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EPA European Pressphoto Agency B.V. v. J. Wilson [2005] GENDND 178 (9 February 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

EPA European Pressphoto Agency B.V. v. J. Wilson

Case No. D2004-1012

1. The Parties

The Complainant is EPA European Pressphoto Agency B.V. of Frankfurt am Main, Germany, represented by Schlutius Rechtsanwälte of Hambury, Germany.

The Respondent is Mr. J. Wilson of Washington, DC, United States of America.

2. The Domain Names and Registrar

The disputed domain names <epa-photo.com>, <epaphoto.com> and <epaphotos.com> are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2004. On December 2, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On the same date, Go Daddy Software 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 14, 2004. The Center verified that the Complaint, together with the amendment to 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 December 22, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2005. The Response was filed with the Center on January 11, 2005.

The Center appointed Mr. Johan Sjöbeck as the sole panelist in this matter on January 26, 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.

The Center has notified the Panel that both parties have submitted supplemental filings. The Panel has been given no reason from the parties why the Panel should depart from the normal procedure of considering solely the Complaint and the Response. Bearing in mind the applicable regulations and having noted the direction of the evidence in the Complaint and in the Response, the Panel declines to accept the supplemental filings.

4. Factual Background

The Complainant in this proceeding, European Pressphoto Agency B.V., has based its Complaint on trademark rights to the trade name EPA through use in accordance with the German Trademark Law § 15 and German trademark EPA with registration number 304 58 607 dated November 22, 2004.

The Respondent in this proceeding, Mr. J. Wilson of Washington DC, registered the domain names <epaphoto.com> and <epaphotos.com> on March 5, 2003, and the domain name <epa-photo.com> on April 16, 2004. The Respondent has worked for the Complainant as a photographer on a freelance basis between August 27, 2003, and October 15, 2003. The Complainant has provided copies of the relevant Whois search results, which have been confirmed by the concerned Registrar.

5. Parties’ Contentions

A. Complainant

The Complainant has been using the abbreviation ‘EPA’ since it was founded on November 12, 1984. The Complainant’s German-based branch has been using the abbreviation ‘EPA’ since it was founded in 1987. The Complainant argues that ‘EPA’ stands for ‘European Pressphoto Agency’ and that the abbreviation is well known.

In 1994, the Complainant registered the domain name <epa-photos.com> and has been using it not only for a website but also for e-mail.

The Complainant contends that the disputed domain names <epa-photo.com>, <epaphoto.com> and <epaphotos.com> are confusingly similar to the Complainant’s rights to the abbreviation ‘EPA’. The Complainant argues that the word “photos” merely is a descriptive word for “press photo services” and that the distinctive word is EPA. Therefore, it is claimed that the main part of the disputed domain names should be considered identical to the Complainant’s company abbreviation. Furthermore, it is argued that the disputed domain names contain the word “photo”, which is a keyword for the business activities of the Complainant.

The Respondent has no trademark or company name, nor does he offer any goods or services that are identical or show any connection to the abbreviation ‘EPA’. The Respondent is a photographer who worked as a freelancer for the Complainant in connection with a reportage in Iraq during August to October, 2003.

The Respondent registered the disputed domain names in order to extort money from the Complainant. The Respondent linked the disputed domain names to the website of Getty Images, a competitor of the Complainant. Internet users who were redirected may have been confused as to whether the Complainant and Getty Images had merged or worked together. The Complainant contends that the confusion and the damages caused by the redirection to Getty Images are enormous.

On June 18, 2004, the Complainant sent a cease and desist letter requesting the Respondent to remove the link to Getty Images and to transfer the domain names to the Complainant. The Respondent answered on July 13, 2004, and offered to sell the domain names for €5,000 Euro. Should this amount not have been paid before July 19, 2004, the fee would have been raised to €8,000 Euro. The Complainant, however, did not agree to the Respondent’s proposal. The Respondent removed the redirection to Getty Images and posted a blank blue page without text or pictures. When loading the page, a popup opens with a message stating that there is a “Trojan Horse” present.

The Complainant argues that the Respondent does not use and has never used the disputed domain names for his own legitimate purpose.

The Complainant has company name rights according to common law, especially § 15 II of the German Trademark Law stating that “Third parties are forbidden to use the company name (business name) or a similar sign in the business dealings unauthorisedly in a manner, which is suitable to raise confusion with the protected sign.” The Complainant has company name rights to the abbreviation ‘EPA’ through use since 1985. Furthermore, the Complainant refers to § 4 No 2 of the German Trademark Law, which states “The trademark protection arises by use of a sign in business, as far as the sign has become known by the relevant customers/competitors.”

In addition to the above, the Complainant has registered the trademark EPA with the German Patent and Trademark office.

