WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comway Distribution A/S v. Comway Global Internet Services GmbH
Case No. D2016-0108
1. The Parties
The Complainant is Comway Distribution A/S of Hvidovre, Denmark, represented by Horten Law Firm, Denmark.
The Respondent is Comway Global Internet Services GmbH of Munich, Germany.
2. The Domain Name and Registrar
The disputed domain name <comway.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 January 19, 2016. On January 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date 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 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 January 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2016. On February 11, 2016 the Respondent's Technical Contact filed a request for extension. On February 12, 2016, pursuant to paragraph 5(b) of the Rules, the Center notified the parties that the due date for filing a response was extended until February 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Parties of the commencement of Panel appointment process on February 16, 2016.
The Center appointed Adam Taylor as the sole panelist in this matter on February 23, 2016. 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 has traded under the name "Comway Distribution A/S" since 2003.
The Complainant owns a pending application for a Community Trade Mark No.13621438 for COMWAY filed January 7, 2015, in classes 9, 35 and 42. The Complainant's activities are focused on IT distribution services.
The disputed domain name was registered on May 7, 1997.
There is no evidence that the disputed domain name has ever been used for an active website.
5. Parties' Contentions
A summary of the Complainant's contentions is as follows:
The Complainant has established common law rights in the name "Comway" in accordance with Danish law.
The disputed domain name includes the Complainant's company name and trade mark.
The Complainant has not found evidence of any activity by the Respondent. It appears that the company does not trade. The disputed domain name has never been actively used. Searches at various trade mark registries have not revealed any trade marks owned by the Respondent.
The parties corresponded in 2014 about potential sale of the disputed domain name but the sale was never finalised.
The Respondent did not reply to a cease and desist letter from the Complainant.
The lack of active use of the disputed domain name clearly indicates that the Respondent never intended to use the disputed domain name. The lack of evidence of activity under the Respondent's name shows that the disputed domain name was not registered to promote the Respondent.
The communications between the parties regarding possible sale of the disputed domain name and the Respondent's failure to reply to the Complainant's cease and desist letter shows that the Respondent's intention was to sell the disputed domain name for valuable consideration in excess of the Respondent's out of pocket costs directly related to the disputed domain name.
The Complainant is unable to promote its legitimate business under the prestigious ".com" domain name. As the Respondent has failed to respond to the Complainant's communications, the Complainant sees this Complaint as the only way to secure the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant's pending trade mark application does not constitute trade mark rights for the purposes of the Policy.
The Complainant has produced no evidence in support of its claim of common law (or unregistered) rights.
The Complainant has therefore failed to establish the first element of paragraph 4(a) of the Policy.
For completeness, the Panel also addresses the other factors in paragraph 4(a). As explained below, the Complainant has also failed to establish the third element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 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."
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering.
As to 4(c)(ii) of the Policy, while the Respondent's name includes the word "Comway", there is no evidence that the Respondent has been "commonly known" by that name.
Nor is there any reason to think that paragraph 4(c)(iii) of the Policy applies 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 Complainant is required to establish that, on the balance of probabilities, the disputed domain name was registered and used in bad faith.
The Complainant's earliest claimed use of the mark was in 2003. This poses an immediate problem for the Complainant because, as the Complainant acknowledges, the registration date for the disputed domain name is May 7, 1997.
Paragraph 3.1 of WIPO Overview 2.0 makes clear that, generally speaking, when a domain name is registered by the respondent before the complainant's relied-upon trade mark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right. There are exceptions where the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, but there is no suggestion that such a scenario is applicable here. Indeed the registration date for the disputed domain name long pre-dates the Complainant's claimed first use of its mark.
Given these facts, the case must fail as the disputed domain name could not conceivably have been registered in bad faith.
The Complainant asserts that the lack of evidence of active use of the disputed domain name indicates that the Respondent never intended to use the disputed domain name. Even if true, this does not assist the Complainant, which must establish at the least that the Respondent registered the disputed domain name in contemplation of the Complainant's trade mark. This was impossible given that the Complainant's rights are not claimed to have arisen until some six years later.
Similarly, it is irrelevant if the Respondent originally registered the disputed domain name with a view to selling it for a profit, which is of itself legitimate. The position would have been different if the circumstances had indicated that the Respondent registered the disputed domain name for sale to the Complainant but that is clearly not the case here.
The Complainant complains that it is unable to promote its legitimate business under the "prestigious '.com' domain name" and that it has filed the Complaint as the only way to secure the disputed domain name given that the Respondent has failed to respond to the Complainant's communications. However, the Complainant's desire to promote its business under the disputed domain name, however prestigious, is not a matter which the Panel can consider.
To succeed under the Policy, and notwithstanding the Respondent's failure to file a Response (see paragraph 4.6 of WIPO Overview 2.0), the Complainant must establish the three elements of paragraph 4(a) of the Policy. And, for the reasons explained, above, the Complainant has failed to establish the first and third element of paragraph 4(a) of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: March 8, 2016