WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TeamViewer GmbH v. Nigel Burke
Case No. DAU2012-0027
1. The Parties
The Complainant is TeamViewer GmbH of Göppingen, Germany represented by Ingo Bednarz, Germany.
The Respondent is Nigel Burke of New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <teamviewer.com.au> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2012. On October 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 30, 2012, 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 .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for a Response was November 27, 2012. The Response was filed with the Center on November 27, 2012.
The Center appointed John Swinson as the sole panelist in this matter on December 11, 2012. 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 Complainant is a German company which provides TeamViewer branded proprietary computer software that is used for remote desktop sharing, online meetings, web conferencing and file transfer between computers.
The Complainant holds the following trade mark registrations and applications for TEAMVIEWER:
- United States Registration No. 3076963, registered April 4, 2006;
- German Registration No. 30454947, registered December 7, 2004;
- Community Trade Mark Registration No. 10435048, registered March 23, 2012;
- Community Trade Mark Registration No. 010975894 (logo mark), registered October 23, 2012;
- Korean Application No. KR 40-2011-0070704), application filed December 15, 2011; and
- Australian Application No. 1490874, application filed May 15, 2012,
(together, the “Trade Marks”).
The Complainant established an Australian corporation under the name “TeamViewer Pty Ltd” in late 2011.
The Respondent is Nigel Burke, an individual residing in Australia. The Respondent provides sports training for skiers and snowboarders.
The Disputed Domain Name was created on November 18, 2010.
5. Parties’ Contentions
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Complainant’s products and services (provided under the Trade Marks) are used on more than 100 million computers in more than 200 countries, including Australia. The Complainant has invested substantial amounts in developing and marketing its products and services.
The Disputed Domain Name is phonetically and visually identical to the Trade Marks.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:
- the Respondent has no trade mark registration for TEAMVIEWER, has no connection with the Complainant and did not receive any license or consent to use the Trade Marks in a domain name or in any other manner;
- the Respondent was, or should have been, aware of the Trade Marks prior to registering the Disputed Domain Name, and the Respondent took advantage of the reputation and goodwill associated with the Trade Marks; and
- the Respondent is not using the Disputed Domain Name to conduct a bona fide business or for noncommercial fair use purposes. At the time of filing, the website at the Disputed Domain Name was inactive, however, before any notice to the Respondent of the subject matter of the dispute, it indexed links to the websites of the Complainant’s competitors.
Registered or Subsequently Used in Bad Faith
The following demonstrate that the Respondent registered and is using the Disputed Domain Name in bad faith:
- the Respondent was aware of the Complainant and the Trade Marks (due to the reputation of both) at the time of registration. The website at the Disputed Domain Name made reference to the Complainant’s product;
- the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the Complainant’s business or activities. The only comment posted on the website at the Disputed Domain Name was “TeamViewer is very expensive software” and “there are alternatives available for a much cheaper price from their competitors”, followed by links to competing products;
- the Respondent registered the Disputed Domain Name with the intention of diverting customers to its website by creating a likelihood of confusion with the Complainant’s name or the Trade Marks;
- the Respondent registered the Disputed Domain Name to prevent the Complainant from reflecting its -Trade Marks in a corresponding domain name. The Respondent is passively holding the Dispute Domain Name and preventing others from putting it to good use; and
- the Respondent failed to undertake adequate searches prior to registering the Disputed Domain Name.
The Respondent makes the following submissions.
The Disputed Domain Name was registered in relation to a skiing and snowboard training system called T.E.A.M. (Technology Enhancing Analyzing Movement) Viewer. This system is used by the Australian Olympic Team and Australian Professional Snowsports Instructors and is unrelated to Internet services.
The Disputed Domain Name was registered before the Complainant established its Australian corporation and before the Complainant applied for its Australian trade mark registration.
The website at the Disputed Domain Name was hacked. The Respondent was not responsible for the content on the website that referred to the Complainant. When the Complainant contacted the Respondent regarding the website’s content, the Respondent fixed the problem the same day. The website is currently inactive because it was not backed up sufficiently and the Respondent lost the entire website when attempting to restore a back up.
The Respondent uses the email and file system associated with the Disputed Domain Name on a daily basis (for example, trainers and students have “teamviewer.com.au” email addresses).
