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Dorotheum GmbH & Co KG v. Norbert Gartner [2005] GENDND 589 (12 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Soda-Club (CO2) S.A. v. Percom Ltd. d/b/a WebBooster.com

Case No. D2005-0465

1. The Parties

The Complainant is Soda-Club (CO2) S.A., of Zug, Switzerland, represented by Schellenberg Wittmer, Switzerland (“the Complainant”).

The Respondent is Percom Ltd. d/b/a WebBooster.com, of Expresspost, St. Petersburg, Russian Federation, represented by himself (“the Respondent”).

2. The Domain Name and Registrar

The disputed domain name <soda-club.com> (“the Domain Name”) is registered with DomReg Ltd. d/b/a LIBRIS.com (“the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“the Center”) in connection with the Domain Name on April 28, 2005. On April 29, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name.

On May 4, 2005, the Registrar 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.

On May 12, 2005, the parties entered into an agreement that English be the language of this proceeding.

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 May 17, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2005. The Response was filed with the Center on June 6, 2005.

The Center appointed Tony Willoughby as the sole panelist in this matter on June 15, 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.

On June 9, 2005 the Complainant lodged a Supplementary Submission with the Center. The Panel has not read the submission, but has been informed by the Center that it relates to the website to which the Domain Name is currently connected and that the reason provided as to why the Panel should depart from the usual procedure and allow the document into the proceeding was because the submission dealt with matters which the Complainant could not reasonably have foreseen when filing the Complaint. For reasons which will become apparent, the Panel did not feel it necessary to look at the submission.

4. Factual Background

The Complainant is a company incorporated under the laws of Switzerland. It is one of the world’s largest producers of home soda makers.

The Complainant is the proprietor of numerous trademark registrations for the mark SODA-CLUB including, by way of example, CTM number 87957 in Classes 1, 6, 7, 21, 32 and 27.

The Domain Name was originally registered in the name of SodaStream Deutschland GmbH, an affiliate of the Complainant. In error, that company allowed the Domain Name registration to lapse. The Domain Name became available for general registration and it was registered by Eurobox Limited of St Petersburg, Russia, which, the parties agree, operate a back ordering system.

On March 31, 2005, the Complainant emailed Eurobox Limited seeking transfer of the Domain Name.

Thereafter, and on a date prior to the filing of the Complaint, the Domain Name registration was put into the name of the Respondent.

While the Respondent is named as a company, it is acknowledged in the Response that he is in fact Alexander Ivanov, who claims to be an ardent fan of a British pop group named Soda Club.

At the time of the Complaint the Domain Name was connected to an empty website. Currently, a visitor to the website at ‘www.soda-club.com’ is forwarded straight to another site at ‘www.sodaclub.tv’, which features information about the Soda Club pop group, but which does not appear to have any connection with the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to its SODA-CLUB trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and further contends that the Domain Name was registered and is being used in bad faith.

In support of these latter contentions the Complainant points to the following:

- the Complainant’s trademark, SODA-CLUB, is well known and people are bound to believe that the Domain Name is connected with the Complainant;

- there is no relationship between the Complainant and the Respondent;

- there is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name or anything like it in connection with a bona fide offering of goods or services;

- the Respondent is not commonly known by the Domain Name;

- the Respondent is not making a legitimate non-commercial or fair use of the Domain Name;

- when the Complainant approached Eurobox Limited, Eurobox immediately transferred the Domain Name to the Respondent, which is a clear case of cyberflying;

- Eurobox Limited is in the habit of registering other people’s well known trademarks as part of Domain Names. The Complainant refers to Кеско Ой против Юробокс Лтд. и Комар Лтд., WIPO Case No. D2003-0975 in relation to the domain name <rautia.com>;

- the Complainant objects to the contact information provided by both Eurobox and the Respondent, contact information which the Complainant describes as false. The Complainant refers, for example, to the fact that the technical and administrative contacts are identified as “soda-club admin” and “soda-club DP manager”. The Complainant refers to panel decisions purporting to find that the provision of false contact information constitutes registration and use in bad faith under the Policy;

- the fact that at the time of the Complaint the Respondent was then “using the disputed domain name by posting an empty website (as did Eurobox Limited before the transfer of the disputed domain name and in the above discussed <rautia.com> case.)” The Complainant contends that this is further evidence of bad faith and points to the well known decision in the case of Telstra Corp v Nuclear Marshmallows,WIPO Case No D2000-0003.

