WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Christian Schaar and Ingo Schaar v. WhoisGuard Protected, WhoisGuard, Inc. / Germain DIMICOLI
Case No. D2019-3079
1. The Parties
The Complainant is Christian Schaar and Ingo Schaar, Germany, represented by BPM Legal., Germany.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Germain DIMICOLI, Thailand.
2. The Domain Name and Registrar
The disputed domain name <skan-hus.info> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2019. On December 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 13, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 17, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 19, 2019.
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 December 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2020. The Respondent did not submit any response. However the Center received an informal email from the Respondent on December 27, 2019, stating: “The trademark skan-hus was registered this month whereas the domain name was purchased in February this year... I do understand the conflict about the domain name, obviously, and of course am ready to resolve the conflict in no time by requesting to all parties involved here to CANCEL AND CLOSE the domain skan-hus.info”. Following this email the Complainant requested a suspension of the proceedings for one month. On January 7, 2020, the Center notified the suspension. On January 16, 2020, at the Complainant’s request the Center reinstituted the proceeding. Accordingly, the Center sent the Commencement of Panel Appointment Process on January 24, 2020.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 30, 2020. 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 relevant facts are straightforward and can be summarized as follows.
The Complainants are the managing directors of Skan-Hus Projekt GmbH, a German planning office for wooden houses. This company was formed in 2018 but there is a corporate history dating back to 2006 where predecessors in title used the term “skan-hus” for various services associated with the building of wooden Scandinavian style houses. The term “skan-hus” is an invented word play between the beginning of the German word “skandinavisches” which means “Scandinavian” and the Swedish word for house “hus”.
The Complainants are the owner of the German trademark No. 30662748 which was applied for on October 13, 2006, and registered on December 19, 2016. This trademark is for a design featuring an image of a moose with the prominent words SKAN-HUS above it and a smaller text below in German. This trademark is referred to in this decision as the “SKAN-HUS trademark”
The Disputed Domain Name was registered by the Respondent on February 13, 2019. At the time of this decision it does not resolve to any active webpage. The Complainants’ evidence shows that it previously resolved to a website containing material critical of the Complainants and their company (the “Respondent’s Website”).
5. Parties’ Contentions
The Complainants case is set out at some length and cites numerous previous WIPO cases. The Panel does not consider it necessary to repeat that detail here. In summary the Complainants’ case is as follows:
- The Complainant says that the Disputed Domain Name is confusingly similar to the SKAN-HUS trademark in that it simply comprises the words which are the dominant part of that trademark.
- The Complainant says that the Respondent has no rights or legitimate interests in the term SKAN-HUS or the SKAN-HUS trademark.
- The Complainants say that the Respondent’s registration and use of the Disputed Domain Name is in bad faith. They say the term “skan-hus” has no other meaning except in relation to their business and the Disputed Domain Name has deliberately been chosen for that reason. They say the material on the Respondent’s Website is untrue and defamatory. They also say that even if the material was true and/or was protected by free speech rights that does not entitle the Respondent to use a domain name which clearly gives Internet users the impression it is that of the Complainants or their company.
- The Complainants also say that the second Respondent, Germain DIMICOLI, has given an address which is that of a hotel false and that its name is likely fictitious.
The Panel will in its discretion treat the Respondent’s email to the Center (see above) as a response. It would appear to be the Respondent’s case that it registered the Disputed Domain Name before the Complainant’s trademark was registered (although that is factually incorrect – the Disputed Domain Name was registered on February 13, 2019, whilst the Complainants’ trademarks was registered on December 19, 2016) and that there is no conflict between the Disputed Domain Name and the SKAN-HUS trademark.
6. Discussion and Findings
The Panel notes that no formal Response has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any formal Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909). The Panel will in any event treat the Respondent’s informal email as a Response.
