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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Steinemann Technology AG v. Enzo Graficas Internacional C.A.
Case No. D2007-0170
1. The Parties
1.1 The Complainant is Steinemann Technology AG of St. Gallen-Winkeln, Switzerland, represented by Andreas Plueer, Switzerland.
1.2 The Respondent is Enzo Graficas Internacional C.A., c/o Enzo Di Giovanni
of Caracas, Venezuela.
2. The Domain Name and Registrar
The disputed domain name <steinemann.com> is registered with Network Solutions, LLC.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2007. On February 9, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On February 9, 2007, 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 for the administrative and technical contact. 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”).
3.2 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 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2007.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 28, 2007. 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.
3.4 The Center appointed the Panel in compliance with
paragraph 7(c) of the Supplemental Rules. Under paragraphs 5(e) and 14(a) of
the Rules, the effect of the default by the Respondent is that the Panel shall
proceed to a decision without the benefit of any Response from the Respondent.
4. Factual Background
4.1 The Disputed Domain Name is <steinemann.com>.
4.2 The Complainant is Steinemann Technology AG, a machine manufacturing company based in Switzerland. The ‘Graphic Division’ of the company builds and sells varnishing and laminating machines. The ‘Sanding Division’ builds wide sanding belt machines.
4.3 A stylised version of the word STEINEMANN is registered as a trademark in Australia, People’s Republic of China, the European Union, the United States of America and Mexico, amongst other countries, for classes of machinery, equipment and parts, publication and information management services and technology, research and design services. The trademark, although stylised, consists only of the word “steinemann”, which is clearly legible. The example registrations provided by the Complainant indicate that these were registered between 2004 and 2006.
4.4 The Complainant does business in various countries. These include Venezuela, which is the location of the Respondent, but the Complainant does not have a trademark in Venezuela.
4.5 The Complainant is also the holder of 30 domain names that include the word “steinemann”. These include <steinemann.co.uk>, <steinemann.us> and <steinemann-ag.ch>.
4.6 The Respondent, Enzo Graficas International CA, is a company based in Caracas, Venezuela. It has been a customer of the Graphic Division of Steinemann Technology, but no longer is.
4.7 The Respondent registered the Disputed Domain Name on December 1, 1998.
4.8 The Disputed Domain Name resolves to a website showing a symbol which appears to be a stylised “E” and a “G” rolled into one next to an “I”, with “Enzo Graphic CA” and their address underneath. Clicking through, the site purports to sell new and second-hand varnishing and laminating machines. Some of the second hand machines appear to have been manufactured by the Complainant however the site also offers for sale machines that appear to be manufactured by the Complainant’s competitors.
4.9 In May 2004, the Complainant’s Chief Executive Officer, Mr. Christof Stьrm, wrote an email to Mr. Enzo Di Giovanni at the Complainant. The email states it is written further to a letter sent to Mr. Di Giovanni three years previously which asked whether the Complainant would be willing to ‘give up’ the Disputed Domain Name.
4.10 Subsequent email correspondence between these two parties indicates that at a meeting at the “DRUPA” trade fair in Dьsseldorf, Germany, the Parties agreed that the Respondent would transfer the Disputed Domain Name to the Complainant for the sum of US$20,000. However, the Respondent failed to sign the domain name transfer agreement to affect this transfer.
4.11 The Complainant eventually transferred this sum
into the account of the Respondent who then claimed that the offer had expired
and increased the sum requested to €100,000. The Complainant refused this
request and the Respondent (it would appear at the Complainant’s request)
returned the money already paid, less a small administration fee charged by
5. Parties’ Contentions
5.1 The Complainant’s factual and legal contentions can be summarised as follows:
Identical or Confusingly Similar
5.2 The Complainant has been in business since 1917 and has used the brand STEINEMANN since the very beginning on its machines and for customer services. The Disputed Domain Name is identical to this brand name.
5.3 The word and spelling of “steinemann” in the Disputed Domain Name are identical to the word and spelling in the registered trademarks of the Complainant.
5.4 In addition, the Disputed Domain Name is said to be identical or confusingly similar to the domain names already owned by the Complainant.
Rights or Legitimate Interests
5.5 The Disputed Domain Name purports to distribute machines similar to those manufactured by the Complainant. However, according to the Complainant, the Respondent is neither known under nor linked to the name “Steinemann”, nor was he at any time authorised by the Complainant to use the mark.
5.6 The Complainant also makes reference to Article 229 of Decision 486/2000 of the Andean Community. This is stated to apply in Venezuela and the Complainant maintains that this “recognizes the right of the owner of an unregistered well-known mark to prevent third parties from filling or using [that] mark in Venezuela”.
