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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Centron GmbH v. Michele Dinoia

Case No. D2006-0915

 

1. The Parties

The Complainant is Centron GmbH, Germany, represented by Schneiders & Behrendt Rechtsanwдlte Patentanwдlte, Germany.

The Respondent is Michele Dinoia, Italy, represented by Avvocato Valerio Donnini, Italy.

 

2. The Domain Name and Registrar

The disputed domain name <centron.com> (the “Domain Name”) is registered with Tuonome.it srl (the “Registrar”), which has a business address in Chiesina U., Italy.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2006. On July 20, 2006, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On July 20, 2006, Dotster, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the details for the administrative, billing, and technical contacts. 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 Respondent of the Complaint, and the proceedings commenced on July 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2006. Respondent filed his Response with the Center on August 14, 2006.

On August 10, 2006, Complainant notified the Center that the Registrar appeared to have been changed to Tuonome.it.srl. After a number of subsequent communications, the Center confirmed that the Domain Name had been transferred to this new registrar, and also confirmed the contact details of the registrant (who continued to be Respondent) and that the Policy applies under the registration agreement. On October 6, 2006, Complainant submitted an Amendment to the Complaint to reflect the change in registrar to Tuonome.it.srl.

The Center appointed Grant L. Kim as the sole panelist in this matter on October 24, 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 November 3, 2006, the Panel issued Procedural Order No. 1, requesting Complainant to submit, by November 15, 2006, a Supplemental Statement addressing the following issues, with copies of supporting evidence: (1) the relevance, if any, of Respondent’s registration of the Domain Name before Complainant’s registration of the trademark; (2) the dates that Complainant registered and first began using Complainant’s domain names; (3) any other evidence that Complainant was publicly known by and using the CENTRON mark before Respondent’s registration of the Domain Name; (4) the significance, if any, of the fact that between 1998 and some time in 2002 or 2003, the Domain Name had been used by a New Jersey corporation named Centron Corporation.

Procedural Order No. 1 also stated that Respondent may submit a Response to Complainant’s Supplemental Statement, attaching any supporting evidence, by November 24, 2006. Pursuant to this Order, Complainant submitted its Supplemental Statement on November 15, 2006, and Respondent submitted a Response to the Supplemental Statement on November 24, 2006.

 

4. Factual Background

Complainant Centron GmbH is a limited liability company incorporated under German law in 1999, with its principal place of business in Bamberg, Germany. Complainant is the registered owner of German trademarks for CENTRON YOUR COMMUNICATION ADVANTAGE and CENTRON.

The trademark application for CENTRON YOUR COMMUNICATION ADVANTAGE was filed on November 30, 1999, and granted registration on July 31, 2000. (Complaint, para. 11 and Annex 4.) This mark is registered in International Class 038, which includes “telecommunication, providing of web space for internet presentations, registration of national and international domain names, providing of internet access for private and commercial customers, designing of internet presentations.” (Id.)

The CENTRON trademark application was filed on January 23, 2004, and was granted registration on April 5, 2004. The mark covers goods and services in International Classes 009, 038, and 042, including, inter alia, domain name registration, web hosting, providing of internet access, providing of servers, forwarding of e-mails, as well as SSL encryption. (Complaint, para. 11 and Annex 5.)

Respondent registered the Domain Name <centron.com> with the Registrar, Dotster, Inc., on July 1, 2003. On July 18, 2006, the Domain Name <centron.com> was requested for transfer and is now registered at Tuonome.it.srl as of August 7, 2006.

 

5. The Parties’ Contentions

A. Complainant’s Contentions

Complainant states that it has been doing business under its company name “Centron GmbH” since its date of incorporation in 1999 and offers, among others, services of domain name registration, web hosting, providing of internet access, providing of servers, forwarding of e-mails, as well as SSL encryption. Complainant bases its complaint on both the CENTRON YOUR COMMUNICATION ADVANTAGE and CENTRON marks.

Complainant claims that Respondent’s business model involves registering numerous domain names and either selling the names or using them to direct web traffic to cost-per-click search engine and directory websites allowing internet users to carry out searches by predefined categories or by inserting search terms into an input box.

Complainant requests a decision requiring the Registrar to transfer the Domain Name <centron.com> to Complainant pursuant to paragraph 4(i) of the Policy.

