Fobazo.com A/S v. Domain Group Germany/Peter Karlsberg
Case No. D2007-1277
1. The Parties
The Complainant is Fobazo.com A/S, Kastrup, Denmark, represented by Abel & Skovgård Larsen, Denmark.
The Respondent is Domain Group Germany/ Peter Karlsberg, Duisburg, Germany.
2. The Domain Name and Registrar
The disputed domain name <fobazo.net> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2007. On August 31, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 4, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 11, 2007. 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 September 14, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2007.
The Center appointed Peter G. Nitter as the sole panelist in this matter on October 26, 2007. 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 is a Danish company. In April 2006 they launched the website “www.fobazo.com”, and have carried out business preparations and business under the name “Fobazo” since then. “Fobazo.com” is an internet portal with different football related activities. The Complainant is registered in the Danish Commerce and Companies Agency under the name “Fobazo.com”.
The domain name <fobazo.net> was registered on May 11, 2006, by J. Antonow, who sold the domain name to the Respondent. In addition to the disputed domain name, Respondent owns the domain names <fobazo.de>, <fobazo.be>, <fobazo.nl>, <fobazo.es>. Further, the Respondent has registered a private company named Fobazo Ltd. in England and Wales.
5. Parties’ Contentions
A. Complainant
Complainant contends that it is the owner of the trademark “Fobazo”. The trademark is unregistered but the validity of a Danish trademark is not conditional upon registration with a public authority.
The domain name in question, <fobazo.net> is identical with the trademark owned by the Complainant.
Respondent is, by the registration and the use of a domain name identical to the Complainant’s trademark, misleading customers and internet users into thinking that it is connected with the Complainant and its business. The website of the Respondent contains nothing but links to other websites. In addition, the website contains a link stating that the domain name is for sale. This indicates that the Respondent has no legitimate interest in the domain name.
The domain name is registered and used in bad faith. On May 10, 2006, there was a presentation of the website “www.fobazo.com” at the football player Ronaldo’s press meeting in Madrid. Furthermore, on May 11, 2006, which was the same day the disputed domain name was registered, the launch of the name and website “Fobazo.com” was covered by the press, e.g. Danish newspapers.
Further, the fact that there is a link on the website stating that the domain name in question is for sale, shows that the registration of the domain name has been done with the sole purpose of making the Complainant pay an amount for the transfer of the domain name.
B. Respondent
The Respondent contends that he has bought the domain name <fobazo.net> in good faith from J. Antonow and that he has never heard about the Complainant and their business.
He uses the name “FoBaZo”, which is short for Foto Base Zone. The Respondents intends to build an internet portal where people can share, discuss and judge photos.
6. Discussion and Findings
A. Identical or Confusingly Similar
In order for the Complainant to have the disputed domain name transferred, the Complainant must prove that the domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights.
The Complainant contends that it is the owner of the unregistered trademark “Fobazo”. Further, the Complainant contends that the validity of a Danish trademark is not conditional upon registration with a public authority.
It is clear from many prior decisions that the reference to “rights” in Paragraph 4(a)(i) of the Policy includes both registered and unregistered trademark rights.
However, in order to establish rights in an unregistered mark, Complainant must show that the name has become a distinctive identifier associated with the Complainant and its goods and services; it must show evidence of goodwill and reputation in and to a name. This can be established by showing use of the trademark in association with its business for a number of years, or a rather extensive use of the mark, prior to the registration of the domain name.
While the Complainant has clearly invested effort in setting up a football-related website at the domain name <fobazo.com>, this does not itself establish rights in the claimed mark “Fobazo”. More is required in the form of actual evidence of secondary meaning.
Except from the press conference on May 10, 2006, there is no provided evidence of advertising or promotional use by Complainant of “Fobazo” prior to May 11, 2006, when the disputed domain name was registered. The Complainant has only provided one article in a Danish newspaper where the name “Fobazo” is mentioned. The Panel is of the opinion that the Complainant has not provided adequate grounds for a finding in the present proceedings that it has on balance established rights in the claimed mark “Fobazo”.
Accordingly, the Panel finds that Complainant has failed to meet its burden under Paragraph 4(a)(i) of the Policy.
Since the Complaint fails to meet the requirement of paragraph 4a (i) of the Policy, it is not necessary to decide whether the Respondent has no rights or legitimate interests in the domain name or if the domain name was registered and used in bad faith.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Peter G. Nitter Sole Panelist
Dated: November 6, 2007
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