WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Riemann Trading ApS v. Riemann, Michael
Case No. D2017-0111
1. The Parties
The Complainant is Riemann Trading ApS of Hillerød, Denmark, represented by BrandIT GmbH, Switzerland.
The Respondent is Riemann, Michael of Madrid, Spain, represented by Huber & Steinbacher, Germany.
2. The Domain Name and Registrar
The disputed domain name <riemann.net> 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 20, 2017. On January 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 20, 2017, 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 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2017. The Response was filed with the Center on February 13, 2017.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on February 24, 2017. 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 February 27, 2017, at the request of the Panel, the Center issued Procedural Order No. 1 to the Parties, reproduced below:
“Under paragraph 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Panel may, at its sole discretion, request further statements or documents from either of the Parties.
Having reviewed the case file, the Panel notes that the Respondent claims to have registered the disputed domain name in 1998/9 because Riemann is the Respondent’s surname. The Panel also notes that, while the Respondent seeks to defend the administrative proceeding in section 6B of the Response, the Respondent appears to have consented to the remedy requested by the Complainant in section 6C of the Response. Finally, the Panel notes that while the Respondent has nominated legal representatives within the Response, the Respondent appears to have completed the Response personally without the assistance of legal representation.
Taking the above into account, and in exercise of its powers under paragraph 12 of the Rules, the Panel orders the Respondent to provide (1) documentary evidence supporting the Respondent’s claim to be the original registrant of the disputed domain name in 1998/9, such as confirmation to that effect from the Registrar, copy emails sent or received using the disputed domain name at or close to the claimed registration date or configuration instructions from a similar date given to those operating the Respondent’s mail server; (2) documentary evidence from at least two independent sources supporting the Respondent’s claim that Riemann is the Respondent’s surname, such as a passport, driver’s license, official citizen identity card or birth certificate; and (3) confirmation as to whether the Respondent does or does not consent to the remedy sought by the Complainant in the administrative proceeding, namely transfer of the disputed domain name to the Complainant.
Any communication or submission as the result of this Panel Order shall be forwarded to the Center at email@example.com by no later than March 4, 2017.
The Complainant may submit any relevant comment by no later than March 9, 2017.
The Panel extends the decision due date to March 16, 2017.”
The Respondent did not file any response to Procedural Order No. 1. The Complainant filed comments and relative annexes on March 9, 2017 which will be discussed in section 6A below.
4. Factual Background
The Complainant was founded in Denmark in 1979 by Claus Riemann and currently focuses upon two niche brands, an antiperspirant sold under the brand “Perspirex”, and a sunscreen sold under the brand “P20”. The Complainant sells its products in over 30 markets worldwide including in Spain where the Respondent is located. The Complainant is the owner of numerous registered trademarks worldwide including European Union trademark no. 227835 for the word mark RIEMANN filed on April 1, 1996 and registered on May 13, 1998 in international classes 1, 3 and 5. The Complainant has registered a number of domain names containing its RIEMANN mark including <riemann.dk>, registered on February 28, 1997; <riemann.com>, registered on March 7, 1997; and <riemann.biz>, registered on January 20, 2004.
The disputed domain name was created on June 15, 1999. According to a screenshot dated February 8, 2006 produced by the Complainant, the website associated with the disputed domain name featured pay‑per-click advertising (“PPC”) which also displayed the Registrar’s banner and featured a “Coming Soon” message. The Complainant produced similar screenshots dated January 19, 2008, March 6, 2009 and May 17, 2014. All of the screenshots from 2006 to 2014 contain a link to the Complainant’s “P20” product and/or the Complainant’s RIEMANN mark. The Complainant also produced a screenshot from October 31, 2016 which was lacking the Registrar’s branding, though the screenshot appears to be incomplete. Nevertheless, it featured multiple references to the Complainant’s said product and mark. The current appearance of the website associated with the disputed domain name is a PPC page under the Registrar’s branding and with a “Coming Soon” message.
