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and Mediation Center
Union Tank Eckstein GmbH & Co. KG v. Nicholas Silverstone
Case No. D2004-0847
1. The Parties
The Complainant is Union Tank Eckstein GmbH & Co. KG, Kleinostheim, Germany, represented by Propindus Patentanwдlte Jaeger und Kцster, Germany.
The Respondent is Nicholas Silverstone, Escalon, San Salvador na, El Salvador.
2. The Domain Name and Registrar
The disputed domain name <uta.com> is registered with iHoldings.com Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2004. On October 18, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On October 20, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response. The Center verified that 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 October 21, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 10, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2004.
The Center appointed James McNeish Innes as the Sole Panelist in this matter
on November 25, 2004. 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,
4. Factual Background
The Complainant was founded in 1963 and carries on business under or by the
reference to the name UTA. The Complainant is the owner of trademarks or service
marks registered in numerous countries all based upon the name UTA. The marks
are primarily used for a service card system which provides cashless payment
for on the road supplies of diesel and truck accessories for goods and passenger
transportation companies. The card is accepted by most national and international
oil companies through more than 18000 service stations in at least 36 countries
in Europe including Russian Federation, Belarus, Ukraine and Asia. The Complainant
also provides cashless toll payment services in several European countries.
The Respondent is Mr. Nicholas Silverstone, San Salvador, El Salvador. The disputed
domain name <uta.com> was registered after the above trademark rights
were acquired by the Complainant. The domain name was first registered by the
Respondent on June 19, 2002.
5. Parties’ Contentions
The Complainant’s contentions include the following:
(i) The Complainant wishes to use the domain name <uta.com> as a platform for the international promotion of its goods and services. Its present internet presentation is reduced to the <uta.de> and <uta.fr> ccTLD domain names.
(ii) The suffix “.com” does not add any distinctive function to the domain name. Without the suffix the registered domain name is identical, to or at least confusingly similar to the Complainant’s trademarks.
(iii) At the time the Respondent registered the domain name the Complainant attempted to contact him at his current address in England. The Complainant’s letter was returned marked “gone away”. The letter was not answered by the Respondent or sent to his present address in El Salvador which was possibly his current address at the time.
(iv) The Complainant attempted to contact the Respondent by e-mail. In an e-mail dated July 19, 2002, the Respondent replied that he represented a business called UTA. There is no evidence to support the fact that such a business is carried on.
(v) There is no bona fide offering of goods and services taking place by the Respondent under the domain name.
(vi) The Respondent must have been aware of the trademarks of the Complainant. The Respondent is a former resident of Reading, England where the Complainant offers services using its trademarks.
(vii) The Respondent uses the domain name by way of passive holding.
(viii) There are no trademarks registered in the name of the Respondent either in the UK or USA.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
2) That the Respondent has no rights or legitimate interests in respect of the domain name.
3) That the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name in issue in this case is <uta.com>. The Complainant has to prove that the domain name is identical or confusingly similar to a trademark in which it has rights. From the submissions by the Complainant supported by documentary evidence it follows that the Complainant has registered rights in numerous UTA marks in a number of countries. The disputed domain name is identical or confusingly similar to those marks. The relevant part of the domain name is “uta”. The Panelist finds that this part of the domain name is identical to the marks held by the Complainant.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the Panel to be proved based upon its evaluation of the evidence presented shall demonstrate a Respondent’s rights or legitimate interests in the domain name for the purpose of Paragraph 4(a)(ii):
(i) before any notice to you [respondent]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 [respondent] (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 [respondent] are 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 Respondent has not submitted a Response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent. The administrative panel finds that the Respondent has no rights or legitimate interests in registering the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the domain name must be both
registered and used in bad faith. The Complainant asserts that the Respondent
registered the domain name in bad faith because he must have been aware of the
Complainant’s marks at the time of the registration. The Respondent is
a former resident of Reading, England where the Complainant offered several
services through three service stations at the registration date and for a number
of years before that. The Complainant registered his first UK trademark in 1983.
The Panelist accepts this contention on the basis of the Complainant’s
evidence. It is less clear whether the domain name is being used in bad faith.
There is no evidence supporting actual use on the part of the Respondent. There
is however support for the contention that the domain name is being used by
way of passive holding. Passive holding has been recognized as sufficient in
a number of cases. In particular the decision in Telstra Corporation Limited
v. Nuclear Marshmallows, WIPO Case No. D2000-0003,
cited by the Complainant established the principal that registration of a domain
name together with inaction may amount to registration and use in bad faith.
Each case must depend upon its particular circumstances. Taking into account
the Respondent’s failure to respond, his history of a previous similar
registration (the Respondent was also Respondent in VEDA GmbH v. Mr. Nicholas
Silverstone, WIPO Case No. D2002-1040,
and was in default in that case. The Respondent was obliged to transfer the
disputed domain name <veda.com> to the company Veda GmbH of Germany),
lack of positive action in relation to the website and lack of rights and legitimate
interests in the domain name, the Panelist finds that the Complainant has proven
bad faith in both registration and use on the part of the Respondent.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <uta.com> be transferred to the Complainant.
James McNeish Innes
Dated December 7, 2004