Registered and Used in Bad Faith
5.7 According to the Complainant the increase in the Respondent’s demand from US$20,000 to €100,000 shows that the Respondent intended to sell the domain for valuable consideration in excess of their out-of-pocket costs.
5.8 The Disputed Domain Name offers for sale machines manufactured by the Complainant’s competitors. This, it is alleged, would confuse customers who, in attempting to visit one of the Complainant’s sites, visited the Disputed Domain Name in error. According to the Complainant such customers are being prevented from accessing the information they actually require.
5.9 Further the Complainant maintains that the Respondent has registered the Disputed Domain Name in order to prevent the Complainant from registering the domain name itself. In any event, the Disputed Domain Name was not registered and used in good faith, but to deliberately adversely affect the Complainant.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.
6.2 Under paragraph 5(e) of the Rules, if the respondent does not submit a response and in the absence of exceptional circumstances, “the Panel shall decide the dispute based upon the Complaint”. Further, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences therefrom as it considers appropriate”. This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent it determining the dispute, notwithstanding the failure of the Respondent to lodge a Response.
6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(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 deals with each of these elements in turn.
A. Identical or Confusingly Similar
6.4 The Complainant has trademark registrations in several countries that take the form of the word STEINEMANN in highly stylised and distinctive text. The trademarks do not comprise of any other element.
6.5 There are a number of domain name decisions in which the panels have stated that since a domain name can only consist of alphanumeric text, design elements are ignored in considering whether the domain name is identical or confusingly similar. However, there are others in which the panel has held that the design element can and should be taken into account.
6.6 This Panel (as it stated in Minibar North America
Inc. v. Ian Musk & GEMS Global Electronic Minibar Systems AS, WIPO
Case No. D2005-0035) believes that ordinarily the second approach is to
be preferred. The question is whether or not the domain name in question is
identical or similar to the trademark relied upon. It is not whether the domain
name is identical or similar to certain selected aspects of that trademark.
To completely ignore the design elements of the mark runs the risk of unfairly
over-emphasising the textual elements and treating a complainant as possessing
rights that it may not have. The fact that a domain name can only consist of
alphanumeric text does not logically justify treating a complainant’s
trademark rights as something different from what they actually are.
6.7 In the present circumstances, the Panel finds that Disputed Domain Name is not identical to any of the Complainant’s trademarks. However, this does not matter. In a case such as this, where the trademarks take the form of stylised text, and nothing more than stylised text, the Panel has little difficulty in concluding that the Disputed Domain Name is confusingly similar to the Complainant’s registered trademarks.
6.8 There is a further slight complication in this case in that the Disputed
Domain Name was registered in 1998 but the materials provided by the Complainant
show that its trademarks were not registered until 2004. However, in the opinion
of the Panel this also does not matter. As is recorded at paragraph 1.4
Overview of WIPO Panel Views on Selected UDRP Questions, the consensus view
amongst panels is that:
“Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can 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.”
6.9 Therefore, the Panel finds that Disputed Domain Name is confusingly similar to trademarks in which the Complainant has rights and that the Complainant has therefore made out paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.10 Paragraph 4(c) of the Policy sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
“(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 organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you 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.”
These are not an exhaustive enumeration of rights or legitimate interests, they are examples only.
6.11 The Complainant asserts that the Respondent is neither known under nor linked to the name STEINEMANN, nor was he at any time authorised by the Complainant to use the mark. The Respondent has not put in a Response and therefore does not deny this. Nevertheless paragraph 4(c)(i) of the Policy is still potentially of relevance here. The Disputed Domain Name was registered in 1998. We are not informed how long the website (as described above) has been in commercial use, however it would appear that it is currently being used to offer machinery, including Steinemann machinery, to customers. Might this provide the Respondent with a “right or legitimate interest”?
6.12 The case of Oki Data Americas, Inc. v. ASD, Inc., WIPO
Case No. D2001-0903 (which is referred to under paragraph 2.3
of the WIPO
Overview of WIPO Panel Views on Selected UDRP Questions) is relevant to
this question. It sets down a number of requirements that must be met for such
an offering of trademarked goods under a domain name that reflects that trademark
to be bona fide and thereby provide a legitimate interest in a domain
name. Those requirements include the following:
(a) The Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods; and
(b) The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.
6.13 In the Oki Data case, the Respondent’s conduct met these (and a number of additional factors identified by the panel) since it was an authorised seller and repair center, was using the <okidataparts.com> site to promote only OKI DATA goods and services, and prominently disclosed that it was merely a repair center, not Oki Data itself.
6.14 In the current case, although the Respondent is selling the goods in question, it is also selling goods that appear to be manufactured by competitors of the Complainant. In addition, the site does not obviously disclose the registrant’s relationship with the trademark owner nor does it attempt to distinguish itself from the Complainant’s official site.