The Complainant attempted to contact the Respondent on November 1, 2016 via a cease-and-desist letter issued by email to the registrant email address listed on the WhoIs record. The Complainant followed this letter up by further emails of November 8, 2016 and November 15, 2016 together with a final email indicating that it proposed to file the Complaint if nothing was heard from the Respondent prior to December 23, 2016. The Complainant notes that no response was received to any of these communications from the Respondent.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant notes that the disputed domain name entirely incorporates the Complainant’s RIEMANN mark, adding that the top-level suffix in the disputed domain name is to be disregarded under the confusing similarity test.
The Complainant states that it could not find any information regarding the Respondent’s activity with the disputed domain name other than the PPC website. The Complainant adds that even if the Respondent’s surname is identical to the disputed domain name, provided that the WhoIs is accurate, this does not give the Respondent the right to profit from the Complainant’s trademarks by using the disputed domain name for a PPC website.
The Complainant describes the history of use of the disputed domain name by reference to its screenshots and submits that the content of the website does not demonstrate use of the disputed domain name in connection with a bona fide offering of goods or services. The Complainant notes that when “Riemann” and “Spain” are entered into the Google search engine, most of the results point to the Complainant or its business activities.
The Complainant submits that it is not legitimate to register a domain name and use it for a PPC website where such domain name includes a trademark and has no dictionary or descriptive meaning and where the sponsored links have no relationship to any alleged descriptive meaning of the domain name. The Complainant adds that the Respondent has been granted an opportunity to present an argument that it has rights in the disputed domain name but has failed to do so, noting that there is a possibility that the information on the WhoIs record might be false.
The Complainant asserts that its business presence on the European continent, where the Respondent is based, for 30 years and the fact that some of its trademarks and domain names predate the creation date of the disputed domain name strongly indicate that the Respondent was aware of the Complainant’s trademark at the time when the disputed domain name was created. The Complainant adds that such knowledge can also be inferred from the fact that the PPC website associated with the disputed domain name has made reference to the Complainant’s trademarks since at least 2006. The Complainant asserts that the PPC links on such website refer not only to the Complainant’s products but also to the Complainant’s competitor and argues that this conduct constitutes bad faith.
The Complainant submits that the Respondent’s failure to reply to its cease-and-desist notice and follow up correspondence can be relevant to a finding of bad faith and notes that this has been found in a previous case to be an aggravating factor in bad faith conduct. The Complainant asserts that the Respondent is entirely and solely responsible for the content of its website including all resulting third party sites and advertisements which result therefrom.
The Respondent states that he wishes to defend his ownership of the disputed domain name, adding that such ownership is lawful and that he registered it in 1998/9 as a means to keep in touch with family and friends before living on five continents in the last 20 years. The Respondent submits that he only uses an email server with the disputed domain name and has no website uploaded.
The Respondent states that he chose the disputed domain name because it is his surname, adding that before receiving the Complaint he was unaware of the existence of the Complainant in Denmark. The Respondent notes that he was unaware that it was legally possible to register a common Germanic surname as a trademark, adding that such marks would not be legally valid in Germany where the Respondent says he resided when he registered the disputed domain name. The Respondent submits that, as a German citizen with the surname Riemann, he has exactly the same rights to register the disputed domain name as a Danish citizen of the same surname.
The Respondent submits that his legitimate interests in respect of the disputed domain name are of a social nature and that in light of his frequent movement over the last 20 years he used the disputed domain name and its email address as a fixed point of contact for a vast network of people.
The Respondent says that the disputed domain name is his only domain name, held for almost 20 years and that it is for his personal use, has no commercial application and no monetary interests. The Respondent notes that bad faith cannot therefore be assumed.
The Respondent offers to upload publicity for the Complainant to his unused webserver in order to resolve the dispute amicably, provided that the Complainant agrees to pay a small annual fee for maintenance and upkeep.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Preliminary Issues – Consent to Transfer and Complainant’s Comments on Procedural Order No. 1
The Respondent failed to respond to Procedural Order No. 1. The Panel therefore addresses the Respondent’s apparent consent to transfer, which is made in the Response, in the absence of any further explanation from the Respondent. The Panel notes from the general tenor of the Response that the Respondent seeks to resist the remedy sought by the Complainant. In other words, the bulk of the Response is almost entirely inconsistent with any consent to transfer. For that reason, the Panel will disregard the Respondent’s consent to transfer on the basis that this was most probably made in error.
