WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Escrow Agent GmbH v. WhoIs Agent, Whois Privacy Protection Service, Inc. / Devises Hunter
Case No. D2018-0281
1. The Parties
1.1 The Complainant is Escrow Agent GmbH of Munich, Germany, represented by Beiten Burkhardt, Germany.
1.2 The Respondents are WhoIs Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America ("United States") and Devises Hunter of Mount Holly, North Carolina, United States.
2. The Domain Name and Registrar
2.1 The disputed domain name <escrow-gmbh.com> (the "Domain Name") is registered with eNom, Inc. (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 8, 2018. As at about this time the publicly available WhoIs details for the Domain Name recorded the registrant of the Domain Name to be the Registrar's privacy service. On February 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 8, 2018, the Registrar transmitted by email to the Center its verification response disclosing the underlying registrant for the Domain Name to be "Devises Hunter" and providing alternate contact information in the United States. The Center sent an email communication to the Complainant on February 15, 2018, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint.
3.2 The Complainant filed an amended Complaint on February 20, 2018. In that amended Complaint both the Registrar's privacy service and "Devises Hunter" are named as Respondents.
3.3 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").
3.4 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on February 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on March 14, 2018.
3.5 Hereinafter references to the "Respondent" in this decision should be understood as references to the underlying registrant of the Domain Name.
3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 22, 2018. 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
4.1 The Complainant is a company registered in Germany. It offers "trust" related services in connection with M&A, real estate, and other corporate transactions under the names "Escrow Agent GmbH" (i.e., its formal company name) and "Escrow Agent". The extent of that business and how long it has been in operation is unclear but it is claimed, and appears to be uncontested, that by August 2017 that business had been operating for "many years". It uses an address in Munich, Germany.
4.2 The Domain Name was registered on August 25, 2017. It has been used for an English language website that appears to offer insurance and escrow related services. The website claims to belong to a business that has been in operation for over 13 years and uses the exact same address in Munich as that of the Complainant. However, the contact telephone number displayed on the website uses a Belgian country code.
4.3 Further the contact email address revealed when the Registrar's "privacy shield" was lifted from the Domain Name in response to the Center's verification request is identified on at least one third party website as being associated with "419" (i.e., advance fee) fraud.
4.4 As at the date of this decision there is no active website operating from the Domain Name. Instead it is being used to display a holding page with the words "Account Suspended".
5. Parties' Contentions
5.1 The Complainant does not claim any trade mark rights as such. Instead it claims to have rights in its company name as a "commercial designation" under sections 5 and 15 of the German Act on the Protection of Trade Marks and other Symbols. This is said to provide rights "equivalent to a trade mark".
5.2 The Complainant contends that the Respondent has no right or legitimate interests in the Domain Name. In this respect it contends that there is no company registered as "Escrow GmbH" on the German Commercial register, that "Devises Hunter" is not the name of any real company or person, and that the Domain Name is being used for a website to fraudulently imitate the Complainant. It claims that the "state prosecutor has started a criminal investigation against the operator of the website [operating from the Domain Name]". For the same reasons it is said that the Domain Name has been registered and used in bad faith.
5.3 Neither the Respondent nor the Registrar's privacy service replied to the Complainant's contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent the Panel from determining the dispute based upon the Complaint, notwithstanding the failure of any Respondent to lodge a Response.
6.2 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall "draw such inferences therefrom as it considers appropriate".
A. Identical or Confusingly Similar
6.4 The Policy requires complainants to demonstrate "trademark rights" and this has long been established to encompass both registered or unregistered trade mark rights.
6.5 So far as unregistered trade mark rights are concerned, section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the "WIPO Overview 3.0") states as follows:
"To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys."
This section of the WIPO Overview 3.0 also goes on to record that rights equivalent to unregistered trade mark rights can be also be recognised under the Policy where the complainant is based in a civil law jurisdiction, but once again the text focuses on a situation where the complainant has demonstrated that the term relied upon has "acquired distinctiveness/ secondary meaning".
6.6 With this in mind, the way in which the Complainant has structured its case is somewhat problematic. The Complaint is extremely sparse. There is no real description of the extent of the Complainant's business save for a general assertion that it has been in operation for many years. No attempt has been made to demonstrate that the terms "Escrow Agent" or "Escrow Agent GmbH" have acquired any secondary meaning. Further the term "Escrow Agent" comprises two ordinary English words that appear to be entirely descriptive of the Complainant's activities.
6.7 Given this the Panel is not prepared to hold that the Complainant has any relevant rights in the term "Escrow Agent" alone.
6.8 However, this is not the end of the matter. The position so far as the term "Escrow Agent GmbH", is somewhat different. It is obviously a reference to a specific individual company and is likely to be understood as such by persons who see it. The Complainant asserts that this gives it rights in that term as a matter of German law akin to a trade mark. In the absence of argument or evidence to the contrary, the Panel is prepared to accept both that this is correct and that this provides trade mark rights for the purposes of the Policy
6.9 In coming to that conclusion, the Panel is also prepared to draw an analogy with the common law of passing off, and the English law of passing off in particular. It has long been the case that "unregistered trade mark rights" under the English law of passing off provide sufficient rights for the purposes of the Policy. However, a claim based upon these sorts of rights is not as straight forward as one based upon a registered right.