The Respondent has never offered to sell the Disputed Domain Name the Complainant. In fact, the Complainant requested to purchase it for $2500. The Respondent refused this request and informed the Complainant that the Disputed Domain Name was being used.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the Disputed Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(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 or subsequently used in bad faith.
The onus of proving these elements is on the Complainant.
The Panel notes that although the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) are distinct policies, both share substantial similarities. Therefore, the Panel finds it appropriate to refer to UDRP precedent when deciding this case.
A. Identical or Confusingly Similar
The Disputed Domain Name is identical or confusingly similar to the Trade Marks and the Business Name in which the Complainant has rights.
The Respondent does not contest this point.
For the first element, it is not necessary for the Complainant to demonstrate trade mark infringement by the Respondent. It is irrelevant for the first element that the Complainant’s Australian trade mark application was filed after the Respondent registered the Disputed Domain Name.
The Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Paragraph 4(c) lists (non-exhaustively) circumstances that can demonstrate the Respondent’s rights or legitimate in the Disputed Domain Name.
In the Panel’s view, the following establish a prime facie case against the Respondent:
- the Complainant has not licensed or otherwise authorized the Respondent to use the Trade Marks;
- there is nothing to suggest that the Respondent might be commonly known by the Disputed Domain Name; and
- the Respondent has not been making a bona fide use of the Disputed Domain Name. The website that the Disputed Domain Names resolves to is currently inactive and prior to this inactivity the Respondent was using the website to direct business to the Complainant’s competitors.
The burden shifts to the Respondent to provide evidence of his rights or legitimate interests under paragraph 4(c) of the Policy (see eg. Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753).
The Respondent has not provided sufficient evidence to demonstrate his rights or legitimate interests in the Disputed Domain Name.
The Respondent asserts that he is using the Disputed Domain Name in relation to the T.E.A.M. Viewer system. However, the Respondent has provided no evidence of the existence of a computer system under this name. The Panel performed independent research, as it is entitled to (see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)), and could find no references to the T.E.A.M. Viewer system online. Further, the Respondent has provided no evidence of the alleged use of the Disputed Domain Name for email correspondence and filing.
The Respondent did provide some tangible evidence to support certain statements made by the Respondent, but none of this evidence demonstrated use of “T.E.A.M. Viewer”.
In short, there is no evidence before the Panel (other than unsupported statements of the Respondent) to indicate that the Respondent is commonly known by the Disputed Domain Name or used “T.E.A.M. Viewer”.
Under these circumstances, based on the evidence before the Panel, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The second element of the Policy is satisfied.
C. Registered or Subsequently Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Disputed Domain Name has been registered or subsequently used in bad faith.
Prior to the Complainant contacting the Respondent, the Disputed Domain Name resolved to a website which referenced the Complainant’s product, stated it was “very expensive” and directed Internet users to the “alternatives” available at the websites of the Complainant’s competitors. The Panel infers from this use that person who controlled the website at the Disputed Domain Name at this time was aware of Trade Marks.
The Respondent asserts that its website was “hacked” and that the above conduct was not attributable to the Respondent, and that the Respondent’s prior website was unable to be restored. However, the Respondent has not provided any evidence to support this assertion. As such, the Panel is unable to accept these submissions based on the available record.
Accordingly, the Panel infers that the Respondent used the Disputed Domain Name to trade off the value of the Trade Marks. The website operated by the Respondent at the Disputed Domain Name displayed “click through” links to third party websites where alternative software could be presumably be purchased and/or downloaded. The Panel infers that some Internet users, once at the Respondent’s website would have followed the links provided and “clicked through” to the third party websites. It is likely that the Respondent earned “click through” linking revenue as a result. It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the association of the domain name with a complainant, such use amounts to use in bad faith (see eg. Magnamail Pty Limited v. Domain Admin, PrivacyProtect.org ID#10760, Luis Vicente Rodrigues, Grupo JBS SA, WIPO Case No. D2011-2037 and Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396).
The Panel finds the above use of the Disputed Domain Name was in bad faith. Consequently, the Panel does not need to address whether the Respondent’s current passive holding of the Disputed Domain Name also amounts to bad faith use.
The Complainant succeeds on the third element of the Policy.
For all 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, <teamviewer.com.au>, be transferred to the Complainant.
Date: December 19, 2012