Complainant asserts that Respondent’s use of the <centron.com> Domain Name satisfies the standard established in paragraph 4(a) of the Policy because (1) the Domain Name is confusingly similar to Complainant’s CENTRON YOUR COMMUNICATION ADVANTAGE and CENTRON trademarks; (2) Respondent has no rights or legitimate interests in the Domain Name; and (3) the Domain Name has been registered and is being used in bad faith.

Complainant contends that its rights in the CENTRON mark are demonstrated by Complainant’s ownership of German trademark registrations for CENTRON YOUR COMMUNICATION ADVANTAGE and CENTRON. Complainant asserts that it has actively used the CENTRON mark to promote its computer products and services since the incorporation of the company in 1999. (Complaint, para. 11.)

In its Supplemental Statement, Complainant has submitted evidence that it registered several “Centron” domain names before Respondent registered the <centron.com> Domain Name on July 1, 2003. For example, Complainant registered: <centron.net>, on February 15, 1998; <centron.biz> on November 7, 2001; <centron.at>, on October 28, 2002; and <centron.info>, on October 5, 2001.

Complainant asserts that Respondent’s Domain Name <centron.com> is confusingly similar to Complainant’s CENTRON YOUR COMMUNICATION ADVANTAGE and CENTRON trademarks. In its Supplemental Statement, Complainant contends that the consensus view of previous panels is that the registration of a trademark after the registration of a disputed domain name does not prevent a finding of confusion under paragraph 4(a)(i) of the Policy. Furthermore, Complainant asserts that under German law, the use of the company name “Centron GmbH” created legal rights in the CENTRON mark before Respondent’s registration of the Domain Name.

Complainant further asserts that Respondent has no rights or legitimate interests in the Domain Name. Complainant notes that Respondent is not a licensee of Complainant, and that Respondent is not making any legitimate, noncommercial, or fair use of the Domain Name. (Amended Complaint, para. 11.)

Relying on paragraph 4(b)(iv) of the Policy, Complainant contends that Respondent has registered and used the Domain Name in bad faith. Complainant argues that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s CENTRON and CENTRON YOUR COMMUNICATION ADVANTAGE marks.

B. Respondent’s Contentions

Respondent states that Complainant registered the CENTRON mark after Respondent registered the Domain Name <centron.com>. In his original Response of August 14, 2006, Respondent asserted that paragraph 4(a)(i) of the Policy is satisfied only when Complainant has trademark rights which predate the registration of the Domain Name. However, in his November 24, 2006, the Response to the Complainant’s Supplemental Statement, Respondent stated that, the “complete consensus view of UDRP Panels” is that “the registration of the domain name before the trademark registration does not prevent a finding of confusing similarity under the Policy,” but that “it may be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind.” (November 24, 2006, the Response to the Complainant’s Supplemental Statement, at p. 2.)

With respect to paragraph 4(a)(ii) of the Policy, Respondent claims that he is in the legitimate business of building a whole network of websites providing information regarding various subjects. Respondent claims that before notice of Complainant’s rights, he had been using the Domain Name in connection with a bona fide offering of goods and services, namely search results from a paid advertiser database. Respondent denies that the search categories listed on his website include products and services of competitors of Complainant. Respondent contends that there is no evidence that Respondent took advantage of Complainant’s commercial interests. Respondent notes that there are other registrations by third parties in the U.S. and Europe for the CENTRON mark and claims that there is no evidence that Complainant’s CENTRON mark is a well-known mark. Furthermore, Respondent claims that Complainant has not furnished evidence that Complainant has a trademark registration for CENTRON in Respondent’s jurisdiction or that Complainant’s mark has been advertised in Italy, or that Respondent had any constructive knowledge in Italy. Thus, Respondent denies any actual knowledge of Complainant’s existence when he registered the domain name. Respondent also denies having a pattern of engaging in preventing trademark owners from reflecting their marks in corresponding domain names. While Respondent has been involved in domain name dispute proceedings, Respondent contends that he has been successful in a number of previous decisions under the Policy.

In his Supplemental Response, Respondent notes that some CENTRON-based domain names owned by Complainant were registered after Respondent’s Domain Name registration. Respondent also contends that Complainant operated its business in German-speaking countries only and therefore Respondent was unaware of Complainant.