6.10 The reason for this is that in the case of a registered trade mark, whether the right exists is an objective fact that can be very simply verified by a review of the relevant register. The question of whether there is infringement of that right is then logically distinct.
6.11 In contrast, the English law of passing off works somewhat differently. The question is whether in a particular set of circumstances particular acts constitute an infringement. Although it is often said goodwill in a name or term which is used in a business can provide "unregistered trade mark" rights if it is distinctive of the trade source of the goods, the concept of a distinct and self-contained right is less meaningful. The questions of rights and infringement are more intimately intermingled. If a term is of low inherent distinctiveness, its use may still be protected by the law of passing off but the scope of protection is likely to be far more narrow than is the case with more distinctive terms. This means that where a name of a business is adopted that has low inherent distinctiveness it may provide protection from precise copying from others but not against slight variations (see Office Cleaning Services v. Westminster Window and General Cleaners  63 RPC 39).
6.12 So for example, a company that has adopted a name which contains descriptive terms will find it difficult to use the law of passing off to prevent another entity from using those terms, but it may still be able to bring proceedings if that other entity used the company's full and unique registered name in order to falsely impersonate it. It is likely to have "rights" in its name but the scope of those rights is likely to be limited.
6.13 The Panel is of the view that the Policy is equally flexible when it comes to the question of existence of rights. Where a company is actively trading to at least some degree, the Policy is capable of recognising trade mark rights in that company's full company name if that name as a whole is distinctive (in the sense that the name is likely to be understood as referring to a specific corporate entity) even if large parts of that name are descriptive. However, if only the purely descriptive elements of the company name are reproduced in the domain name it may be that the complainant will have difficulty establishing either confusing similarity or the second or third elements of the Policy.
6.14 Turning to the specific question of confusing similarity in this case, the Domain Name can only be sensibly understood as the English word "Escrow" in combination with the term "GmbH" (i.e., the standard German abbreviation for a private company) and the ".com" top level domain. It therefore does not comprise or incorporate the "mark" Escrow Agent GmbH in its entirety, but simply two parts of that name. Is this sufficient?
6.15 In the Panel's opinion this is a borderline case, even bearing in mind that the first element of the Policy is often said to provide a standing or threshold requirement. However, the Panel concludes that the Complainant has just got over that threshold. A significant factor here is how the Domain Name has been used. Although generally the content of the website operating from a domain is usually disregarded by UDRP panels when assessing confusing similarity, the website may evidence that the respondent sought to target the complainant's trade mark through the domain (see sections 1.7 and 1.15 of the WIPO Overview 3.0). As this Panel expressed it in RapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010-1089:
"the test of 'confusing similarity' is an objective one and not one of the Respondent's subjective intent. But that does not mean that in an appropriate case evidence of what a Respondent's subjectively intended cannot be evidence of how the mark is objectively understood".
6.16 As the Panel goes on to describe later on in this decision, it has reached the conclusion that the Domain Name was registered and has been used to deliberately and fraudulently impersonate the Complainant. Given this, the Panel concludes that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests and Bad Faith Registration and Use
6.17 It is customary for panels under the Policy to consider the issues of rights or legitimate interests and registration and use in bad faith in turn. However, in a case such as this it is more convenient to consider those issues together.
6.18 The Panel accepts that the Domain Name has been used without the Complainant's consent to falsely impersonate the Complainant with some fraudulent purpose in mind.
6.19 The Respondent has not used the Complainant's exact name, but instead a similar name; i.e., "Escrow GmbH". There is also no allegation that the form of the website that operated from the Domain Name copied that of the Complainant. But the Panel accepts the Complainant's contentions that no real business exists with the name "Escrow GmbH" and that this is not the website of any real business offering "escrow" related services. A search of the German Company register suggests that no company has been registered in Germany under the name "Escrow GmbH". The Respondent has not claimed that there is any real "Devises Hunter", and the Panel also notes that the courier was unable to deliver the Written Notice of the Complaint in these proceedings to the physical address revealed for the Domain Name registrant once the WhoIs "privacy shield" had been lifted.
6.20 Further, and crucially there is the fact that the website falsely used the Complainant's address. There is no obvious innocent explanation for this. This demonstrates not only that there is unlikely to be any genuine "Escrow GmbH" business, but that that the Domain Name and the website operating from it are being used to impersonate the Complainant in particular. In the absence of any argument or evidence to the contrary, the Panel also accepts that it was with this impersonating use in mind that the Domain Name was initially registered.
6.21 If follows from this that the Domain Name is not one in which the Respondent has a right or legitimate interest and that the Domain Name was both registered and has been used in bad faith. In the circumstances, the Complainant has made out the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.
7.1 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 <escrow-gmbh.com> be transferred to the Complainant.
Matthew S. Harris
Date: April 3, 2018