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Plan.Net concept Spezialagentur fьr interactive Kommunikation GmbH v. Murat Yikilmaz
Case No. D2006-0082
1. The Parties
The Complainant is Plan.Net concept Spezialagentur fьr interactive Kommunikation GmbH, Munich, Germany, represented by a Patent Attorney, Munich, Germany.
The Respondent is Murat Yikilmaz, Istanbul, Turkey, represented by Muscovitch
& Associates, Canada.
2. The Domain Name and Registrar
The disputed domain name <plan.net> is registered with Moniker Online
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2006. On January 19, 2006, and February 3, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On January 21, 2006, and February 3, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Registrar also confirmed that the applicable language of the registration agreement was English.
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 February 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2006. The Response was filed with the Center on February 21, 2006.
The Center appointed Mr. Warwick A. Rothnie as the Sole Panelist in this matter on March 14, 2006. 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.
On March 23, 2006, the Complainant sought to file
a Supplemental Filing purportedly in response to the Response. Subsequently
and also on March 23, 2006, the Respondent through his counsel by email objected
against allowance of the purported Supplemental Filing.
4. Factual Background
The Complainant is the owner of Community Trademark No. 1335280, PLAN NET for a range of goods and services in International classes 9, 35, 36, 38, 41 and 42. These include goods and services related to data processing programs, but also include (amongst others) advertising strategies and campaigns, electronic cash payments, telecommunications and training in the field of marketing.
It is not in dispute between the parties that CTM1335280 was registered with effect from at least July 2003. CTM 1335280, however, claims seniority from an earlier German registration dating from October 19, 1999.
The Respondent registered the subject domain name on May 20, 2003. The domain name resolves to a website which incorporates an eclectic array of links from which the Respondent seeks to derive click through revenues.
It is not in dispute between the parties that the
Respondent has registered a number of domain names which, the Respondent claims
are common English words, such as <intelligence.net>, <dirtbike.com>,
<airplane.com>, <matchmakers.com>, <graph.com> and others.
5. Discussion and Findings
As noted above, the Complainant filed on March 23, 2006, what purports to be a Reply to the Response. The Respondent objects to its admission.
There are now many decisions ruling that a party has no right to make a supplemental filing and that whether such a supplemental filing is admitted is within the discretion of the Panel: paragraph 10 and 12 of the Rules. Generally, the nature of the material sought to be introduced and the explanation for its adduction at a late stage are key considerations in the exercise of that discretion.
The purported Reply was filed more than one month after the Response was filed and nine days after the Panel had been appointed. Neither the Reply nor the correspondence offers any explanation for the delay. The substance of the purported Reply also does not really add much, if anything, to the Complaint. On these grounds, the Panel would ordinarily refuse admission of the purported Reply. It is possible, however, to deal with the points raised in the purported Reply without further delaying the proceeding and, given that, it is not necessary for the Panel to formally exclude the purported Reply from the record.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The 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.
The Panel considers each of these in turn below.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to those rights?
As noted above, the Complainant has proved that it owns a registered CTM for PLAN NET.
The Complainant also claims a “name right” in Plan.Net as this is the first element of its corporate name. The Complaint does not include, however, evidence about how long the corporate name has been in use nor of the extent of any sales and advertising or other promotional activities under or by reference to the sign “Plan.Net”.
The purported Reply baldly asserts “numerous international and national activities” and offers to provide evidence “upon request”. This seriously misunderstands the nature of the dispute resolution process under the Policy. The Policy is intended to establish a quick, efficient and cost-effective dispute resolution process. To this end, it specifies a Complaint as the initiating process and a Response in answer. Further documentation, and consequent delay and increase in expense, are contemplated, if at all, only in exceptional circumstances. The Complainant has the onus of establishing the trademark rights on which it seeks to rely. That is fundamental to its claim. Where the Complainant seeks to rely on an unregistered trademark, therefore, the onus lies on the Complainant to advance evidence supporting that claim. Many decisions of panels have made that clear and, further, explored how that onus may be satisfied. It is not conducive to the achievement of the objects of the Policy for a complainant simply to invite “requests” for evidence on such a fundamental issue.