While the Respondent did not respond to the calls in Procedural Order No. 1, the Complainant produced extensive comments along with multiple additional annexes. In so doing, the Complainant appears to have misunderstood the Panel’s request for “relevant comment” in the Procedural Order No. 1. This was intended by the Panel to provide an opportunity for the Complainant to be able to comment upon any material produced by the Respondent directly related to the calls for additional information in the Procedural Order No. 1. It was neither intended for the Complainant to make comments in the absence of any being received from the Respondent nor for the Complainant to take the opportunity to address certain matters raised in the Response.
Proceedings under the Policy are expected to be conducted expeditiously in accordance with paragraph 10(c) of the Rules. In the present case, there has already been a delay occasioned by Procedural Order No. 1 and the Panel does not consider it appropriate to delay matters further as it would require to do in order to invite the Respondent to answer the extensive comments filed by the Complainant (see paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) “Panels which accept a supplemental filing from one side typically allow the other party the opportunity to reply to such supplemental filing”). In these circumstances, the Panel will disregard the Complainant’s comments on Procedural Order No. 1.
B. Identical or Confusingly Similar
There are two parts to the inquiry under this element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to such trademark.
The Panel is satisfied that the Complainant has rights in the RIEMANN trademark as demonstrated, for example, by the European Union trademark described in the factual background section above. The Panel therefore turns to the second part of the inquiry and notes that the alphanumeric string in the second level of the disputed domain name incorporates the Complainant’s trademark in its entirety with no additional elements. This is sufficient for the Panel to find identity between the disputed domain name and the Complainant’s trademark as the applicable top-level suffix in a domain name, in this case “.net” is typically disregarded under this test (see paragraph 1.2 of the WIPO Overview 2.0).
Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has made out such a prima facie case by reference to its submissions that the Complainant could find no information about the Respondent other than the PPC website, that such website does not constitute a bona fide offering of goods and services, and that even if the Respondent’s surname is identical to the disputed domain name this does not give the Respondent the right to profit from the Complainant’s trademarks by virtue of the PPC website.
In these circumstances, the burden of production shifts to the respondent to bring forward evidence of its rights or legitimate interests in the disputed domain name. The essence of the Response is that the Respondent possesses such rights or legitimate interests by virtue of the fact that the disputed domain name is the same as the Respondent’s surname.
There are examples in past cases under the Policy where the apparent inclusion of a complainant’s trademark within a domain name has upon investigation and evidence turned out to be the genuine personal name of the respondent (see, for example, G. A. Modefine S.A. v. A.R. Mani, WIPO Case No. D2001-0537). Panels have determined that even where a complainant possesses trademarks, respondents do not require license or authorization to use family names in a domain name genuinely intended for noncommercial use (see Mathiesen S.A.C. v. Allan Mathiesen, WIPO Case No. D2009-0087).
In the present case, there are two main issues with the Respondent’s position. The first is that the Respondent has only provided a bare assertion that the disputed domain name is his personal name and nothing more, despite having received two opportunities to substantiate his claims, namely first in the Response and secondly, in answer to Procedural Order No. 1. The Panel is mindful of the fact that it would not have been difficult for the Respondent to provide suitable evidence supporting both the alleged surname connection and the claimed email use of the disputed domain name if this existed. In the absence of such evidence, the Panel cannot accept the Respondent’s assertions regarding a surname as providing a basis for a claim to rights and legitimate interests in the disputed domain name. A genuine connection to the name concerned needs to be demonstrated, and typically suitable evidence is produced by respondents making this claim (for example, in Mathiesen S.A.C. v. Allan Mathiesen, supra, the respondent is said to have submitted “substantial documentary proof” and in G. A. Modefine S.A. v. A.R. Mani, supra, the panel noted that the respondent had filed “detailed evidence…and this matter is not in dispute”). If such evidence were not required by panels under the Policy, it would be relatively straightforward for those seeking to avoid the thrust of the UDRP simply to place any suitable or apparently relevant personal name corresponding to a targeted trademark in the registrant field of the WhoIs record and then make unsupported assertions regarding such name, despite having no real ability to substantiate a connection with it.