B. Respondent

The Respondent does not dispute the Complainant’s trademark rights but points to the fact that the Complainant’s trademark is a combination of two commonly used words. He also points to the fact that the Complainant does not appear to have a trademark registration of the mark in Russia where the Respondent is domiciled. The Respondent regards these points as being relevant and simply to show that there is no reason for the Respondent to be aware of the existence of the Complainant, the Complainant not having a business in Russia and the Respondent not being a consumer of home made Club Soda.

The Respondent denies the allegation that he has no rights or legitimate interests in respect of the Domain Name. The Respondent claims to be a music lover and “an owner of a vast collection of musical records”; specifically the Respondent is a fan of the British pop group Soda Club. The Respondent states that he acquired the Domain Name earlier in the year from the Eurobox back order service and paid US$1500 for the Domain Name. The Respondent says that his purpose in registering the Domain Name was a legitimate one, namely to create a fan site relating to the Soda Club pop group.

At the time of the Response there was no active website connected to the Domain Name but all traffic to the inactive website was redirected to the official website of the group, Soda Club.

As to the allegation of bad faith registration and use, the Respondent states that his purpose in registering the Domain Name, as identified above, was a legitimate reason.

To the extent that the Complainant’s allegations are directed at Eurobox and the alleged issue of cyber flying, the Respondent points out that Eurobox operates a proxy service whereby it protects domain name owners from having their personal information made public. The terms and conditions of companies offering this service provide that as soon as there is a dispute the company in question withdraws the protection and in the case of Eurobox this was done simply by transferring the registration to the name of the Respondent.

On this topic the Respondent has this to say:

“The fact of registering a domain name through a third party proxy service or the mentioning of that third party proxy service in some other UDRP case is not an evidence of Respondent’s bad faith.

Complainant’s allegation that Eurobox is named as registrant in many other domain names, in Respondent’s opinion, only supports the fact that Eurobox is a genuine proxy provider.”

The Respondent denies the Complainant’s allegation that in Russia SODA-CLUB is a well known trademark.

The Respondent objects to the Complainant’s allegation that the Respondent’s passive holding of the Domain Name is evidence of bad faith registration and use. The Respondent contends that it took him time to develop the website and that the period of inaction (ie passive holding) cannot reasonably be used against him.

Finally, the Respondent observes that the Complainant’s representative is a WIPO panelist for UDRP disputes and is concerned that the Panel in this case should be independent and impartial. Further, the Respondent asserts that given the Complainant’s representatives expert knowledge of the UDRP, any unfounded or false statement by the Complainant must be interpreted as a deliberate bad faith attempt to mislead the Panel. In this context, the Respondent regards the statement that the Complainant’s trademark is well known to be one example.

The Respondent contends that the Complainant has failed to prove the second and third elements of the Policy and that the Complaint should be dismissed.

6. Discussion and Findings

General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that

(i) The Domain Name 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 in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

In light of the Respondent’s observation that the Complainant’s representative is a WIPO Panelist for UDRP disputes, the Panel reiterates that he is entirely independent of the parties and their representatives and is impartial.

It is convenient that the Panel should also deal at the outset with the ‘cyber flight’ allegation. When the Complainant first raised complaint with the Domain Name Registrant, the registration was held in the name of Eurobox, a company which has previously been the subject of a complaint under the UDRP. Shortly thereafter (and without reference to the Complainant) the registration was transferred into the name of the Respondent. Not surprisingly, the Complainant took the view that this was a classic case of ‘cyber flight’.

The Respondent’s explanation is that Eurobox held the Domain Name registration on behalf of the Respondent as part of a proxy service whereby the Respondent’s details were kept hidden (ie were not visible on a Whois search). The Respondent explains that such schemes generally contain a provision to the effect that if the Domain Name in issue becomes the subject of a dispute, the proxy holder will remove itself from the scene and put the real holder into the firing line. This is what happened here.

This explanation accords with the Panel’s experience and the Panel accepts it. Accordingly, the Panel accepts for the purposes of this case that this was not a case of cyber flying such as to constitute evidence of bad faith registration and/or use.