The Panel also notes this is a case where one Respondent (“WhoisGuard Protected, WhoisGuard, Inc”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel considers the substantive Respondent to be Germain Dimicoli and references to “the Respondent” are to that person.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with 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;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has rights in the SKAN-HUS trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. This is a device mark but features prominently as part of the registered device the words “SKAN-HUS” and in these circumstances the Panel concludes the Disputed Domain Name is similar to the trademark. Similarity between a domain name and a device mark which includes words or letters is a readily accepted principle where the words or letters comprise a prominent part of the trademark in question – see for example EFG Bank European Financial Group SA v Jacob Foundation WIPO Case No. D2000-0036 and Sweeps Vacuum & Repair Centre, Inc. v. Nett Corp. WIPO Case No. D2001-0031. It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.info”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainants’ trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Panel finds the SKAN-HUS trademark is, on the evidence before the Panel, a term in which the Complainants has developed a significant reputation and where there is no evidence of anyone else using that term.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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 Complainants have not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use SKAN-HUS trademark. The Complainants have prior rights in the SKAN-HUS trademark which (contrary to the Respondent’s assertion) precede the Respondent’s acquisition of the Disputed Domain Name. The Complainants have therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).
The Panel is not in a position to assess the truth or otherwise of the material contained on the Respondent’s Website. Conceivably, had a formal response been filed, the Respondent might have suggested that the Respondent’s Website was a bona fide criticism site and/or was an exercise of some form of free speech right. That seems to the Panel the only conceivable argument that could be advanced in support of a legitimate interest. The Panel has considered this and had regard to the position set out in WIPO Overview 3.0, section 2.6, as follows:
“2.6 Does a criticism site support respondent rights or legitimate interests?
As noted above, UDRP jurisprudence recognizes that the use of a domain name for fair use such as non-commercial free speech would in principle support a respondent’s claim to a legitimate interest under the Policy.
2.6.1 To support fair use under UDRP paragraph 4(c)(iii), the respondent’s criticism must be genuine and noncommercial; in a number of UDRP decisions where a respondent argues that its domain name is being used for free speech purposes the panel has found this to be primarily a pretext for cybersquatting, commercial activity, or tarnishment.
2.6.2 Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e. <trademark.tld> (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation. In certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.
2.6.3 Where the domain name is not identical to the complainant’s trademark, but it comprises the mark plus a derogatory term (e.g., <trademarksucks.tld>), panels tend to find that the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false. Some panels have found in such cases that a limited degree of incidental commercial activity may be permissible in certain circumstances (e.g., as “fundraising” to offset registration or hosting costs associated with the domain name and website)”.
In the present case the Panel notes that the Disputed Domain Name simply repeats the dominant part of the Complainants’ trademark, the words “skan-hus”. Accordingly the Panel considers that section 2.6.3 does not apply and there exists an “impermissible risk of user confusion” similar to that described in section 2.6.2 of WIPO Overview 3.0 (above). Accordingly, the Panel does not consider that any legitimate interest arises in this respect.
The Panel notes that had the Disputed Domain Name combined the SKAN-HUS trademark with a manifestly derogatory term different considerations would have arisen (see section 2.6.3 of WIPO Overview 3.0, above) and the result would not necessarily have been the same.
The Panel therefore finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present case, it was manifestly a deliberate decision by the Respondent to use the term “skan-hus” in the Disputed Domain Name. This was clearly part of a deliberate plan to publish material that was allegedly critical of the Complainants and their company. The Panel has no means of assessing whether or not any of the allegations contained in the content of the Respondent’s Website are true. The Panel does not consider that any of this matters here. Whether or not the Respondent (whoever it is) is entitled to criticize the Complainants or their company by publicizing material such as that which is found on the Respondent’s Website is not a matter for the Policy. What however the Policy is directed at is using, as part of this activity, a domain name which is confusingly similar to the Complainants’ trademark and which would be likely to be taken to be that of the Complainants or their company. Such behavior is misleading and likely to attract visitors who are searching for the Complainants or their company. That, in the opinion of the Panel, amounts to bad faith registration and use.
The Panel again notes that had the Disputed Domain Name combined the SKAN-HUS trademark with a manifestly derogatory term different considerations would have arisen and the result would not necessarily have been the same.
Finally the Panel notes the Respondent has not filed a formal Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <skan-hus.info> be transferred to the Complainants.
Nick J. Gardner
Date: February 11, 2020