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Ikarus Software GmbH v. Longo [2004] GENDND 1381 (5 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ikarus Software GmbH v. Longo

Case No. D2004-0646

1. The Parties

The Complainant is Ikarus Software GmbH, Vienna, Austria, represented by Wolf Theiss Attorneys at Law, Austria.

The Respondent is Longo, Paris, France.

2. The Domain Name and Registrar

The disputed domain name <ikarus-software.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2004. On August 18, 2004, the Center transmitted by email to Network Solutions, LLC, a request for registrar verification in connection with the domain name at issue. On August 18, 2004, 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, billing, 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”).

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 27, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2004.

The Center appointed Dietrich Beier as the sole panelist in this matter on September 24, 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, paragraph 7.

4. Factual Background

The Complainant is the proprietor of the Community trademark IKARUS, Reg. No. CTM 959 478, registered on February 2, 2000, for several goods and services in classes 9, 16, 35, 38, 41 and 42. The mark is used in connection with the Complainant’s software business “Ikarus Software GmbH” for computer software, in particular virus-protection systems and connected services like consulting and training in relation to virus protection.

The Complainant also operates a website, accessed through the domain names <ikarus-software.at>, which was registered on February 26, 2001, and <ikarus-software.info>, which was registered on June 23, 2004. Furthermore, the Complainant is the owner of the domain names <ikarus-software.ch> (registered on November 13, 2004), <ikarus-software.co.uk> (registered on April 1, 2004), <ikarus.at> (registered on February 26, 2001), and <ikarussoftware.com> (registered on May 31, 2004).

On May 31, 2000, the Complainant registered the domain name <ikarus-software.com> with the registrar Key-Systems GmbH. This registration expired in 2003 due to a failure of the Complainant’s technician to renew the domain name. After expiration of the registration, the Complainant attempted to re-register the domain name <ikarus-software.com> and found that it had been registered by the Respondent at Network Solutions.

When the registration of the <ikarus-software.com> domain name by the Respondent came to Complainant’s attention, Complainant accessed the website “www.ikarus-software.com” and it came to Complainant’s attention that the domain name resolved to a website that contained pornographic material. Furthermore, according to the internic WHOIS database Respondent’s name server is <troxcorp.com>. The domain name <troxcorp.com> also resolves into a website containing pornographic material.

On May 24, 2004, the Complainant contacted the Respondent by e-mail requesting that the Respondent cease and desist from holding the domain name <ikarus-software.com>. The Respondent did not reply to Complainant’s e-mail. However, subsequently to the e-mail, the Respondent installed a frame displaying content of the Complainants’ website “www.ikarus-software.at.” The pornographic material now does not appear regularly, but from time to time. On June 3, 2004, the counsel of the Complainant sent a letter to the Respondent’s postal address requesting the Respondent cease and desist from holding the domain name <ikarus-software.com>. The letter was returned as undeliverable to the counsel of the Complainant on June 30, 2004,

5. Parties’ Contentions

A. Complainant

The Complaint is based on the Community Trademark IKARUS, Reg. No. CTM 959 478. The mark is used in connection with the Complainant’s software business “Ikarus Software GmbH” for computer software, in particular virus protection systems and connected services like consulting and training in relation to virus protection. The trademark “ IKARUS “ is continuously and extensively used to identify, advertise and promote the Complainant’s products since at least as early as 1998.

The Respondent is not a licensee of the Complainant, nor is it authorized to use Complainant’s IKARUS trademark. The Respondent registered the <ikarus-software.com> domain name without the authorization, knowledge or consent of the Complainant.

The domain name in question <ikarus-software.com> is confusingly similar with the Complainants’ trademark because it fully incorporates the Complainants’ trademark IKARUS. The only difference to the Complainants’ trademark IKARUS can be seen in the addition of the hyphen and the generic term “software,” which describes the Complainant’s goods and services. Respondent’s <ikarus-software.com> domain name may confuse Internet users because it is merely keystrokes away from <ikarus-software.at>, which connects to Complainant’s website that promotes its Ikarus Software products and services. An Internet user seeking Complainant’s website may therefore readily become confused and believe the domain name <ikarus-software.com> is somehow associated, affiliated with, or sponsored by the Complainant.

The Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the IKARUS trademark in a domain name and has therefore no legitimate interest in the domain name. The Respondent does not use or make any preparations to use the domain name in connection with a bona fide offering of goods and services. The domain name <ikarus-software.com> directs Internet users to a website that currently contains framed content from the “www.ikarus-software.at” website. The Respondent has not been authorized by the Complainant to use the content from the “www.ikarus-software.at” website. This is not bona fide use of a domain name. Therefore, the Respondent cannot meet the requirements of Section 4(c)(i) for establishing rights or legitimate interests in the domain name.

Respondent also has no rights in the <ikarus-software.com> domain name under Section 4(c)(ii) because it has never been commonly known by this domain name. Furthermore, Respondent has no rights in the domain name <ikarus-software.com> under Section 4(c)(iii) because it is not making a legitimate non-commercial or fair use of the domain name, As discussed, currently the website “www.ikarus-software.com” contains nothing but a frame with content of the “www.ikarus-soflware.at” website. Such passive holding does not confer a legitimate interest on the Respondent.

Originally the domain name <ikarus-software.com> resolved into a website having pornographic content. The unauthorized use of the Complainant’s trademark to promote pornographic content is not a good faith use of the trademark. There can be no other plausible explanation for Respondent’s actions than an attempt to divert traffic to Respondent’s website for (future) promotional gain by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. This constitutes evidence of bad faith registration and use of a domain name as set forth in paragraph 4(b)(iv) of the Policy.

Respondent’s registration of the <ikarus-software.com> domain name and failure to use such name for legitimate purposes establish that Respondent has registered and used the domain name in bad faith under the criteria set forth in Section 4(b)(iv) of the Policy. There is no evidence that Respondent was ever legitimately known as “ikarus-software.” Furthermore, criteria of bad faith are not limited to those exemplified in paragraphs 4(b)(i), (ii), (iii) and (iv) of the Policy. The letter sent to the Respondent by the Complainant’s counsel was undeliverable. Thus, Respondent has submitted false contact information for the WHOIS directory entry for the domain name <ikarus-soflware.com> by listing information for the administrative contact and technical contact that is not reachable through telephone, fax, or mail. Such action is also evidence of Respondent’s bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its 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 in dispute 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 with respect to the domain name; and

(iii) the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

Complainant has established the fact that it has valid trademark rights for IKARUS for computers and computer programming inter alia dating back to 1998.

The IKARUS trademark of the Complainant and the domain name in question <ikarus-software.com> only differ in the additional element “software” in the domain name. The addition of the purely descriptive element “software” in the domain name does not have a relevant influence on the distinctiveness of the Element IKARUS which clearly carries the weight of the designation <ikarus-software.com>. This is widely acknowledged by Panel decisions under the Policy (see e.g. Advanced Micro Devices, Inc. v. Dmitry, WIPO Case No. D2000-0530).

The Panel therefore considers the domain name in question to be confusingly similar to the trademark IKARUS of the Complainant in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent has no rights in the domain name in question, since Respondent is not a licensee of Complainant, nor has Complainant granted any permission or consent to Respondent to use the trademark IKARUS nor the content derived from the Complainant on the website under <ikarus-software.com>. Furthermore, Respondent has no legitimate interest in the domain name in question, since there is no indication that Respondent is commonly known by the name <ikarus-software.com> nor that Respondent is using the domain name in question in a generic way in connection with a bona fide offering of related goods or services.

The Panel therefore considers that the Respondent has no rights or legitimate interests in respect of the domain name in question in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In the present case the test of paragraph 4(b)(iv) of the Policy must be considered. In the first provided website appearance of “www.ikarus-software.com,” the website contained links to adult content and a frame showing content from the Complainant’s website. At the moment, only the latter frame with content of the Complainant’s website is visible on the Respondent’s website. The Panel does not see another explanation of the website content submitted in this proceeding other than that the Respondent has attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source or affiliation of his website. This is true even for the time before the frame with the content of Complainant’s was put on the website, since the use of pornographic material alone in connection with a disputed domain name which is confusingly similar or identical to a trademark or service mark is widely considered to match the test of paragraph 4(b)(iv) (see Bass Hotels & Resorts, Inc. vs. Mike Rodgerall, WIPO Case No. D2000-0568; Microsoft Corporation v. S.L., Mediaweb, WIPO Case No. D2003-0538).

Furthermore, by not submitting any response, Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the domain name in bad faith.

Thus, the test of paragraph 4(b)(iv) of the Policy is met.

The Panel therefore considers the domain name in question to have been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

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 <ikarus-software.com> be transferred to the Complainant.

Dietrich Beier
Sole Panelist

Date: October 5, 2004