While other panels have accepted that unregistered rights can arise in civil law jurisdictions, therefore, there is insufficient evidence before this Panel to accept that any unregistered rights have been proved.
The Respondent relies on his registration of the domain name some 2 months prior to the Complainant’s filing of the CTM to defeat the Complainant’s reliance on this trademark. The Respondent’s argument, however, does not take into account the Complainant’s claim to seniority dating back to October 6, 1999. Under art. 34(2) of the Community Trademark Regulation (rendered applicable by art. 35(2)), the owner of the CTM is:
“… deemed to continue to have the same rights as he would have had if the earlier trademark had continued to be registered.”
Accordingly, the Respondent’s challenge on this basis is misplaced.
The Complainant contends that the domain name is identical to its registered trademark as a domain name may not be registered with spaces between the alphanumeric characters. It also argues that the most common representations of the space in such cases are “-” or “.”. Accordingly, the Complainant contends that the domain name is the closest representation to the Complainant’s trademark.
The Respondent relies on the well known line of reasoning that one disregards the gTLD in comparing a domain name to a trademark for the purposes of the Policy. He also relies on the trademark’s elements being mere common words so that very slight differences only will be sufficient to render a domain name outside the scope of confusing similarity.
In effect, the Respondent argues that the comparison should be PLAN (i.e., his domain name without the gTLD) to PLAN NET or, perhaps, PLANNET or PLAN-NET and, having regard to their status as plain English words, the differences between the two are sufficient that they are not confusingly similar.
There is considerable force in this contention. However, this Panel considers
that the real point being made in the decisions such as Rollerblade Inc.
v. Chris McReady WIPO Case No. D2000-0429,
is that the addition of the suffix “.com” or other gTLD, which is
required by the current technical structure of the domain name space, is no
different to the inclusion in a domain name of other generic material. That
is, viewed as a whole, the generic material does not assist in removing the
potential for confusion.
Viewed as a whole, the domain name here <plan.net> has strong potential to lead to confusion. There is both a strong visual and aural resemblance between the domain name and the trademark.
Accordingly, the Panel finds that the domain name is confusingly similar to the Complainant’s proved trademark.
B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case.
The Complainant contends that the Respondent does not have rights or legitimate interests in the domain name as:
(a) the domain name is not derived from the Respondent’s name and the Respondent’s website does not identify any corporate entity using the name;
(b) the Respondent does not have a Community Trademark for “Plan Net”;
(c) the Respondent’s website is an arbitrary collection of links for which there is neither necessity nor justification for the use of <plan.net>; and
(d) generally, there does not appear to be any legitimate interest in using the domain name.
The Respondent points out that he is Turkish and based in Turkey. There is no obligation nor need for him to obtain a Community Trademark. The Respondent also contends that the domain name is simply a generic term “plan” with a gTLD. The Respondent notes that a Google search of “PLAN NET” reveals numerous references including use by various companies in the English speaking world which, the Respondent asserts, have no relation to the Complainant. These include an English company, Plan-net Services plc, which provides a range of IT skills and recruitment services and a Canadian company, Plan:Net Ltd, which provides consultancy services in relation to project management. The purported Reply acknowledges that there are a number of unrelated “Plan Nets” co-existing in the market place.
In its purported Reply, the Complainant contends that its lack of trademark rights in Turkey is irrelevant as, particularly in the context of a gTLD, an international approach must be taken. That much may be accepted and is the basis on which the Complainant has been found to prove the necessary trademark rights.
However, that does not mean that the Complainant’s lack of trademark rights in Turkey or elsewhere is irrelevant. The fact that the Respondent can legitimately use the domain name in many parts of the world, like the fact that a number of other companies also use trademarks, or domain names, similar to the Complainant’s is highly relevant to whether or not the Respondent can have rights or legitimate interests in a domain name, especially where the domain name consists of a plain English word and a gTLD.
The Respondent makes no bones about registering domain names using generic terms and using them to generate commercial revenues, e.g., through “pay per click” advertising. The Respondent argues that, where a domain name consists of a generic term, the first person who registers it in good faith has rights or a legitimate interest in it. In this connection, the Respondent specifically denies any prior knowledge of the Complainant or its trademark. The purported Reply attacks this denial by reliance on the Respondent’s admission that he had rejected an offer from the Complainant to buy the domain name. That rejection, however, could only have been made after the Respondent had registered the domain name, so it does not assist the Complainant here.