B. Respondent

The Respondent argues that the Complainant holds no registered trade or service mark related to the acronym ‘EPA’ or in relation to “epaphotos”. The Respondent claims that the German Trademark Law may have no jurisdiction as the Complainant was founded in The Hague. Furthermore, the Respondent contends that the term “photos” is a descriptive word and even if the Complainant had name rights to the acronym ‘EPA’, the Complainant has no name rights or trade or service mark rights to the term “epaphotos”.

The Respondent argues that the disputed domain names <epa-photo.com>, <epaphoto.com> and <epaphotos.com> may be similar to the domain name <epa-photos.com> used by the Complainant but not confusingly similar.

The website connected to the disputed domain names is not a news photo service, does not sell photos nor news. The primary function is to serve as a guide to the growing industry of online electronic picture archives and therefore the Respondent claims that Internet users wishing to buy photographs from the Complainant would not be confused by the different websites.

The acronym ‘EPA’ is most commonly known by the name of a third party, Environmental Protection Agency, which competes with the Complainant in the business of news photography distribution and sales.

The Respondent argues that ‘EPA’ stands for ‘Electronic Picture Archives’ and that his website is published under the principle of freedom of expression and in the spirit of “fair use”. The Respondent alleges that his website is a guide to numerous electronic picture archives, links to featured picture archives, a link to industry blogs and a chat forum. ‘Electronic Picture Archives’ was founded in 1996, when the Respondent began collecting information related to accessing various electronic picture archives.

The Respondent claims that he did not plant a Trojan virus on the website connected with the disputed domain names. The website has a browser compatibility issue with some versions of Internet Explorer rendering the website nonfunctional.

The Complainant’s website indicates that the Complainant launched its worldwide photo service on May 1, 2003, and therefore the Respondent alleges that any global reputation for the Complainant did not exist before this date.

The Respondent claims to make a legitimate non-commercial use of the domain names without intent for commercial gain.

The Respondent registered the domain names <epaphoto.com> and <epaphotos.com> approximately six months before being contracted by the Complainant to work as a photographer in Iraq.

The Respondent received an e-mail from the Complainant on May 8, 2004, in which the Complainant expressed a possible interest in buying the domain names. The Respondent was offered $300 USD but the Respondent declined the offer.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

The Complainant claims company name rights to the name EPA. However, this administrative proceeding cannot be applied to company name rights according to the Policy.

The Complainant also maintains to be the owner of the trademark EPA due to long-term use since 1984, in accordance with the German Trademark Law. To support this claim, the Complainant has submitted evidence of continuous use of the mark EPA for its products and services from mid-1980 to the present. In addition to this, the Complainant refers to the German trademark EPA with the registration number 304 58 607 dated November 22, 2004.

According to the submitted material, the German trademark EPA with registration number 304 58 607 was applied for on October 13, 2004, and registered on November 22, 2004. The application and registration occurred long after the Respondent registered the disputed domain names. However, as stated in Digital Vision, Ltd v. Advanced Chemill Systems, WIPO Case No. D2001-0827 and other cases, paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name. The fact that the disputed domain names predate the Complainant's trademark registration may only be relevant to the assessment of bad faith pursuant to paragraph 4(a)(iii), which is considered below.

The question as to whether the Complainant has rights in the mark EPA due to use and can demonstrate protectable trademark use prior to Respondent’s registration of the disputed domain names is therefore still relevant. Based on the submitted evidence in this proceeding regarding the Complainant’s use of the mark EPA, it is the opinion of the Panel that the Complainant has sufficiently shown that it has acquired unregistered trademark rights in the mark EPA through long-term use and that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

The disputed domain names <epaphoto.com>, <epaphotos.com> and <epa-photo.com> incorporate the trademark EPA in its entirety with the addition of the words “photo”, “photos” and “-photo”. The ability for the words “photo”, “-photo” and “photos” to distinguish the domain names from the trademark of the Complainant is limited. See Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102. Although the Complainant has no sole right to the words “photo”, -photo” or “photos”, these words add to the confusion between the disputed domain names and the trademark since the Complainant has been in a photo-related business since 1984. Having the above in mind, it is the opinion of the Panel that the domain names <epaphoto.com>, <epaphotos.com> and <epa-photo.com> are confusingly similar to the trademark EPA in which the Complainant has rights.

The introductory paragraph to paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if the Respondent can prove any of them to the satisfaction of the Panel, will establish the relevant rights and/or legitimate interests of the Respondent.

The two sub-paragraphs of paragraph 4(c) of the Policy which could be relevant in this situation are sub-paragraphs (i) and (iii) which read as follows:

“(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

“(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.”

