WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mark Overbye v. Maurice Blank, Gekko.com B.V.
Case No. D2016-0362
1. The Parties
Complainant is Mark Overbye of Shakopee, Minnesota, United States of America (“U.S.”), self-represented.
Respondent is Maurice Blank, Gekko.com B.V. of Bergen, the Netherlands, self-represented.
2. The Domain Name and Registrar
The disputed domain name <gekko.com> is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2016. On February 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2016 and February 25, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 March 1, 2016.
The Complaint was submitted in the English language. The language of the Registration Agreement for the disputed domain name is Dutch. On February 29, 2016, the Center sent a language of proceeding communication in both Dutch and English to the parties. On March 1, 2016, Complainant submitted a request for English to be the language of proceeding. Respondent did not reply to either the Center’s communication or Complainant’s request.
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 Respondent in both English and Dutch of the Complaint, and the proceedings commenced on March 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2016. The Response was filed, in English and Dutch, with the Center on March 25, 2016.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on April 1, 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
Complainant is a manufacturer of boats used for water sports such as waterskiing, wake boarding and wake surfing. Complainant shows to be the holder of the U.S. trademark No. 1979285, registered on June 11, 1996, and containing an image of a type of lizard and the word “gekko” as represented below:
The disputed domain name was registered on July 24, 2001, and refers to a parking page.
5. Parties’ Contentions
Complainant considers the disputed domain name to be confusingly similar to a trademark in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainant, Respondent has not used the disputed domain name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the disputed domain name.
Finally, Complainant considers that the disputed domain name was registered and being used in bad faith.
Respondent states that its activities only relate to travel in Europe. Respondent further states that both parties are not competitors and that it did not register the disputed domain name primarily to disrupt Complainant’s business or prevent Complainant from reflecting its mark in a corresponding domain name.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of previous UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the disputed domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
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.
The Panel will deal with each of these requirements in turn.
A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has established that there are trademarks in which it has rights, which consist of figurative elements and the word “gekko”.
The Panel considers the disputed domain name <gekko.com> to incorporate the dominant word element of Complainant’s trademark in its entirety. According to the Panel, the abovementioned figurative elements are insufficient to remove the confusing similarity (See Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827, where it was considered that in comparing the domain name and a complainant’s trademark, particular attention must be given to the verbal elements of the mark).
Comparing the textual component of Complainant’s trademark and the disputed domain name, the Panel finds the disputed domain name identical or confusingly similar to Complainant’s trademark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.11.
Accordingly, Complainant has made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is established consensus among panelists under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of rebuttal on Respondent. (See Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
Both parties agree that there is no relationship between them. Complainant submits that Respondent is not using the disputed domain name for a valid ongoing business, but is “sitting on the [disputed domain name] since 2001 without any connection to any business or product”. Respondent states that the activities linked to the disputed domain name only relate to travel in Europe.
In this respect, limited factual research on “www.archive.org” shows that before referring to a parking page, the website associated to the disputed domain name used to contain travel related content. (The WIPO Overview 2.0 records to be a consensus view among WIPO panelists that panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name, consulting a repository such as the Internet Archive (at “www.archive.org”, see paragraph 4.5.) in order to obtain an indication of how a domain name may have been used in the relevant past). In any event, the Panel finds that there is no evidence showing that Respondent’s conduct was aimed at creating confusion with Complainant’s trademark at any point in time.
Moreover, the Panel notes that the dominant word element of Complainant is descriptive, as it refers to a type of reptile. The Panel considers that normally a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent’s aim in registering the disputed domain name was to profit from and exploit the complainant’s trademark (See Harvard Lampoon, Inc. v. Reflex Publishing Inc., WIPO Case No. D2011-0716; National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424).
Complainant does not provide any proof indicating that Respondent’s aim in registering the disputed domain name was to profit from and exploit Complainant’s trademark. The Panel finds that Respondent’s offer to sell the disputed domain name to Complainant is not relevant as Respondent was first approached by Complainant to sell the disputed domain name.
In these circumstances, Complainant has failed to make out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the Panel’s finding on the issue of rights and legitimate interests, it is unnecessary to consider the issue of bad faith registration or use.
For the foregoing reasons, the Complaint is denied.
Flip Jan Claude Petillion
Date: April 15, 2016