While a respondent’s denial of knowledge of trademark rights often lacks credibility where the trademark is extremely well known or there are other compelling factors to the contrary, that is not this situation. The domain name here consists of a very plain English word plus a gTLD and there is nothing particularly about the Respondent’s website that suggests any intention to pass off on the Complainant’s rights or business. This is not a case where the Respondent’s motives can be impugned solely on the papers.
In these circumstances, the Panel is far from satisfied that a prima facie case of the absence of rights or legitimate interests has been made out. Even if it were, the Respondent has sufficiently explained its position. Accordingly, the Panel finds that the Complainant has not established the second requirement under the Policy.
C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate to succeed is that the domain name has been registered and used in bad faith.
In view of the Panel’s conclusion on the second factor, it is not strictly necessary to decide this issue.
For completeness, however, the Panel notes that the Complainant seeks to make out this ground by reference to the number of domain names which the Respondent has registered and which the Complainant contends either have no functioning website or have largely identical content which is said not to be “real content in the sense of manual search results selected by hand”. Accordingly, the Complainant invites the Panel to infer that the Respondent has merely registered the domain name with the intention of selling it or to block others from using it.
In support of this allegation, the Complainant invokes the Respondent’s rebuttal of an invitation to sell on the grounds that some third party had offered a higher price which had been refused.
This last factor has very little weight, if any, as it appears to have been in response to a request initiated by the Complainant and, moreover, was a refusal to sell even at a higher price.
The Respondent, as already noted, freely admits he registers generic terms for the purposes of revenue generation. The problem for the Complainant is that such conduct breaches the Policy only if it is in bad faith and, in the absence of bad faith, the Respondent’s conduct is perfectly legitimate. The difficulty is highlighted by the Complainant’s own acknowledgement that the:
“domain names [registered by the Respondent] must mostly be considered as interesting names in the sense that a lot of companies might be interested in an honest use thereof.”
Here, there is no evidence of bad faith. The Respondent has plausibly in the circumstances of this case and the limited nature of these proceedings as proceedings on the papers denied any foreknowledge of the Complainant’s trademark; the domain name consists of a plain English term and the Respondent has not sought to pass off on the Complainant’s trademark or business.
Accordingly, the Panel would find that this third requirement under the Policy is also not satisfied.
D. Reverse Domain Name Hijacking
The Respondent seeks a finding of Reverse Domain Name Hijacking against the Complainant under paragraph 15(e) of the Rules. It does so on the basis that:
(a) the Complainant “must” have recognised the futility of commencing a complaint under the Policy in respect of a generic word;
(b) the Complainant has made no real attempt to demonstrate common law usage of its claimed trademark in order to demonstrate rights which pre-date the registration of the domain name;
(c) the Complaint was so lacking in merit that it can only have been brought in the hope that no Response would have been filed so that the Complainant would win by default.
The second of these grounds is misplaced in that it fails to take into account the seniority claim of the Complainant’s CTM as already discussed.
The mere failure of the Complaint is not sufficient
to found a finding under paragraph 15(e) of the Rules; such a finding is intended
only for the worst cases where there is bad faith such as malice or dishonesty
or some other abuse of process. See e.g. Jazeera Space Channel TV Station
v. AJ Publishing, WIPO Case No. D2005-0309.
It can be argued that the Complainant ought to have
recognised the very speculative nature of the Complaint in the absence of any
attempt to pass off on the Complainant’s business or otherwise to hold
the Complainant to ransom. In this connection, the Panel gives no weight to
the German nationality of the Complainant as the Complaint is quite clearly
and succinctly written in English. While the case is perhaps approaching the
borderline, however, the Panel ultimately is not prepared to make such a finding
in this case. Here, the Complainant does in fact have a registered Community
Trademark. It is entitled to seek to protect that.
For all the foregoing reasons, the Complaint is denied.
Warwick A Rothnie
Dated: March 24, 2006