, including <stihl.com> registered in 2003, <stihl.net> registered in 2004 and <stihl.info> registered in 2001.
As explained on its website at <stihl.com>, the Complainant develops, manufactures and distributes power tools for professional forestry and agriculture as well as for garden and landscape maintenance, the construction sector and the private user. The Complainant distributes its products through its network of 40,000 approved dealers in over 160 countries. The STIHL Group has 34 sales and marketing subsidiaries of its own as well as more than 120 importers.
As confirmed by the Registrar, the Respondent registered the disputed domain name on March 19, 2014.
Although not mentioned in the Complaint, the Complainant has previously been subject to decisions under the Policy in its favor. These include Andreas Stihl AG & Co KG v. Rodrique Calasbo, WIPO Case
No. D2010-0052; Andreas Stihl AG & Co KG v. WhoisGuard Protected, WIPO Case No. D2008-1527. In the former case the Panel "determined that the Trademark STIHL and the family of Trademarks incorporating the distinctive element STIHL of the Complainant are distinctive, well-known and have, by reason of their extended use, significant goodwill…".
5. Parties' Contentions
The Complainant claims that the disputed domain name is confusingly similar to its registered mark for STIHL.
The Complainant also claims that, on information and belief, the Respondent has no rights or legitimate interests in the disputed domain name. A search of the USPTO's or OHIM database for all live marks comprised of the word "stihl", with or without design elements, did not reveal any parties who appeared to bear any relationship to the Respondent. The name of the Respondent bears no connection to the disputed domain name. An Internet search for the Respondent does not reveal any websites which suggest the Respondent has rights or legitimate interests in the disputed domain name.
Finally, the Complainant says that the disputed domain name was registered and is being used in bad faith. In this connection, the Complainant says that the disputed domain name will create confusion as to the affiliation of the Respondent's website with the Complainant. The Complainant provides an undated screenshot of the website at the dispute domain name. That website appears comprised of a simple homepage, with a heading "This could be YOU!" and a simple business card featuring a mock photo and contact email details including the extension "stihl.ceo".
The Respondent states that, although the disputed domain name may bear a resemblance to the Complainant's trademark, "Stihl" is also a German surname and this is what the disputed domain name relates to. The Respondent says that he was not aware of the Complainant's trademark or the Complainant before receiving a notice of the Complaint.
The Respondent says that his registration of the disputed domain name has nothing to do with the Complainant, and that it only relates to persons (in general) named "Stihl", especially CEOs, business owners and leaders. The ".ceo" extension is a "vanity domain extension, and is not meant for commercial or business purposes". The Respondent states that his website does not refer to any particular individual person or company; that it is meant to be a directory for people who use "Stihl" as a name.
For these reasons, the Respondent says that he has a legitimate interest in the disputed domain name. The Respondent says that his registration of the disputed domain name is part of a larger database that he is building. The Respondent says that he has registered other domain names in this connection, including "andrew.ceo", "james.ceo", and "smith.ceo" among others. The Respondent says that he has focused his registrations on first/last names that are common around the world, and that "Stihl" is a fairly common name in Germany. The Respondent says that "My approach is to gain members/visitors on these individual websites first which I can later funnel into my future social network at 'every.ceo'".
In relation to the allegation of bad faith, the Respondent says that his website does not cause any confusion of being affiliated with the Complainant. There is nothing on the Respondent's website that would make a visitor think that the Respondent is associated with "stihl.com".
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name was registered and is being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below, immediately following consideration of whether to admit the Supplemental Filing of the Complainant.
The Panel also notes that it has undertaken limited independent research because of the limited information provided in the Complaint and the Response, in particular to investigate information on the Complainant's website at <stihl.com> and the Wikipedia reference to the Complainant. The Panel has made that investigation in accordance with paragraph 10 of the Rules. Such an approach is consistent with a majority of panel views about the capacity of a panel to undertake independent research (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.5). However, evidence obtained in that way can obviously suffer from a lack of explanation which a party's submission might give it. As such, the Panel has undertaken this research only to the extent necessary to clarify matters on which both the Complainant and Response were silent, and on matters which appear unlikely to be disputed.
