bilfinger.com

Bilfinger Berger AG v. eService Finance Dept.

Case No. D2003-0827

The Complainant is Bilfinger Berger AG of Mannheim, Germany, represented by Ullrich & Naumann, Germany.

The Respondent is eService Finance Dept. of Aarhus, Denmark.

The disputed domain name is <bilfinger.com>. It is registered with Register.com.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 17, 2003. The Center received a hard copy of the Complaint on October 20, 2003.

On October 17, 2003, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On October 21, 2003, Register.com 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, technical and zone contact. Register.com also confirmed that the language used at the time of registration was English. 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 October 24, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2003.

The Center appointed Fabrizio La Spada as the Sole Panelist in this matter on November 21, 2003. 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 Complainant is the owner of several trademarks consisting of or containing the word BILFINGER, registered in several European countries, including Germany. In particular, the Complainant is the owner of the following trademarks:

Word mark BILFINGER, no. 30107347.3, registered in Germany on May 31, 2001 (filing date: February 5, 2001), in international classes 6, 9, 37 and 42.

Word mark BILFINGER BERGER, no 002314482, registered in the European Union on December 17, 2002 (filing date: July 25, 2001), in international classes 6, 7, 9, 12, 19, 35, 36, 37, 39, 40, 41 and 42.

Figurative trademark BILFINGER+BERGER and design, no 992281, registered in Germany on October 25, 1979 (filing date: April 2, 1979), in international class 37.

Figurative trademark BILFINGER+BERGER and design, no 540127, registered on July 8, 1989 in several European countries including Germany, in international class 37.

The above-mentioned trademarks are registered for various goods and services, including construction and engineering goods and services.

The Respondent registered the domain name on October 5, 2000. The domain name is active and resolves to a one-page directory containing hundreds of links grouped in more than 50 general categories, such as real estate, crafts, interior design, home improvement, home and home decorating. On the top of the web page, the following wording is displayed:

"Welcome to bilfinger.com

This domain name was recently registered at NameBargain.com which is pleased to present the following services":

NameBargain.com is listed as technical and zone contact for the domain name.

The Complainant submits that the domain name is identical to its word mark BILFINGER and is confusingly similar to the word mark BILFINGER BERGER, since it is identical to the first word of the latter. In addition, the Complainant alleges that the domain name is confusingly similar to its figurative trademarks. The Complainant points out that these trademarks only contain a slight figurative element and are spoken as "Bilfinger Berger." According to the Complainant, only these words, and not the graphical elements, are remembered by the consumers. The Complainant further states that the average consumer usually abbreviates trademarks consisting of more than one word to their first word. Finally, the Complainant alleges that it is a worldwide known construction company, which is usually named BILFINGER.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name. According to the Complainant, there is no evidence of any use of, or any preparation to use, the domain name by the Respondent. Moreover, the Complainant stresses that there is no connection between the domain name and the various names used by the Respondent in connection with the domain name registration. The Complainant also submits that the Respondent is not commonly known by the domain name and has not acquired trademark or service mark rights on the domain name. Finally, the Complainant points out that even though the Respondent does not use the domain name, the latter is used by the Registrar, which offers goods and services under the domain name.

The Complainant further alleges that its name BILFINGER is well known throughout Europe and that the domain name was obviously registered in order to prevent the owner of the trademark from using it as a domain name. The Complainant also contends that the Respondent and the Registrar were contacted prior to this proceeding and advised that they were infringing the Complainant’s trademarks; according to the Complainant, neither the Respondent nor the Registrar answered that notice.

Finally, the Complainant argues that by using the domain name, the Respondent and the Registrar intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademarks. In particular, the Complainant points out that the Respondent is allowing the Registrar to use the domain name to promote goods and services being identical to the goods and services for which the Complainant’s trademarks are registered.

The Complainant seeks the transfer of the domain name.

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

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B); and

3. The domain name has been registered and is being used in bad faith (see below, section C).

Paragraph 4(a) in fine of the Policy states that the burden of proving that all these elements are present lies with the Complainant.

The Panel notes that, pursuant to Paragraph 15(a) of the Rules, it shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel stresses that, especially in case of a Respondent’s default, it is essential to ensure that fundamental due process requirements are met. Such requirements include that the parties be given adequate notice of proceedings initiated against them; that the parties have a fair and reasonable opportunity to respond, exercise their rights and present their respective cases; that the composition of the Panel be properly made and the parties notified of the appointment of this Panel; and that both parties be treated with equality in this proceeding (Dr. Pepper/Seven Up, Inc. v. NA, WIPO Case No. D2003-0773).

In the present case, the Panel is satisfied that this proceeding has been carried out in compliance with such requirements. In particular, the initiation of these proceedings was notified to the Respondent in accordance with the Rules.

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As regards the first question, the Complainant has provided satisfactory evidence in the form of certificates of registration that it is the owner of several trademarks, registered in several European countries and in the European Union, consisting of or containing the word BILFINGER.

As to the second question, the Panel finds that the domain name is confusingly similar to the Complainant’s trademarks.

First, the domain name is identical to the German trademark BILFINGER, No. 30107347. The Panel is aware that this trademark has been filed after the registration of the domain name. This raises the issue whether the date of registration of the trademark relied upon by the Complainant is relevant when determining the issue of the identity/confusing similarity, or whether it is only relevant to the possible bad faith of the Respondent.