A. Identical or Confusingly Similar

The Respondent does not dispute the Complainant’s trademark rights in respect of SODA-CLUB. That being so, there can be no question but that the Domain Name (absent the generic domain suffix) is identical to the Complainant’s trademark.

The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

To prove a negative of this kind, namely that the respondent has no rights or legitimate interests in respect of a domain name can be a very difficult thing for a complainant to prove. As was the case here, the complainant may have no knowledge of the respondent beyond what appears in the relevant registrar’s Whois database.

It is now broadly acknowledged among panelists that what a complainant is required to do is to make out a prima facie case and it is then for the respondent to answer that case.

Here the Complainant has demonstrated that at the time of filing of the Complaint the Respondent was not named Soda-Club or anything similar. Nor has the Complainant granted the Respondent any licence to use its trademark for this or indeed any other purpose. Furthermore, at the time of filing of the Complaint, the Respondent was not making use of the Domain Name whether commercially or non-commercially. On the face of it, therefore, the Respondent has adopted for himself an internationally well known trademark without the licence of the trademark owner and for no obvious good reason.

While the Panel accepts that the Complainant’s trademark may not be well-known in Russia, where the Respondent is listed as having his address, the Panel nonetheless finds that a prima facie case has been made out and that the Respondent has a case to answer.

Paragraph 4(c) of the Policy sets out a non-exhaustive list of what a Respondent can show to demonstrate rights or legitimate interests in respect of a domain name for the purposes of paragraph 4(a)(ii) of the Policy.

The Respondent’s answer is that he registered the Domain Name for the purpose of a fan site for an English pop group named Soda Club. He correctly observes that the mere fact that he had not been using the Domain Name for the few months for which he had held the registration should not of itself count against him. After all, it can take some time to get a website up and running.

Whether or not the adoption of someone else’s name or trademark (without adornment) for a domain name for an unofficial fan site can give rise to a right or legitimate interest in respect of that domain name is arguable. However, it is not necessary for the Panel to consider that issue further in this case, because the Respondent has produced no hard evidence to support his contention. The Response features no supporting exhibits. A visit to ‘www.soda-club.com’ simply forwards the visitor to a fan site for the pop group at ‘www.sodaclub.tv’, a site having no obvious connection with the Respondent.

In answering the Complainant’s allegations, one would have thought that the Respondent could have come up with some significant information by way of corroboration. One would have thought that someone prepared to pay US$ 1500 for a domain name for the claimed purpose would have no difficulty at all in supporting the story. The Panel has nothing before him save for the bare assertion that the fan site was the Respondent’s purpose. The forwarding of visitors to someone else’s fan site, something which is very easy to organize takes the matter no further forward. Indeed, it raises more questions than it answers.

The Respondent has made no attempt to provide any real support for his explanation. Accordingly the Panel finds that the Complainant’s prima facie case remains unanswered and that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

If the Respondent’s explanation for registering the Domain Name is correct, then the Complaint must fail for, according to the Respondent, at the time of registration of the Domain Name he was unaware of the Complainant’s trademark and did not have the Complainant or its mark in mind at all. All that he had in mind was the pop group of the same name.

The Panel is not satisfied with the Respondent’s explanation. It does not ring true. A genuine fan would have had no difficulty in demonstrating his interest. Moreover, it is plain from Mr. Ivanov’s company name that he is engaged in the provision of Internet related services and is likely to be well aware of the need to support bare assertions with some evidentiary material.

While it is certainly for the Complainant to prove its case, it is unrealistic to expect a panelist to ignore completely an explanation which is so hopelessly deficient. In the view of the Panel, the Respondent’s explanation as to why he registered the Domain Name, far from doing him any favours, adds to the Complainant’s case under this head. As indicated above, it raises more questions than it answers.

The Panel has come to the conclusion that the Respondent’s explanation was in all probability nothing more than a device to defeat this Complaint. That being the Panel’s view, inevitably the conclusion has to be that the Respondent registered the Domain Name for an abusive purpose, a purpose to which the Respondent is not prepared to admit in the context of this administrative procedure.

The Panel finds on the balance of probability that the Respondent registered the Domain Name in bad faith knowing it to comprise the Complainant’s trademark and for an abusive purpose within the meaning of 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, <soda-club.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist

Date: June 29, 2005