 

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed at resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187; Final Report of the First WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by Respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means by which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a number of Panels have concluded that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, Complainant must demonstrate that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. It is undisputed that Complainant has registered trademark rights in CENTRON and CENTRON YOUR COMMUNICATION ADVANTAGE. Respondent does not dispute the existence of these rights, but argues that the CENTRON mark is not relevant under paragraph 4(a)(i) because it was registered after the Respondent registered the Domain Name on July 1, 2003.1

The Panel rejects the Respondent’s argument. As the Respondent concedes in his Supplemental Statement, the “complete consensus view of UDRP Panels” is that “the registration of the domain name before the trademark registration does not prevent a finding of confusing similarity under the Policy,” but that “it may be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind.” (November 24, 2006, the Response to the Complainant’s Supplemental Statement, at p. 2.) In other words, whether the trademark was registered before the disputed domain name is irrelevant to “confusing similarity” under paragraph 4(a)(i) of the Policy, but may be relevant to “bad faith” under paragraph 4(a)(iii). The Panel finds that this is a correct interpretation of the Policy, as paragraph 4(a)(i) refers to “rights” in the present tense, and does not require that those rights predate the registration of the disputed domain name. See, e.g., PC Mall, Inc. v. Pygmy Computer Systems, Inc., WIPO Case No. D2004-0437; The Highland Street Connection dba Highland Street Foundation v. Chris McGrath, WIPO Case No. D2006-0516; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544; Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598.2

In view of the foregoing, the Panel finds that Complainant has carried its burden of demonstrating rights in the CENTRON mark under paragraph 4(a)(i). Accordingly, the Panel next considers Complainant’s contention that the Domain Name is confusingly similar or identical to Complainant’s CENTRON mark.

Under paragraph 4(a)(i) of the Policy, the question of similarity is evaluated solely based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Thus, the Panel compares the mark and the domain name alone, independent of the use factors usually considered in a traditional trademark infringement action. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Cafe, WIPO Case No. D2000-0068. See also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

Upon direct comparison, the Panel finds that the Domain Name <centron.com> is identical or confusingly similar to Complainant’s CENTRON mark. The Domain Name is identical to the CENTRON mark, aside from the legally insignificant addition of the top level identifier, “.com.” Lenox Financial Mortgage, LLC, JMH Financial Mortgage, Corp d/b/a Lenox Financial Mortgage, Corp v. Digi Real Estate Foundation, WIPO Case No. D2006-1047 (“[T]he addition of “.com” accomplishes little if anything toward the avoidance of confusing similarly. It should be disregarded for the purpose of the first element of the Policy concerned”). Accordingly, Complainant has met its burden under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

In order to meet the second element, Complainant should make at least a prima facie showing that Respondent has no rights or legitimate interests in respect of the Domain Name. Once Complainant has made a prima facie case, Respondent should present evidence that he has legitimate rights or interests. Gerd Petrik v. Johnny Carpela, WIPO Case No. D2004-1043, para. 6.9 (“Complainant has made the necessary assertions regarding any rights or legitimate interests of the Respondent. While not shifting the ultimate burden of proof, these assertions make it incumbent on Respondent to come forward with evidence refuting Complainant’s assertions and establishing Respondent’s rights or interests in the disputed domain name.”); Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, para. 6(B) (noting that “the element of possible rights or legitimate interests of the Respondent in the domain name involves . . . matters, which are peculiarly within the knowledge of the Respondent”, and that requiring the Complainant to make more than a prima facie showing would impose “the impossible task of proving the negative”).

Complainant has provided evidence that the Domain Name is being used as part of a business model involving the registration of “numerous domain names and either selling the names or using them to direct web traffic to cost-per-click search engine and directory websites.” According to Complainant, Respondent is known to be a high volume domain registrant, owning generic domain names, typo domain names, and domain names consisting of or based on third-party trademarks.

Complainant has provided uncontested evidence that it has not authorized or licensed Respondent to use Complainant’s mark or to register a domain name reflecting the mark. Respondent plainly has no claim of ownership in the CENTRON mark. There is no evidence that Respondent has ever been commonly known by the Domain Name. Based on all the foregoing, the Panel finds that Complainant has presented a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.

Pursuant to paragraph 4(c) of the Policy, Respondent may establish rights to or legitimate interests in the Domain Name by demonstrating any of the following:

(i) before any notice to it of the dispute, the 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the 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.