This question does not need to be resolved in this case. Indeed, the Panel considers that the domain name is confusingly similar to the figurative trademark BILFINGER+BERGER, which has been registered before the domain name. This trademark is a combination of the verbal elements BILFINGER and BERGER, and of a graphical element consisting in the letter "b." In addition, the trademark contains the word "Bauaktiengesellschaft" (which means "construction share company" and is thus descriptive for share companies in the construction business) in small print. To determine whether the domain name, which comprises only the word BILFINGER, is confusingly similar to the trademark, it is necessary to examine how the influence of the word BILFINGER on the overall impression produced by the mark compares with the influence of the other elements. If the overall impression produced by the mark is influenced mostly by the other elements not reproduced in the domain name, there shall be no confusing similarity (see Nathalie and Jacques Ariggo, Coutellerie du Petit-Chêne and Heidi-Shop v. Gérard Praplan, WIPO Case No. D2003-0672).

The Panel considers that in comparing the domain name and the Complainant’s trademark, particular attention must be given to the verbal elements of the mark. Indeed, domain names cannot contain graphical elements. As a consequence, consumers expect companies to reproduce only the verbal part of their trademark in their domain names. Confusion is therefore more likely to happen with respect to the verbal elements of the trademark.

In the present case, the dominant parts of the trademark are the words BILFINGER and BERGER, which also correspond to the name of the Complainant. The domain name is identical to one of these two names. In addition, the word BILFINGER is the initial (and longer) part of the trademark and is therefore more likely to be remembered by the consumers. In the Panel’s opinion, this is sufficient to consider that the domain name is confusingly similar to a trademark in which the Complainant has rights.

The Complainant submits that the Respondent has no rights or legitimate interests in the domain name.

It is notoriously difficult for a complainant to prove such a negative fact. Consequently, Panels have required complainants to establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the respondent to rebut the presumption of absence of rights or legitimate interests (see, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).

According to Paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

"(i) before any notice to you [Respondent] 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

"(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

"(iii) you [Respondent] 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."

On the basis of the statements and documents submitted and in the absence of rebuttal evidence from the Respondent, the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the domain name, for the following reasons.

First, there is no evidence on record that, before notice of the dispute, the Respondent has used or prepared to use the domain name in connection with a bona fide offering of goods or services.

As a matter of fact, no goods or services are offered under the name "BILFINGER." Although services are offered in the form of a directory, the services do not correspond to a bona fide offering by the Respondent. The domain name is only used as a link to a generic directory presented by NameBargain.com, which is listed as technical and zone contact for the domain name. There is no indication that the links contained on the website are related to the Respondent or to the BILFINGER name.

Moreover, there is no evidence on record that the Respondent was at any time commonly known by the domain name. In this respect, the Panel notes that the Respondent’s name does not contain the word BILFINGER.

Finally, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name.

In accordance with the elements set out above, the Panel finds that the Respondent has no rights nor legitimate interests in respect of the domain name.

Under Paragraph 4(a)(iii) of the Policy, Complainant must prove that the domain name was registered and is being used in bad faith by the Respondent. Paragraph 4(b) of the Policy sets out four circumstances which shall be evidence of the registration and use of a domain name in bad faith. These four criteria are nonexclusive (BolognaFiere S.p.A. v. Bonopera Daniele, WIPO Case No. D2003-0295).

Paragraphs 4(b)(1) and (iv) provide as instances of registration and use in bad faith circumstances indicating that:

"(i) […] you [Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

[…]

"(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

First, the Panel has noted that the source code of the Respondent’s website contains the following meta content: "free parked domain, free parking, domain names for sale, domain name for sale, web names for sale, cheap domain names for sale, domain name reseller, good domain names for sale, domain name brokers, domain selling, domain for sale, domains for sale." In the Panel’s opinion, this is evidence that the Respondent primarily registered the domain name for the purpose of selling it to the Complainant or a competitor of the Complainant for valuable consideration exceeding its out-of-pocket costs.

In addition, it appears that the Respondent, by using the Domain Name <bilfinger.com>, tried to attract consumers seeking the Complainant’s official website to a website that did not correspond to their expectations, and from which they could be diverted to on-line locations without any relation whatsoever with the Complainant. In other words, the Respondent attempted to misleadingly divert Internet traffic that was initially intended for the Complainant (on this kind of bad faith behavior, see WIPO Case No. D2001-0193, Microsoft Corporation v. Mindkind). The websites to which the links in the directory resolve are commercial sites.

The Panel notes that the website mentions that the directory is offered by NameBargain, not by the Respondent. Under these circumstances, it is unclear whether the use of the domain name is made by the Respondent or by a third party (in this case, NameBargain) and whether the Respondent draws any profit from such use.

However, the Panel considers that the use of the domain name is made, if not by the Respondent itself, at least with the consent of the Respondent, which as registrant controls the domain name and the use that can be made thereof. This circumstance, added to the fact that the Respondent has not disputed the Complainant’s contentions that it is using the domain name for commercial gain, leads the Panel to consider that the use that is made can be attributed to the Respondent.

The Panel therefore finds that the domain has been registered and is being used in bad faith.

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