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Axel Springer AG v. AUTOBILD.COM [2005] GENDND 1322 (6 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Axel Springer AG v. AUTOBILD.COM

Case No. D2005-0554

1. The Parties

The Complainant is Axel Springer AG, Berlin, Germany, represented by Linklaters Oppenhoff & Rädler, Germany.

The Respondent is AUTOBILD.COM, Jack Tubul, Gdynsk, Poland.

2. The Domain Name and Registrar

The disputed domain name <autobild.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2005. On May 26, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On May 26, 2005, Tucows 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 June 2, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2005.

The Center appointed Massimo Introvigne as the Sole Panelist in this matter on July 4, 2005. 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

Complainant is one of the largest European publishing houses. It publishes, inter alia, the daily German newspaper Bild, with a circulation of more than 3 million copies, and a whole line of magazines whose names include the word “Bild”, including AutoBild, a well-known magazine specialized in cars. AUTO BILD is registered as a trademark by Complainant in several jurisdictions, including as a European Community trademark (No. 00092411) and in Poland (No. 92626). All these trademark registrations pre-date the registration of the domain name <autobild.com> by Respondent. The domain name <autobild.com> is being used for redirecting Web users to MegaGo.com, a Web directory (which may or may not pay Respondent for the redirection).

5. Parties’ Contentions

A. Complainant

Complainant argues that:

(a) The domain name <autobild.com> is virtually identical to the name of Complainant’s magazine AutoBild and to Complainant’s trademark registrations for AUTO BILD.

(b) Respondent has no rights or legitimate interests in respect of the domain name. Its only activity carried out under the domain name is the redirection to MegaGo.com.

(c) The domain name has been registered in bad faith. AutoBild is a well-known magazine and Respondent may not have happened to pick the name by coincidence. The re-direction to MegaGo.com shows that Respondent “makes no sensible use” of the domain. The Respondent, however, requested 85,000 euros for selling the domain name, and this is evidence enough of bad faith under the Policy.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

There is no question that the domain name <autobild.com> is identical to the name of Complainant’s magazine AutoBild (which, in this Panel’s opinion, would be entitled to protection even in the absence of trademark registrations), and virtually identical to Complainant’s registered trademarks AUTO BILD.

B. Rights or Legitimate Interests

Respondent has not answered Complainant’s claim that he has no rights or legitimate interests in the domain name. Even if MegaGo.com pays Respondent for the linking, which is not impossible, such activity would not create a “legitimate interest” in the domain name. Respondent may have an “interest” at stake, but this would not be “legitimate”, since it would simply take advantage of the fact that Internet users looking for a website connected with Complainant’s magazine are “captured” by Respondent and redirected to a commercial Web directory. On this point as well, Complainant prevails.

C. Registered and Used in Bad Faith

That the domain name was registered in bad faith may be argued from the fact that AutoBild is an internationally well-known magazine and it is extremely unlikely that Respondent has just selected the name by mere chance. On use, Complainant argues that Respondent “makes no sensible use” of the domain name, and relies almost exclusively on the alleged request of 85,000 euros, indeed an “outstanding” sum, for claiming bad faith. A request of 85,000 euros may perhaps be enough to find in favor of Complainant, but the context of the correspondence is not completely clear, nor does Annex 6 to the Complaint clearly confirms the Complainant’s version of the facts. However, this Panel does not believe that there is no actual use of the domain name. Redirection to a commercial directory is a form of use, which as mentioned earlier, occasionally allows the domain name owner to make some money. MegaGo.com is a large operation which offers research services and sponsored links in a wide variety of fields, including gambling, pornography and escort services. The redirection to MegaGo.com is, in view of this Panel, a form of use in bad faith. It is a use Respondent cannot control, it is a form of commercial use, and at any rate it is likely to direct users attracted by the domain name and by the fame of Complainant’s magazines to a variety of websites and services, some of them in fields they may have objections to and/or likely to disparage the reputation of Complainant’s trademark. Complainant, accordingly, prevails on the bad faith issue.

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, <autobild.com>, be transferred to the Complainant.

Massimo Introvigne
Sole Panelist