WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BURRI public elements AG v. Markus Burri
Case No. D2015-1885
1. The Parties
The Complainant is BURRI public elements AG of Glattbrugg, Switzerland, represented internally.
The Respondent is Markus Burri of Emmen, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <burri.com> is registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 22, 2015. On October 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 2015, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 28, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2015. The Response was filed with the Center on November 11, 2015, followed by a confirmation of the Respondent on November 16, 2015 that the submitted Response was complete. The Response was submitted in German. As both the Complaint and the Registration Agreement are in English and the Respondent submitted no arguments as to why the procedure should be in German, the Center continued the administrative proceeding in English.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on November 18, 2015. 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, BURRI public elements AG, is a producer of elements for the public space. It is the owner of the Swiss trademark BURRI (No. 2P-414804) since July 9, 1993, registered on February 1, 1995 and of the International Registration BURRI (No. 1022478) registered on September 1, 2009. The Complainant markets its products on the website "www.burriag.com".
The Respondent, Markus Burri, is a website designer and operator of the corresponding one-man business "Markus Burri" since 2008. The disputed domain name was registered on November 25, 2005, remained inactive for approximately 10 years and currently consists of one page advertising the services of the Respondent.
Via email of August 28, 2015, the Respondent offered to sell the disputed domain name to the Complainant for CHF 50,000.
5. Parties' Contentions
In summary, the Complainant contends the following:
The disputed domain name is absolutely identical with the Complainant's trademark BURRI.
The Respondent has no legitimate interests in respect of the disputed domain name, because he is not using it for commercial purposes. ".com" domains were originally intended for commercial use. The Complainant is going to expand its export activities in the next years. That's why it is important to have a domain name for commercial use that is easy to find for potential customers around the world. So the Respondent has no need for the disputed domain name, but the Complainant does.
From the moment of registration, the Respondent has never used the disputed domain name, but instead occupied it and was willing to sell the disputed domain name to the Complainant. If someone registers a domain name and never uses it, this can be considered as bad faith.
The Complainant requests the Administrative Panel appointed in these proceedings to order a transfer of the disputed domain name to the Complainant in return for an appropriate payment of CHF 15,000.
In summary, the Respondent replied as follows:
The disputed domain name corresponds to the last name of the Respondent and is used to promote his business as website service provider. The website linked to the disputed domain name is currently being redesigned and will be directed at potential customers in foreign countries.
The Respondent never intended to sell the disputed domain name, but was approached repeatedly by the Complainant and subsequently offered to transfer the disputed domain name for CHF 50,000, reflecting the investments made up until then.
As the Respondent has made investments and will use the domain name in the future to promote his business, he is subsequently not interested in its sale anymore.
6. Discussion and Findings
A. Language of the Proceedings
According to information by the Registrar, the language of the registration agreement is English. While the Complainant has filed its Complaint in English, it also submitted a request for German to be language of proceedings, considering that both parties are domiciled in (the German-speaking part of) Switzerland. The Respondent filed its Response in German
Paragraph 11 of the Rules provides that the language of the administrative proceedings shall be the language of the Registration Agreement. The default language of these proceedings is therefore English. As the Complaint was filed in English and the Response was filed in German, and since the Panelist is a German native speaker, there is no need to translate the Response into English and the Panel will issue this decision in English.
B. Identical or Confusingly Similar
The second level of the disputed domain name is identical to the Complainant's trademark. The Complainant's has thus fulfilled paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
According to paragraph 4(c)(ii) of the Policy, a respondent can demonstrate its rights or legitimate interests in a domain name if it (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has not acquired any trademark or service mark rights.
While "Burri" is a fairly common last name in Switzerland, the Complainant's corresponding trademark BURRI cannot in this Panel's view be considered as well-known in this country. In fact, the Panel was not aware of the Complainant's trademark before these proceedings were initiated.
Contrary to the Complainant's allegations, the Respondent is not required to use a domain name for commercial purposes in order to assert rights or legitimate interests in a domain name. It is sufficient for the Respondent to demonstrate that he is "commonly known" by the disputed domain name, which is the case here since the disputed domain name corresponds to the Respondent's last name.
Against this background, the Panel concludes that the Respondent has demonstrated rights and legitimate interests in the disputed domain name under paragraph 4(c)(ii) of the Policy. The Complainant has thus not fulfilled paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
While it would not be necessary to examine the third element of the Policy considering the conclusion reached above, the Panel would like to point out for the sake of completeness that the Respondent's offer to transfer the disputed domain name to the Complainant for CHF 50,000 does not constitute bad faith in the Panel's view, since (i) it appears from the record that the Complainant first approached the Respondent for an offer and (ii) the Respondent has a right and legitimate interest in the disputed domain name.
The Respondent's lack of bad faith is further evidenced by the Complainant's offer to compensate the Respondent in the amount of CHF 15,000 in case of a decision by the Panel that the disputed domain name be transferred to the Complainant.1
Consequently, the Complainant has also not fulfilled the requirements under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: November 24, 2015
1 It should be noted in this connection that the Panel would not be authorized to determine any monetary compensation for the Respondent since such a determination would fall outside the scope of these administrative proceedings.