WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NFON AG v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / John Smith, NC
Case No. D2021-3744
1. The Parties
Complainant is NFON AG, Germany, represented by Noerr LLP, Germany.
Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / John Smith, NC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <nfon.xyz> (the “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 November 8, 2021. On November 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 9, 2021, 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 Complainant on November 10, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 15, 2021.
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 Respondent of the Complaint, and the proceedings commenced on November 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 15, 2021.
Due to an apparent issue with the notification of the Complaint, the Center’s email was not copied to all of Respondent’s available email addresses. In light of the above, the Center notified Respondent of the Complaint on December 22, 2021 using all available email addresses and granted Respondent a five day period through December 27, 2021 in which to indicate whether it wishes to participate to this proceeding. Respondent did not reply to the Center’s email within this period.
The Center appointed Marina Perraki as the sole panelist in this matter on December 28, 2021. 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 was incorporated on March 16, 2007 and has since grown to be a leading pan-European provider of cloud telephony systems with approximately 450 employees. Headquartered in Munich, Complainant currently counts more than 40,000 customers across 15 European countries. Complainant offers its goods and services under the trademark NFON and also through its website at “www.nfon.com” where it prominently uses its trademark NFON.
Complainant owns a number of trademark registrations for NFON including:
- Swiss trademark registration NFON (word), no. 51772/2008, filed on February 12, 2008 and registered on June 10, 2008, for goods and services in international classes 9, 35 and 38;
- German trademark registration NFON (word), no. 3020090465584, filed on August 5, 2009 and registered on September 8, 2009, for goods and services in international classes 9, 35 and 38; and
- European Union trademark registration NFON (word), no. 006206321, filed on August 17, 2007 and registered on January 4, 2014, for services in international class 35.
The Domain Name was registered on September 9, 2021 and at the time of filing of the Complaint resolved to a website (the “Website”) offering adult content and including a search engine and pay-by-click (“PPC”) redirections to other websites with adult content. It currently leads to an inactive page.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements that Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated rights through registration and use on the NFON trademark.
The Panel finds that the Domain Name is confusingly similar to the NFON trademark.
The Domain Name incorporates Complainant’s NFON trademark in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The generic Top-Level Domain (“gTLD”) “.xyz” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is identical to the NFON trademark.
Complainant has established paragraph 4(a)(i) of the Policy
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to Respondent of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per the Complaint, Respondent was not authorized to register the Domain Name.
There is no evidence that Respondent has been commonly known by the Domain Name.
Moreover, as Complainant has demonstrated, the Domain Name directs Internet users to a website that features adult content.
Furthermore, the Website contains also a search engine and PPC links to third party sites offering also adult content.
The use of a domain name to host a page containing sponsored listings to websites with adult content does not represent a bona fide offering where such links capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users, such as in the case at issue (MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205).
In addition, the Panel notes the nature of the Domain Name, which is identical to Complainant’s NFON trademark, and finds that such composition carries a risk of implied affiliation with Complainant.
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Complainant’s mark NFON had been used and registered at the time of the Domain Name registration by Respondent, therefore the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754).
Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
Moreover, Respondent could have searched different trademark registry databases and would have found Complainant’s prior registrations in respect of the NFON trademark (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
Furthermore, the Domain Name is identical to Complainant’s NFON trademark, which increases the likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Name.
As regards bad faith use, Complainant demonstrated that the Domain Name lead to a website displaying adult content and including PPC links to other sites with such content. Accordingly, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark. It has been recognized that use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith (McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Volkswagen Aktiengesellschaft v. Robert Brodi, WIPO Case No. D2015-0299; SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497; WIPO Overview 3.0, section 3.5).
The Domain Name use furthermore tarnishes Complainant’s reputation by suggesting a connection between Complainant and adult services. This is an indication of bad faith use (WIPO Overview 3.0, section 3.12; Christian Dior Couture v. Identity Protection Service / Tom Birkett, WIPO Case No. D2014-1053).
Lastly, the Domain Name was registered with a privacy shield service to hide the registrant’s identity. Respondent’s concealment of the Domain Names holder’s identity through use of a privacy shield is further evidence of bad faith (Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696).
Subsequently, Respondent’ s details appeared under the name “John Smith” and “NC”. As Complainant demonstrated, the contact information provided for Respondent corresponds to the information used by Name Cheap as an example in its instructions to API users. Complainant’s search for Respondent’s email-address “[...]@rambler.ru” also did not provide any results. The use of the name “John Smith” in combination with an inexistent address apparently commonly used by the Registrar as well as the use of the telephone number of the Registrar and an inapplicable email address are further indications of bad faith. Finally, as Complainant demonstrated, the contact information provided has in the past already been used for scamming purposes.
The Domain Name currently leads to an inactive website. The non-use of a domain name does not prevent a finding of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000‑0003; WIPO Overview 3.0, section 3.3).
Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
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 <nfon.xyz> be transferred to the Complainant.
Date: January 11, 2022