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TMG Technologie Management Gruppe Unternehmensberatung für Markt und Innovation GmbH v. Whois Privacy Protection Service, Inc. [2005] GENDND 400 (9 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TMG Technologie Management Gruppe Unternehmensberatung für Markt und Innovation GmbH v. Whois Privacy Protection Service, Inc.

Case No. D2005-0161

1. The Parties

The Complainant is TMG Technologie Management Gruppe Unternehmensberatung für Markt und Innovation GmbH, Karlsruhe, Germany, represented by Dr. Martin Hackenberg, Germany.

The Respondent is Whois Privacy Protection Service Inc., Bellevue, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain name <tmg.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2005. On February 10, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On February 11, 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 February 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2005.

The Center appointed Anders Janson as the Sole Panelist in this matter on April 11, 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

The Complainant asserted, and provided evidence in support of the following facts, which the Panel finds established.

Complainant is TMG Technologie Management Gruppe Unternehmensberatung für Markt und Innovation GmbH, a German corporation, in the business of providing specialized advice to companies regarding innovation of processes of production. The Complainants clients are companies from all over the world.

Complainant is the owner of numerous trademark registrations and trademark applications, such as

- “TMG”, European figurative mark, OAMI file number 003865003, filed on June 1, 2004; for class 16, printed products and class 35, business consultancy.

- “TMG i-tec”, European word mark, OAMI file number 003675881, filed on February 23, 2004, for class 35, inter alia business consultancy, business management.

- “TMG InnoMan”, European word mark, OAMI file number 002787307, registered on February 13, 2004 and claiming priority from July 19, 2002, for class 35, inter alia Business Consultancy.

- “TMG Innovations Manager”, European word mark, OAMI file number 002787307, registered on December 5, 2003, and claiming priority from July 19, 2002, for class 35, inter alia business management.

The Complainant’s company name has been in use since 1990.

The Respondent has a stated contact address in Bellevue, Washington, USA. The disputed domain name <tmg.com> was initially registered with eNom Inc. on January 12, 1995.

The Panel notes that the registration date of the disputed domain name is January 12, 1995.

The Complainant alleges that the disputed domain name <tmg.com> is not linked to an active website. The Panel finds this undisputed and shall be considered established in this matter.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the Respondent’s only purpose for registering the disputed domain name is to sell the domain name for an amount surpassing out-of-pocket costs for the registration. The Complainant has, through an intermediary, negotiated for the purchase of the disputed domain name, and has provided evidence of e-mail correspondence between the Complainant and the intermediary to that affect. The Panel notes that the Respondent’s answers in the negotiations have not been enclosed.

The Complainant also asserts that the Respondent, by registering the disputed domain name causes Internet users to not being able to find the Complainant on the Internet, since the combination of the company’s name and the suffix “.com” is a common way to find a company on the internet. This would also give the wrong impression to potential clients that the Complainant does not dispose of the know-how to master such crucial media for innovation as the Internet.

The Complainant also alleges that the Respondent has no rights or legitimate interest in the domain name. The domain name is not linked to a website, and is not in use. The Respondent does not use the disputed domain name for commercial or non commercial purposes. The Respondent is not known by the domain name or a name similar to it.

The Complainants finally contends that the disputed domain name <tmg.com>

should be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent 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 disputed domain name; and

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

Confusing similarity is a close issue in this case, since it is doubtful whether the disputed domain name <tmg.com> is confusingly similar to the trademarks in which the Complainant has rights. However, as the Complainant does not meet the third element of the Policy (bad faith, as discussed below), it is not necessary for the Panel to reach a conclusion under the first element of the Policy.

Likewise, and for the same reason, it is not necessary for the Panel to conclude under the second element of the Policy.

As to the third element of the Policy, bad faith, Complainant seems to infer bad faith by assuming that Respondent had knowledge of Complainant and its trademarks prior to the Domain Name registration, and that the Respondent hoped to benefit in one way or another from the fame of Complainant and its trademarks. In weighing that assumption, the Panel notes first that Complainant is of course not the only entity in the world entitled to use those three letters in connection with an offering of goods or services, on the contrary, it is more than likely that many entities around the world could be entitled to use a three-letter abbreviation such as TMG. It is entirely feasible for the Respondent to make a bona fide offering under the disputed domain name <tmg.com>. The Complainant has not given any evidence of to what extent the TMG mark is known, and has not presented any evidence to support his assertion that the Respondent knew of the mark when registering the Domain Name.

The Panel also notes that the Complainant has not filed any evidence in support of his claim that the disputed domain name is likely to mislead or deceive the Complainant’s customers. Further more, the Complainants has not provided evidence that suggests that it uses the word TGM alone in its advertising, marketing, or sale of its services or its business. Nor has the Complainant provided evidence that it, or its services, are known by the letters TGM alone.

Considering the above, the Panel finds that the Complainant has not established that the disputed domain name registered by the Respondent has been registered and is being used in bad faith by the Respondent.

The aim of the UDRP Policy is to stop bad-faith registration of domain names. The UDRP does not cover none-bad faith trademark infringements. This UDRP decision is accordingly not intended to prejudice the Complainant if it wishes to file an infringement case under relevant national law.

The Panel therefore holds that the Complainant has failed to established element (iii) of the Policy’s paragraph 4(a).

7. Decision

For all the foregoing reasons, the Complaint is denied.

Anders Janson
Sole Panelist

Dated: May 9, 2005