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CC Computer Consultants GmbH and WAFA Kunststofftechnik GmbH v. APG Solutions & Technologies [2005] GENDND 1489 (1 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CC Computer Consultants GmbH and WAFA Kunststofftechnik GmbH v. APG Solutions & Technologies

Case No. D2005-0609

1. The Parties

The Complainant is CC Computer Consultants GmbH, Toeging, Germany and Wafa Kunststofftechnik GmbH, represented by Rechtsanwaltskanzlei Hagen Hild, Germany.

The Respondent is APG Solutions & Technologies, Montreal, Canada.

2. The Domain Name and Registrar

The disputed domain name <wafa.com> (“Domain Name”)is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2005. On June 10, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 10, 2005, eNom 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 23, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2005.

The Center appointed Peter G. Nitter as the Sole Panelist in this matter on July 18, 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

CC Computer Consultants GmbH (CCC) was assigned by WAFA Kunststofftechnik GmbH (WAFA K) to create a website for WAFA K and therefore register the domain <wafa.com>. CCC registered the domain name <wafa.com> through Ratiokontakt GmbH in Germany. The domain name was registered the first time on June 2, 1998.

WAFA K is one of the world’s leading suppliers in the fields of plastic injection molding and surface finishing of decorative components. WAFA K is doing business in Germany and around the world.

WAFA K is the owner of the following trademark registered in Germany:

“WAFA” registration number 30160091 filed in 2001 for classes 17, 37 and 40.

(WAFA K has formally authorized CCC to enforce its trademark rights by a UDRP action (Annex 6 to the Complaint).

5. Parties’ Contentions

A. Complainant

Complainant claims that the Domain Name is identical to the WAFA trademark in which the Complainant has rights.

The Domain Name has been used actively since the registration. Complainant has extended the Domain Name registration until June 1, 2014. Complainant has paid for the domain name since the registration and is still paying the fees.

On April 5, 2004, there were problems with the Domain Name <wafa.com> and Complainant could not get access to the e-mails running under the Domain Name.

On April 6, 2004, there was suddenly a new owner of the domain name, a company called WAFA, registered in the whois database. Stanley Wang was listed as the administrative contact.

According to two UDRP decisions Mr. Silverstone has registered other domain names, which he had to give up because he was not the owner of the corresponding trademarks.

After April 6, 2004, the registered owner and administrative contact of the domain name changed several times: On April 19, 2004, and twice on June 8, 2004. The Respondent is now the actual registered owner.

Before April 6, 2004, Complainant had made one change, and that was to change the email address of Complainant’s administrative contact. Unfortunately this change had not been adjusted accordingly in the domain name data by the registrar.

Complainant claims that the “hijacking” of the domain name has occurred through the manipulation of password access or theft of the e-mail-address of the Complainant, which permitted the Respondent to enter Complainant’s account at Network Solutions’ LLC (“NSI”), the registrar of the domain name at that time, on or about April 5, 2004. The Respondent is alleged to have gained access to “NSI’s” website by misappropriating Complainant’s authorized password and by providing false and misleading information to the effect that it was properly authorized to manage the domain name account. Respondent misappropriated the domain name by changing the name of the registrant and the administrative contact, and by changing the password.

WAFA K used the domain name as a platform for international promotion of its goods and wants to continue with that. That is not possible in the current situation, and Complainant therefore wishes to have the domain name transferred back.

On April 6, 2004, and December 22, 2004, Complainant contacted “NSI”, and notified that the ownership of the domain name had been transferred without its permission, and requested “NSI” to transfer the domain name back. NSI declined to take any other step than to freeze the account.

Complainant tried to reach Respondent several times via e-mail and letter but both were returned.

The Respondent has no rights or legitimate interests in respect of the domain name. There are no relations between the Respondent and the Complainant. The Respondent is not a licensee of Complainant, nor has Respondent otherwise obtained any authorization to use the WAFA trademark. The Respondent is not commonly known by the disputed domain name, which has no particular meaning.

The domain name was registered and is being used in bad faith. A number of factors support a finding of bad faith:

(1) The fraudulent manipulation of password access to enter NSI’s website and transfer the ownership of the domain name.

(2) The use of false and misleading e-mail address for the administrative contact.

(3) Use of the name “Wafa Inc.” as the administrative contact; with an e-mail address.

(4) The possible involvement of Nicholas Silverstone, who is linked to the email address mentioned in 3) above, and who has been associated with instances or allegations of domain theft.

(5) The use of a non-existent fax number for the administrative contact.

(6) The registration of the domain name is done in bad faith as Respondent must have been aware of the WAFA mark at the time of registration due to the fact that there is still the same content, available both in German and English, on the website of the domain name as before the “hijacking”.

(7) The use of the domain name was also done in bad faith as the same content as before is on the website when the Complainant does not have access to the website.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name is <wafa.com>.

WAFA K is the owner of the registered trademark “WAFA” in Germany.

The domain name is identical to the “WAFA” trademark.

B. Rights or Legitimate Interests

The Panel has considered Complainant’s allegation that the Respondent does not have any rights or legitimate interests in respect of the domain name at issue. Since Respondent is in default, these allegations have not been contested, and the Panel finds it unlikely that Respondent could be in a position to claim any rights in the domain name at issue.

Because it is generally difficult for Complainant to prove the fact that Respondent does not have any rights or legitimate interests in the domain name at issue, while Respondent at the same time is given ample opportunity to demonstrate any such rights or legitimate interests pursuant to paragraph 4(c) of the Policy, previous decisions under the UDRP have found it sufficient for Complainant to make a prima facie showing of its assertion.

The Panel finds that the circumstances mentioned and evidenced by Complainant establish a prima facie showing that Respondent has no rights or legitimate interests in the domain name at issue.

As Respondent has not demonstrated any of the three circumstances that constitute rights to or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy, the Panel concludes that the Respondent does not have any rights or legitimate interests in respect of the domain name at issue.

C. Registered and Used in Bad Faith

The Panel has considered Complainant’s assertions and evidence with regard to Respondent’s registration and use of the domain name in bad faith. By not submitting a response, Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the domain name in bad faith.

It is not clear to the Panel exactly how the Respondent technically registered the domain name, but it does seem clear that the registration was irregular, and that it was done without the permission of Complainant.

Respondent registered a domain name, which is identical to the WAFA trademark. The domain name directs to websites, which contain information about WAFA K in both English and German. In addition the WAFA trademark is used as a heading on all of the websites. The content of the websites were never changed after Respondent’s registration of the domain name. These facts support the inference that Respondent had actual knowledge of WAFA K’s rights in the mark when registering the domain name.

In annex 18 to the Complaint, Complainant submits copies of letters and emails, which were sent to Respondent. These letters and emails were sent in a period from April 6, 2005, until the end of May the same year. The correspondence was returned to Complainant.

Further the Respondent has provided a false name as administrative contact for the domain name and a non-existent fax number.

The fact that Respondent has used false contact information, regarding post address, email address, administrative contact and fax number, when registering the domain name is also an indication of bad faith.

Once all these circumstances have been taken into account, the Panel finds that the domain name is registered and used in bad faith.

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

Peter G. Nitter
Sole Panelist

Dated: August 1, 2005