The second issue is that, as discussed in G. A. Modefine S.A. v. A.R. Mani, supra, even if a respondent can demonstrate that the domain name in question constitutes their personal name, there must be no countervailing evidence that that personal name has merely been adopted opportunistically by the respondent in order to give a spurious air of legitimacy to an otherwise questionable registration. In the present case, the evidence does not demonstrate that the disputed domain name has been used, for example, as a website of a personal nature for the Respondent’s family (such as in Gail Guarulhos Indústria e Comércio Ltda. v. Kevin Watson, WIPO Case No. D2006-0655). On the contrary, the Complainant’s screenshot evidence, which is not directly addressed by the Respondent in the Response, demonstrates that at least since 2006 the disputed domain name has been used for a website which specifically targets the Complainant’s trademark by way of PPC links. This is not noncommercial family-related use consistent with the Respondent’s submissions but is at least potentially countervailing evidence of opportunistic adoption of the disputed domain name given the evident capitalization on trademark value. The Panel adds that it considers it significant that when the Complainant wrote to the Respondent about the website, the Respondent did not reply and did not remove the PPC links, albeit that he now offers to publish a suitable website provided that the Complainant covers his costs.
In all of these circumstances, the Respondent has failed to rebut the Complainant’s prima facie case and accordingly the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
In the present matter, the Complainant’s case focuses squarely on the PPC use of the disputed domain name for over a decade. The Panel accepts the Complainant’s submissions and evidence that since 2006 this content has appeared on the website associated with the disputed domain name and has targeted the trademark value of the Complainant’s mark both by reference to the Complainant’s products and to the Complainant’s competitors. It appears to the Panel that it is possible that the PPC content is not directly generated by the Respondent but may be generated by the Registrar in light of the use of the Registrar’s branding on the website associated with the disputed domain name. This is however by no means conclusive and it is notable that the Respondent does not attempt to engage with the Complainant’s submissions regarding PPC content nor to explain its presence on his website. In any event, a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name even if not exercising direct control over such content. Any third party content, whether generated by the Registrar or otherwise, can form a basis for finding bad faith in terms of the Policy (on this topic, see paragraph 3.8 of the WIPO Overview 2.0). As noted in the preceding section, the Respondent’s use of the disputed domain name in this manner has continued notwithstanding the Complainant writing to the Respondent to request its removal. These circumstances are therefore reasonably supportive of the notion that the disputed domain name has been registered and is being used in bad faith.
It is however worth analyzing the question the question of registration in bad faith to a further extent given that the disputed domain name does not appear to have been exclusively used for PPC since it came into existence. The disputed domain name was created in 1999. While this post-dates the registration of the Complainant’s European Union trademark by only a year, the Complainant notes that it had been in business in Europe and selling its products for a substantial period and thus that it would be reasonable to infer that the Respondent may have registered the disputed domain name with a bad faith intent to target the Complainant. The effect of the Complainant’s submissions is that this inference is then fortified by the subsequent use of the disputed domain name in connection with PPC. Despite all of this having been placed before the Respondent, there is a notable lack of anything in the Response to address the PPC usage or, as noted above, to vouch the alleged surname explanation for the Respondent’s selection of the disputed domain name. In the absence of a substantive case from the Respondent, the Panel is prepared to accept the Complainant’s construction, while noting that the matter is quite finely balanced due to the time delay before the PPC website appeared.
The Panel notes in passing that if it is the case that the Respondent is legitimately connected with the Riemann surname and that he registered the disputed domain name for family email purposes it is unfortunate to say the least that he did not make any attempt to vouch this and more importantly to suppress or remove PPC content if its display has indeed been inadvertent. Either or both of these circumstances might have led to a somewhat different construction being made by the Panel on the issue of registration and use in bad faith in this case. Nevertheless, the absence of a credible and proper foundation for the Respondent’s averments is very significant and the present finding follows as a direct consequence.
In all of these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <riemann.net> be transferred to the Complainant.
Andrew D. S. Lothian
Date: March 13, 2017