6.15 Accordingly, the Panel concludes that the Complainant has made out its case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and has thereby satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.16 Paragraph 4(b) of the Policy sets out circumstances that shall, in particular but without limitation, be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] 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
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted
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 [its] website
or location or of a product or service on [its] website or location.
The Complainant appears to make reference to each of these circumstances and therefore the Panel considers each in turn.
6.17 The Complainant maintains that the Respondent’s increase of the requested sum from US$20,000.00 to €100,000 shows that the Respondent was contemplating selling the Disputed Domain Name for valuable consideration in excess of the Respondent’s out of pocket costs.
6.18 The Panel does not accept that the Complainant has made out its case in this respect. There is insufficient evidence before the Panel to conclude that when the Respondent initially registered the Dispute Domain eight years ago it did so primarily to sell the Disputed Domain Name to the Respondent or its competitors. The fact that the Respondent was at some time prepared to accept the sum of US$20,000 and then later increased the sum sought to €100,000 in this case indicates that by 2004 or thereabouts the Respondent was at least aware of the value of the Disputed Domain Name to the Complainant and sought to take financial advantage of that fact. However, the Panel is unable to infer from this that sale of the Disputed Domain Name was the primary intention of the Respondent at the time of registration.
6.19 Similarly, the Complainant has not succeeded in establishing that the Respondent has registered the Disputed Domain Name in order to prevent the Complainant from reflecting the mark in a corresponding domain name or primarily for the purpose of “disrupting the business of a competitor”. There is simply no evidence before the Panel to this effect.
6.20 What then was the intention of the Respondent in registering the Disputed Domain Name in this case? Is it possible to infer from the current use of the Disputed Domain Name that initial intent?
6.21 There is undisputed evidence before the Panel that the Respondent had already been a customer of the Complainant for several years. It was therefore well aware of the STEINEMANN name and brand at the time that it registered the Disputed Domain Name in 1998.
6.22 The difficulty is that over eight years have passed since the Disputed
Domain Name was registered. The Complainant puts forward evidence of what the
website operating from the Disputed Domain Name now looks like. However, there
is no evidence before the Panel as to the manner in which the website operated
in earlier years. As this Panel stated in Silvie Tomčalovб a.k.a. Sylvia
Saint v. Juan Campos, WIPO Case No. D2006-0379.
“Further, it should be remembered that Paragraph 4(a)(iii) requires not just bad faith use but registration in bad faith. Of course, frequently one can be inferred from the other, but the Panel would expect the Complainant at least to address the point. This is particularly so in this case where the Disputed Domain was not registered recently. It was registered nearly eight years ago.”
6.23 Nevertheless, this case is not like the Sylvia Saint case. It seems reasonably clear here that the Complainant does indeed allege that the Respondent initially registered and thereafter used the Disputed Domain for its present purpose; i.e. to operate a website offering for sale Steinemann machinery and competing machinery. For example, the Complainant invites the Panel to conclude from the present contents of the website that the Dispute Domain Name “was not registered in and used in good faith, but to deliberately adversely affect [the Complainant]”.
6.24 That the Disputed Domain Name was registered for this purpose is not inherently improbable, particular given the Respondent’s past relationship with and knowledge of the Complainant. In the absence of a Response, it is also an allegation that is not disputed. The Panel therefore concludes as a matter of fact for the purposes of these proceedings that this is in all likelihood why the Disputed Domain Name was registered.
6.25 Is this sufficient for bad faith registration and use in the circumstances of the present case? In the opinion of the Panel it is. Here the offering for sale of competing machinery is particularly relevant. In essence the Respondent has been using the reputation of the STEINEMANN name and brand so as to divert trade to its website with a view to selling those competing products. In the words of paragraph 4(b)(iv) of the Policy, the Respondent has been using the Disputed Domain Name so as to “attemp[t] to attract, for commercial gain, Internet users to [its] website, … by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website … or of a product or service on [its] website …”.
6.26 The case is in this respect very similar to that faced by the three-member
panel in Philip Morris Incorporated v. Alex Tsypkin, WIPO
Case No. D2002-0946. This was a case where the Respondent used the MOLBORO
name as part of a domain name for a website that sold both genuine Molboro cigarettes
and competing brands. In the Philip Morris case the panel also held that
the registration and use of the domain name was in bad faith.
6.27 Accordingly, the Panel finds that the Complainant has satisfied the requirement
of paragraph 4(a)(iii) of the Policy and that the Disputed Domain Name “has
been registered and is being used in bad faith” by 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, <steinemann.com>, be transferred to the Complainant.
Matthew S. Harris
Dated: April 10, 2007