ADMINISTRATIVE PANEL DECISION
Georg Streit v. HLP General Partners Inc
Case No. D2008-1145
1. The Parties
The Complainant is Georg Streit, Vienna, Austria, of Austria, represented by Höhne, In der Maur & Partner Rechtsanwälte GmbH, Austria.
The Respondent is HLP General Partners Inc, Santa Monica, California, United States of America, of United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2008. On July 29, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On July 29, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 6, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2008.
The Center appointed John Swinson as the sole panelist in this matter on September 12, 2008. 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.
The Complainant is the proprietor of a registered Trade Mark for the word FEMJOY which was registered on May 8, 2007 with the United States Patent and Trademark Office.
The “www.femjoy.com” website is titled “FEMJOY Pure Nudes - The famous pure nude art site” and is said to be “a feast for the eyes!”.
The disputed domain name was first registered on November 22, 2004 and currently resolves to a website for “MET-ART fine photography”.
5. Parties’ Contentions
The Complainant makes the following contentions:
The disputed domain name is confusingly similar to the Complainant’s trade mark registration for the word FEMJOY. The only difference between the Complainant’s trade mark and the disputed domain name is the addition of the number “1” to “femjoy” in the disputed domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. The Respondent intends to misleadingly divert consumers to its website and intends to tarnish the Complainant’s trade mark.
The Respondent registered, and is using, the disputed domain name in bad faith.
The Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant’s licensee who uses the trade mark in its domain name and who is a competitor of the Respondent.
The Respondent is using the disputed domain name to attract Internet users to the Respondent’s website or other on-line location for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed in his claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The fact that the Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant as the onus of proving these elements is on the Complainant. However, the failure of the Respondent to file a Reply results in the Panel drawing certain inferences from the Complainant’s evidence: see CPP,Inc. v. Virtual Sky, WIPO Case No.D2006-0201.
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights, and the disputed domain name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of a registered trade mark containing the word FEMJOY (see United States Trade Mark Registration No. 3,239,992 registered on May 8, 2007).
The disputed domain name incorporates the Complainant’s registered trade mark in its entirety. The addition of “1” after the mark does not distinguish the disputed domain name from the Complainant’s trade mark. Numerous WIPO panel decisions have established that the mere addition of a “1” does not alter the fact that a domain name is confusingly similar to a mark: see Hoffmann-La Roche Inc. v. WhoisGuard, WIPO Case No.D2008-0916.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
To succeed on this element, a complainant must make out an initial prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a 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 legitimate non-commercial 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.” (Policy, paragraph 4(c)).
It is the consensus view of WIPO panels that the threshold for the Complainant to prove a lack of rights or legitimate interests is low, and that, once the Complainant has made out a prima facie showing on this element, the burden of production shifts to the Respondent (see paragraph 2.1 of the WIPO Decision Overview, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No.D2007-1141 and Ustream.TV, Inc. v Vertical Axis, Inc., WIPO Case No.D2008-0598).
There is no evidence that the Respondent is commonly known by the disputed domain name, the word FEMJOY or anything similar. It can be inferred from the making of the Complaint itself that the Complainant has not licensed, authorized or otherwise consented to the Respondent using the FEMJOY mark in the disputed domain name.
The Complainant contends that he has granted a license to an unnamed third party to use the FEMJOY mark in the domain name . It appears, from a comparison of the website at the disputed domain name and the website at “www.femjoy.com” that the services offered by the Respondent are competitive with, or of the same nature as, those offered at “www.femjoy.com”. The Panel therefore infers that the Respondent intends to misleadingly divert Internet users looking for the website at “www.femjoy.com” to the Respondent’s website for financial gain.
The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interest in the disputed domain name.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The onus of proving that the Respondent registered and used the disputed domain name in bad faith is on the Complainant.
The disputed domain name was registered on November 22, 2004. The Complainant did not register the FEMJOY trademark with the United States Patent and Trademark Office until May 8, 2007. The Certificate of Registration from the United States Patent and Trademark Office indicates that the U.S. trade mark registration has a priority date of April 15, 2005 and that the Complainant is the owner of International Registration 0869550 dated October 6, 2005.
No evidence was submitted by the Complainant as to exactly when the Complainant first used or licensed the use of FEMJOY. Nor did the Complainant submit any evidence as to the reputation of the mark.
It is commonly understood, as demonstrated by the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” that “when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.” The Complainant has not demonstrated in these proceedings that he had trade mark rights in FEMJOY which existed before November 22, 2004 (the date the disputed domain name was registered) or that the Respondent was aware of the Complainant prior to the registration of the disputed domain name.
The website “www.femjoy.com” states that “[t]he idea for FEMJOY.com was created in 2003 and launched 2004 by a small group of international people”. The website does not state when the “idea for FEMJOY” was launched although the domain name was registered on February 4, 2004. The Complainant itself has not provided evidence to the Panel that he had an interest in the domain name, was involved in the creation of the “idea for FEMJOY” or otherwise used the FEMJOY trade mark at that time. The Complainant contends that he licensed the use of the FEMJOY trade mark to the owner of the domain name but has not provided specific information about when he granted that license or what rights he used to assert that he had an interest in the FEMJOY trade mark to the operators of “www.femjoy.com”. Indeed, in his application to the United States Patent and Trademark Office, the Complainant does not provide a date of first use of the trade mark.
The Panel is not satisfied that the Complainant has in these proceedings met his burden of proof in respect of bad faith registration. The Panel finds that the Complainant has not sufficiently demonstrated that the disputed domain name was registered in bad faith.
For all the foregoing reasons, the Complaint is denied.
Date: September 26, 2008