Respondent effectively admits that Complainant’s description of Respondent’s business model is correct. Respondent states that:

1. Respondent “is building a whole network of web sites providing information about various subjects”;

2. Respondent’s website “offer[s] access to other links,” and that “Respondent earns its income from this activity through payments by advertisers”; and

3. Respondent “added the [disputed] domain name to its already large list of domain names that it uses in its business,” and that “Respondent is engaged in a pattern of registering short letter combinations, and descriptive terms that are amenable to the Respondent’s advertising business.”

(The Response to the Complaint, August 14, 2006, at 5-6.)

Respondent contends that generating advertising revenues by building a large network of websites offering links to other websites is a legitimate business model.

The Panel finds that operating a search engine website that generates advertising revenues may be a legitimate business model, provided that this does not involve diverting users to a website with a domain name that is confusingly similar to a mark in which a third party has rights, and in which the registrant has no legitimate rights. Thus, well-known search engine websites such as “Google” or “Yahoo” are, of course, legitimate. However, these websites rely on the strength of their own name to attract users. Internet users visit these websites by intentionally typing in the URL.

Respondent’s business model, in contrast, involves “a pattern” of registering a large number of domain names consisting of “short letter combinations.” Respondent evidently chooses “short letter combinations” that are likely to be entered by users, so that users will end up at Respondent’s website, regardless of whether they intended to go there. The logic of Respondent’s business model means that domain names that are confusingly similar to the marks of third parties are especially attractive, since consumers are more likely to input those names and hence be diverted to Respondent’s website.

Operating such “short letter” cost-per-click websites may be legitimate when the domain name is a generic name in which third parties do not have rights. However, in this case, Complainant has demonstrated that it has rights in the CENTRON mark. Moreover, Respondent has presented no evidence that he has any trademark or service mark rights in CENTRON, or that he has of any other legitimate, pre-existing rights in the Domain Name. Indeed, the record strongly suggests that the reason that Respondent chose the Domain Name is because it is “short letter combination” that consumers are likely to input when looking for the websites of unrelated third parties, such as that of Complainant.

In sum, the Panel concludes that Complainant has met its burden under paragraph 4(a)(ii) of the Policy because hosting a cost-per-click search engine that uses a domain name that is confusingly similar to a mark in which a third party has rights to divert users away from third party websites is not a legitimate business model under the Policy. This is in accord with a number of UDRP proceedings involving Respondent which found that such use does not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i). See Citigroup Inc. v. SZK.com, FA0604000672087 (finding that the respondent’s disputed domain name containing complainant’s mark, which contained links to complainant’s competitors and unrelated content, did not “constitute a bona fide offering of goods or services pursuant to the Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant to the Policy ¶ 4(c)(iii), because Respondent likely receives click-through fees for diverting Internet users to these websites and thus is using Complainant’s marks for commercial gain”); Granarolo S.p.A. v. Michele Dinoia a/k/a SZK.com, FA0602000649854 (finding that “[t]he Respondent’s use of the disputed domain name to divert Internet users to other websites does not constitute a bona fide offering of goods or services pursuant to the Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to the Policy ¶ 4(c)(iii)”); Encyclopaedia Britannica, Inc. v. Michele Dionia/SZK.com, WIPO Case No. D2005-0865 (finding that respondent’s use of complainant’s trademark to host a website containing links to various commercial websites which offers encyclopedia and related reference materials was not a legitimate or noncommercial use of the domain name in dispute).

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances 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.

Paragraph 4(b) expressly states that the above list is “in particular but without limitation”; thus, “bad faith” may also be proven by other means. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“[P]aragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith”). The overriding objective of the Policy is to prevent abusive domain name registration and use for the benefit of legitimate trademark owners, and the Panel notes that the examples of bad-faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances in which such bad faith may be found. See id.

Complainant contends that Respondent has registered and is using the Domain Name in bad faith under paragraph 4(b)(iv), by intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks and corresponding services. In support of this conclusion, Complainant asserts that: (1) Respondent is a sophisticated registrant of numerous top-level domain names; (2) Respondent has an economic incentive to choose domain names that are similar to the marks of third parties, as they will increase the number of visitors to Respondent’s website and hence the amount of cost-per-click revenues; and (3) Respondent’s website includes pre-existing search categories that are similar to the goods and services offered by Complainant, and which are hence likely to be selected by unsuspecting users that are attempting to find Complainant’s website.