A. Supplementary Filing of Complainant
Paragraph 15 of the Rules prescribes that the Panel shall decide a complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable. As noted above, the Center received a Supplemental Filing from the Complainant on May 27, 2014 with a request that this filing be considered by the Panel.
This Supplemental Filing was not requested by the Panel pursuant to paragraph 12 of the Rules. Paragraph 12 of the Rules makes it clear that the Panel alone must decide whether it requires further statements or documents from either of the parties. There is no provision for a right of reply on the part of either party. The objective of the Policy and the Rules is to ensure a speedy and cost-effective determination of the relevant issues. Unless a compelling reason is presented, such as new facts relevant to the determination, that requires a response, it would be contrary to this objective to invite or allow supplementary pleadings and evidence. Each party is given a single opportunity to present its case. If it fails to do so, there must be compelling reasons to invite further contributions.
The basis on which the Complainant asks the Supplemental Filing to be considered is that the Respondent "has raised several arguments that were not raised or addressed in Complainant's original filing". This is not a compelling reason to admit the Supplemental Filing. There does not appear to be anything in the Response which could not have been anticipated in the Complaint, or which raises new facts.
For these reasons, the Panel has not considered the Complainant's Supplemental Filing.
B. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the first thing a complainant must show is that it "has rights" in a trademark. The Complainant has provided copies of a large number of registration certificates for the mark on which it relies and so meets this aspect of the Policy.
The next issue is whether the disputed domain name is identical or confusingly similar to that mark. It is well established that the domain name extension (in this case, ".ceo") is typically disregarded for the purpose of comparison. Disregarding that extension, it is self-evident that the disputed domain name is relevantly identical to the Complainant's registered trademark for STIHL.
For these reasons, the Panel finds that the Complainant has established this first element.
C. Rights or Legitimate Interests
The second thing which the Complainant must establish to succeed is that the Respondent has no rights or legitimate interests in the disputed domain name. As noted in paragraph 2.1 of the WIPO Overview 2.0, for this element of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a 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 disputed domain name.
While the Complainant has provided little direct evidence of its business reputation, it has made a bare prima facie case with its brief arguments and evidence of its trademark rights.
Against this, the Respondent contends that it has a legitimate interest in the disputed domain name because it is a common surname in Germany and world-wide, and that he is building up a portfolio of domain names based on personal names, as part of his "building a database" and for use in a "future social network".
The Respondent's argument raises the issue of whether he can establish a right or legitimate interest because "Stihl" may be a common name. Determining this issue involves, firstly, establishing whether it is a common name in fact and if it is, secondly determining whether that fact allows for a right or legitimate interest in the circumstances of this case.
On the first issue, neither the Complainant nor the Respondent provided evidence on this point. The Respondent has made a general clam that "Stihl" is a common name, but provided no evidence to support this claim. On the other hand, the Complainant provided evidence of its mark, but no explanation for the origin of it. The Wikipedia entry for "Stihl" notes that "Stihl was founded in 1926 by Andreas Stihl, an important innovator in early chain saw production." This clearly suggests that "Stihl" is a surname. There is insufficient evidence in either the Complaint or Response however, for the Panel to determine whether it is common.
On the second issue, does the fact that "Stihl" is a surname automatically give the Respondent a right or legitimate interest in registering it? On balance, the Panel finds that the Respondent does not have such rights or legitimate interests for the following reasons.
Firstly, Panels have previously found that the Complainant's mark is distinctive, well-known and has, by reason of its extended use, significant goodwill. Andreas Stihl AG & Co KG v. Rodrique Calasbo, WIPO Case No. D2010-0052. The Complainant has a significant business presence world-wide. The Complainant provided evidence of its large portfolio of registered marks. The top results of a simple Internet search undertaken by the Panel for "stihl" all related to the business of the Complainant. In these circumstances, despite the Respondent's claims otherwise, it seems likely that the Respondent was aware of the Complainant when he registered the disputed domain name.