It has been alleged by the Complainant that the Respondent has no trademark or company name nor offers any goods or services in connection with the mark EPA. The Complainant has submitted evidence indicating that the disputed domain names initially were used to divert Internet users and consumers to a website belonging to a competitor of the Complainant, Getty Images.

The Respondent, on the other hand, argues that the domain names are not used for a news photo service but for a guide to the growing industry of electronic picture archives that are available online. The Respondent alleges that ‘EPA’ stands for ‘Electronic Picture Archives’ and that it was founded in 1996, in the United States by the Respondent when he started collecting information related to various electronic picture archives on a personal website. The Respondent claims that the disputed domain names are used for advertising photos, stock photography, photos of art (sculpture, paintings and craft), history, scientific, medical, military, space photography, satellite imagery and other types of electronic picture archives and that no goods are sold in connection with the domain names.

However, the only evidence submitted by the Respondent in support of the above is a single-page undated screen printout of a website found in connection with the domain name <epaphotos.com>. The single-page printout shows a website with the words “Electronic Picture Archives” in the title and a disclaimer stating that the Respondent is not associated with the Complainant. It has been stated by the Respondent that the disclaimer was published after receiving the letter from the Complainant, and therefore the Panel comes to the conclusion that the screen printout was made after the dispute arose in 2004. The Respondent has not submitted any other evidence supporting or indicating use of the domain names in connection with a bona fide offering of goods or services before being put on notice about the dispute.

Redirecting domain names to a website of a competitor of the trademark owner does not constitute fair use of the domain names. See Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500. The Respondent has not submitted any evidence indicating a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers.

Having the above in mind, there is no convincing evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has proved the requirement under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

It is fair to say that the Respondent could not possibly have taken the registered EPA trademark 304 58 607 into consideration when registering the domain names <epaphoto.com>, <epaphotos.com> and <epa-photo.com> due to the fact that the trademark was applied for and registered after the domain names were registered. However, as described above, the Complainant has submitted evidence of having acquired rights to the trademark EPA as a result of long-term use.

The Respondent registered the domain names <epaphoto.com> and <epaphotos.com> on March 5, 2003. Between August 27 and October 15, 2003, the Respondent worked for the Complainant as a photographer for an assignment in Iraq. A few months later, on April 16, 2004, the Respondent registered the third domain name <epa-photo.com>. The fact that the Respondent is a photographer who worked for the Complainant shortly after registering the first two domain names <epaphoto.com> and <epaphotos.com> indicates that the Respondent had knowledge of the Complainant at the time of registration. When registering the third domain name <epa-photo.com> there is no doubt of the Respondent’s knowledge of the Complainant.

By registering several domain names that are confusingly similar to the Complainant’s trademark, the Respondent has prevented the Complainant from reflecting its mark in corresponding domain names. The registration of several names corresponding to Complainant’s trademark is sufficient to constitute a pattern of such conduct. See General Electric Company v. Normina Anstalt a/k/a Igor Fyodorov, WIPO Case No. D2000-0452.

The Respondent has submitted evidence showing that the Complainant contacted the Respondent in May 2004, regarding the disputed domain names and the redirection of the domain names to a website belonging to a competitor to the Complainant. From the evidence submitted, it is clear that the Complainant expressed an interest in buying the disputed domain names from the Respondent in May 2004.

In the Response, it is claimed that the Respondent “made an offer to sell the domain names” and that the Complainant offered the Respondent a sum of $300USD over the phone in late May 2004. Allegedly the Respondent declined the offer.

On June 18, 2004, the Complainant’s legal representative sent a cease and desist letter to the Respondent requesting the Respondent to delete the redirection of the domain names to Getty Images and transfer the domain names to the Complainant. The letter contained a warning of a possible contractual fine of $25,000USD in the event the Respondent would not accept the requests.

On July 13, 2004, the Respondent replied to the Complainant via e-mail and requested payment of €5,000 Euro to transfer the disputed domain names to the Complainant provided that he received a notification of intent to settle before July 19, 2004, or that the sum was paid by the same date. If the payment was not received by July 19, 2004, the Respondent informed the Complainant that the fee instead would be €8,000 Euro.

The Respondent’s written offer to the Complainant, after receiving the cease and desist letter, to sell the domain names to the Complainant for €5,000 Euro or alternatively €8,000 Euro is an indication that the domain names were registered primarily for the purpose of selling them for a consideration in excess of the documented out-of-pocket costs. No evidence was produced by the Respondent to establish that the actual cost of registration and maintenance of the domain names could approach the above-mentioned sums. See Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275.

Having all of the above in mind, the Panel concludes that the evidence is sufficient to establish the necessary elements of bad faith under paragraph 4(b)(i)(ii) 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 names, <epaphoto.com>, <epaphotos.com> and <epa-photo.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist

Dated: February 9, 2005