Respondent asserts that Complainant has not demonstrated bad faith because (1) Respondent registered the Domain Name before Complainant registered the CENTRON mark, which precludes a finding of bad faith; (2) Complainant has presented no evidence that Respondent was actually aware of Complainant’s CENTRON mark; (3) Respondent has not attempted to sell the Domain Name to Complainant; and (4) Respondent does not offer services or goods that compete with those of Respondent.

The Panel finds that Complainant has demonstrated bad faith under paragraph 4(a)(iii) of the Policy for the following reasons.

First, although bad faith may be more difficult to prove when the Domain Name was registered before Complainant’s trademark, this does not make it impossible to prove bad faith. On the contrary, bad faith may still be found when, as here, there is other evidence that Respondent was likely aware that the Domain Name was confusingly similar to a name that Complainant was using or intended to use. See Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598 (finding bad faith despite the registration of the disputed domain name predating the trademark application); ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669 (“From the intent of the Policy, it is clearly irrelevant whether a registrant intended to abuse an existing trademark right or one which that registrant specifically knew would arise”).

Second, as noted above, Respondent is admittedly engaged in a “pattern” of registering “short letter combinations” as domain names, in order to generate advertising revenues by funneling users to his search engine websites. Although this may be a legitimate business model in some cases, it is not legitimate when, as here, Respondent is using a Domain Name that is confusingly similar to a mark owned by a third party, and in which Respondent has no legitimate, pre-existing rights.

Third, Respondent is a sophisticated user of the Internet, who has been involved in a large number of domain name disputes under the Policy. Moreover, Respondent’s business model makes domain names that are confusingly similar to marks used or owned by third parties especially attractive, since such names are more likely to be input by users looking for the websites of these third parties. Under these circumstances, it is highly probable that before registering the Domain Name, Respondent conducted an online search for similar domain names and/or trademarks. This search likely would have revealed, at a minimum, that Complainant had already registered similar domain names, such as <centron.net> and <centron.biz>. This search likely would also have revealed that a number of companies, including Complainant, are using “Centron” as part of their business name. Indeed, Respondent has submitted, as Annex 4 to his Respondent, a partial print-out of a “Google” search for “Centron.”3 Under these circumstances, the Panel concludes that it is highly likely that Respondent registered the Domain Name because Respondent knew that a number of companies, including, Complainant, were using “Centron” in their business name.4

Fourth, Complainant has submitted, as Annex 13 to its Complaint, screen shots showing that Respondent’s website included, as of July 17, 2006, several pre-defined search categories that are similar to the computer-related services offered by Complainant, including “Firewall,” “Passwords,” “Vulnerability Database,” “Windows,” and “Hackers.” These pre-defined categories reinforce the conclusion that Respondent was aware of Complainant, and intentionally included categories that were likely to be selected by unsuspecting users who were attempting to find Complainant’s website.5 Further, even if it were assumed (as Respondent contends) that these pre-defined categories did not divert users to websites that offered goods and services that compete directly with those of Complainant, the fact remains that Respondent placed pre-defined categories on his website that were likely to be selected by users looking for Complainant’s website, and hence sought to profit from the diversion of such users to Respondent’s website.

Furthermore, although the fact that Respondent has engaged in a pattern of typosquatting or registering of third-party trademarks does not automatically establish bad faith in this case, it tends to negate any argument that Respondent’s conduct is merely inadvertent. In fact, Respondent has been called a “recidivist cyber squatter,” whose business model of typosquatting and registering third-party trademarks is “precisely the kind of electronic piracy that the Policy is intended to redress.” Amazon.com, Inc. v. Michele Dinoia c/o SZK.com, FA0508000536549 (finding that “Respondent’s long history of abusive cybersquatting can leave no doubt as to whether his behavior in this instance was the product of mere inadvertence.”).