Secondly, the Respondent claims (but provides no direct evidence) to have registered other domain names incorporating common names, including "andrew.ceo", "james.ceo", and "smith.ceo" as part of his efforts to establish a database of domain names incorporating those personal names. These are, no doubt, common names. The Panel has no reason to doubt the Respondent's claim to have registered them, notwithstanding the lack of evidence in this connection. The apparent implication seems to be that the name "Stihl" is, at least in Germany, about as common as "Andrew", "James" or "Smith" in some other jurisdictions. The Respondent suggests that the name is "common around the world" but provided no evidence on this point. The Respondent also suggests that it is a common German surname.
Without any evidence to support it, the Respondent's mere claim that "Stihl" is a common name is unconvincing, particularly in the face of the reputation of the Complainant's mark. The Respondent's registration of some common names does nothing do show that "Stihl" itself is also a common name. The name "Stihl" does not strike the Panel as being equally common as "Andrew", "James", or "Smith". If it is not a common name, why would the Respondent have registered it? The Respondent does not self-evidently have a connection with Germany. He has his address in Trinidad and Tobago. His website is presented in English (according to evidence in the Complaint). In light of the Complainant's substantial reputation, it seems more likely that the Respondent was motivated by the potential associations of the disputed domain name with the Complainant.
Thirdly, the Respondent's claimed business in registering the disputed domain name is vague. The Respondent refers to using his portfolio of domain names in connection with a "database" and a "social network". Again, the Response provides no evidence to support this claim.
Fourthly, there is no other evidence in the case file of a connection between the Respondent and the term "Stihl", other than the Respondent's assertion (without supporting evidence) that he registered the disputed domain name as part of a portfolio of domain names containing personal names.
Finally, both the Complaint and Response indicate that the Respondent is in the business of registering disputed domain names to attract Internet users. This is, in effect, the Respondent's claimed business.
In these circumstances, the Panel finds that it is reasonable to infer that the Respondent was aware of the Complainant's mark and registered the disputed domain name because of its potential connection with it, to attract Internet users. Such a registration cannot be a basis for a right or legitimate interest under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances in which bad faith may be found. Each of those circumstances requires, or implies, that a respondent must at least have known, or ought to have known, of a complainant's rights, and sought to take unfair advantage of them.
As noted above, the Complainant has an extensive portfolio of trademarks for STIHL and a substantial reputation world-wide. In one previous case involving the Complainant's mark, the panel concurred "with previous WIPO UDRP decisions holding that in general, registration of a known trademark as a domain name may be a clear indication of bad faith in itself, even without considering other elements. As decided before, 'knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith'. Caixa D´Estalvis i Pensions de Barcelona ('La Caixa') v. Eric Adam, WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441". See Andreas Stihl AG & Co KG v. WhoisGuard Protected, WIPO Case No. D2008-1527. This Panel would not go so far as to find that mere knowledge of a complainant's mark, on its own, is sufficient for a finding of bad faith in all circumstances. Paragraph 4 of the Policy requires not only knowledge, but a bad faith intent to misuse a complainant's mark in the circumstances of the particular case. In the circumstances of this case however, the Panel finds that the Respondent, on the balance of probabilities, is likely to have registered the disputed domain name because of its association with the Complainant's mark.
The Respondent seeks to deny that he has acted in bad faith by denying confusion between his website and the Complainant. The Respondent refers to a disclaimer on his website that says "This website (Stihl.CEO) is NOT Affiliated with nor refers to any Trademark or Company names 'Stihl', that may or may not exist. This Website does NOT refer to any Specific Individual Person(s) names 'Stihl'".
The consensus view of panelists on disclaimers is relevantly set out in paragraph 3.5 of the WIPO Overview 2.0 as follows: "The existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. This is typically explained by UDRP panels with reference to the probability of Internet user 'initial interest confusion' - by the time such user reaches and reads any disclaimer under the domain name, any registrant objective of attracting visitors for financial advantage to its website through use of the trademark in the domain name will generally have been achieved." The Panel considers that this is a case where bad faith is established, on the basis of the other factors set out above. As noted above, the Complainant has a substantial reputation. In light of this, a mere disclaimer that the disputed domain name is not affiliated with the Complainant's trademark comes across as an unsupported assertion.
For these reasons, the Panel finds that the Complainant has established this element.
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 <stihl.ceo> be transferred to the Complainant.
James A. Barker
Date: June 6, 2014