Although Respondent has prevailed in few decisions under the Policy, those complaints usually involved generic marks or terms whereby complainant did not have protectable rights.6 See Sferra Bros. Ltd. v. Michele Dinoia aka SZK.com, WIPO Case No. D2006-0054 (denying the complaint on the grounds that the mark SFERRA was used as an Italian surname and part of an Italian verb and the respondent’s use of SFERRA was targeted to Italian users or persons of Italian origin); First Place Financial Corp. v. Michele Dinoia c/o SZK.com, FA0506000506772 (denying the claim on the grounds that the complainant did not have a registered trademark and had not established common law trademark rights in FPFC); Sallie Mae, Inc. v. Michele Dinoia, WIPO Case No. D2004-0648 (denying the complaint on the grounds that the complainant’s trademark SALLIE MAE was not identical or confusingly similar to the generic <sallie.com> disputed domain name and that the complainant had not shown that SALLIE was distinctive or has acquired secondary meaning); Todito.com, S.A. de C.V. v. Michele Dinoia, WIPO Case No. D2002-0620 (denying the complaint on the ground that HECHOS is a generic name).

Finally, Respondent’s argument that there are numerous registered CENTRON trademarks out in the field further confirms Respondent’s knowledge of the CENTRON mark and that Respondent’s purpose is to deprive a trademark owner of the use of the domain name, rather than to serve any legitimate, independent interest of Respondent. The fact that Respondent may be trying to divert users looking for the websites of multiple third parties, rather than from the website of Respondent only, does not make Respondent’s conduct legitimate. On the contrary, this fact reinforces the abusive nature of Respondent’s registration.

The Panel therefore concludes that Respondent’s registration of the Domain Name was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith. Accordingly, the Panel finds that Complainant has met its burden under paragraph 4(a)(iii).

 

7. Decision

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 <centron.com> be transferred to Complainant.


Grant L. Kim
Sole Panelist

Dated: December 7, 2006


1 The Respondent also contends that CENTRON YOUR COMMUNICATION ADVANTAGE, which was registered before the Domain Name, cannot be used to meet paragraph 4(a)(i) because it includes other words in addition to “CENTRON.” The Panel has concluded that the Respondent’s rights in the CENTRON mark are sufficient, by themselves, and accordingly does not address this issue.

2 Because the Panel concludes that the Complainant’s registered trademark rights in “CENTRON” are sufficient, the Panel does not address the Complainant’s alternative argument that its use of the company name, “centron GmbH,” created rights in the CENTRON mark before the disputed domain name was registered.

3 The Google search conducted by the Respondent excluded “GmbH,” so as to exclude the Complainant. However, it is likely that a Google search conducted before the Domain Name was registered in 2003 would have revealed the “Centron” websites that the Complainant was already using at that time. The Panel notes that a Google search conducted now returns the Complainant’s <centron.de> website as one of its top results.

4 The Panel notes that an archive website showed that between 1998 and around 2002 or 2003, the Domain Name was used by a New Jersey company called “Centron Corporation,” for what appears to have been a legitimate website. However, the Respondent registered the Domain Name after this prior registration expired. The Complainant suggests in its Supplemental Statement that the Respondent was using a program to look for and register recently expired domain names. The Panel finds that it is not necessary to decide whether this is what happened, but notes that recently expired domain names would fit the Respondent’s business model well, as they are likely to attract consumers looking for the old website.

5 The screen shots show some other pre-defined search categories that are unrelated to the Complainant’s business, but that appear related to the business of other “Centron” entities.
When the Panel recently attempted to view the Respondent’s website, the pre-defined categories had been changed. However, the Respondent has not disputed that Annex 13 includes accurate screen shots as of July 17, 2006. Moreover, the Respondent’s subsequent deletion of the similar pre-defined categories does not overcome the inference of bad faith. On the contrary, these changes imply that the Respondent realized that the similar pre-defined categories were problematic, and hence reinforce the inference of bad faith. See Factory Card Outlet of America, Ltd. v. Kevin Grandon, WIPO Case No. D2006-0423 (finding that subsequent changes to the website reinforced the “conclusion that Respondent lacked a valid basis for using the Domain Name”).

6 Only one of the cases cited by Respondent turned on the issue that the complainant did not meet its burden by the preponderance of the evidence that Respondent lacked legitimate interest in the disputed domain name or registered it in bad faith. InfoSpace, Inc. v Michele Dinoia c/o SZK.com, FA0311000213574. However, this case did not provide any analysis of Respondent’s activities nor did it provide guidance for the case at hand.

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0915.html

 

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