Gebrüder Dorfner GmbH & Co. Kaolin- und Kristallquarzsand-Werke KG v. Michael Robert
Case No. D2009-0446
1. The Parties
The Complainant is Gebrüder Dorfner GmbH & Co. Kaolin- und Kristallquarzsand-Werke KG of Hirschau, Germany, represented by Taylor Wessing, Germany.
The Respondent is Michael Robert of Lawrenceville, Georgia, United States of America.
2. The Domain Name and Registrar
The disputed domain name <dorfner.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2009. On April 7, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On April 8, 2009, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 April 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on May 7, 2009.
The Center appointed Alessandra Ferreri as the sole panelist in this matter on May 19, 2009. 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 leading German company in the field of mining, processing and refinement of minerals; it supplies its products to more than 3.000 customers in 42 countries and operates under the company name “Dorfner” from more than 100 years.
The trademark DORFNER consists of the family name “Dorfner”.
The Complainant owns the German trademark registration for DORFNER, No. 39854163 filed on September 21, 1998 and registered on February 4, 1999 and the International Trademark Registration No. 713721 registered on March 17, 1999 for goods and services included in classes 1, 19 and 35, and extended to 31 countries under the Madrid Agreement and the Madrid Protocol.
The disputed domain name was registered on August 29, 2004.
When the Complaint was filed, the disputed domain name resolved to a webpage containing several links in German language, to numerous unrelated third parties' websites belonging to different market categories.
The registrant of the disputed domain name, Michael Robert, was involved in several domain name dispute resolution proceedings and it owns a large number of domain names, between 26.000 and 36.000.
5. Parties' Contentions
A. Complainant
The Complainant contends that DORFNER trademark is highly distinctive for the Complainant's business since it derives from the surname of the Company's founding father. The inherent distinctiveness of the DORFNER mark, its worldwide registrations and the longstanding use of the homonymous company name, make the mark strong and entitled to a wide scope of protection.
The Complainant contends that the disputed domain name <dorfner.com> is identical to the Complainant's trademark DORFNER because it incorporates the Complainant's name and trademark DORFNER in it entirely. The mere addition of the top level domain “.com” does not alter such identity.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the contested domain name. There is no evidence of the Respondent's use, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods. The Respondent has not been and is not commonly known by the disputed domain name or has acquired any trademark or service mark rights in it.
The Respondent was not authorized by the Complainant to use the DORFNER mark nor to apply for any domain name incorporating it. The Complainant has not permitted the Respondent in any other ways to use its registered trademark.
Furthermore the Respondent is not making any legitimate non-commercial or fair use of the domain name, since it is probably used to generate click-through fees and such use cannot be considered a bona fide offering of goods or services.
The Complainant contends that the domain name <dorfner.com> has been registered and is being used in bad faith.
The Complainant contends that the disputed domain name was registered or acquired 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 for valuable consideration in excess of the Respondent's documented out-of-pocket costs, directly related to the disputed domain name.
The Complainant contends that the Respondent is a “domain grabber” since it is a commercial dealer of internet domain names; the Respondent owns about 26,000 to 36,000 internet domain names containing third parties trademarks that it expects to sell to the respective right holders. The stockpiling of domain names is evidence that the registration has been effected in bad faith.
Furthermore the Complainant contends that the Respondent was exposed to several domain name dispute resolution proceedings that it all lost and in which it never submitted a response.
Moreover the Complainant contends that the Respondent put for sale the disputed domain name at <sedo.com> with no price indication. When the Complainant offered an amount between USD 100 and USD 2,000 by e-mail, the Respondent replied that it sought to obtain an amount between USD 15,000 and USD 20,000.
The Complainant's authorized representative contacted the Respondent again and asked for a transfer of the domain name in consideration of reasonable out-of-pocket expenses; the Respondent gave an identical response by e-mail, claiming USD 20,000.00. The sum claimed by the Respondent is clearly in excess of the registration costs for the disputed domain name. The Respondent's behaviour therefore documents bad faith.
In addition the Respondent is using the domain <dorfner.com> for commercial gain by advertising links to unrelated third party websites, and benefiting from the likely confusion between Complainant's mark and the disputed domain name. The Respondent had knowledge of the Complainant's rights in the mark, as it is evidenced by the fact that the advertised links under <dorfner.com> are in German language and lead to German websites.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainants must prove each of the following three elements:
(i) the 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) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name registered by the respondent has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant's trademark DORFNER; the only difference is the adjunction of the suffix “.com”.
With regards to the suffix “.com” (which indicates that the domain name is registered in the “.com” gTLD), as it was established in many previous decisions (see A.P. Møller v. Web Society,
WIPO Case No. D2000-0135;Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / [email protected],WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447 and Crédit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457) does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; indeed the suffix is a necessary component of the domain name and does not give any distinctiveness.
Therefore, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant's contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the domain name, such as:
(i) use or preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate non-commercial 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.
There is no evidence in the record that the Respondent has any rights or legitimate interests in the domain name.
There is no evidence of the Respondent's use, or demonstrable preparation to use, the disputed domain name in connection with a bona fide offering of goods.
The Respondent has not been and is not commonly known by the disputed domain name or has acquired any trademark or service mark rights in it. The Respondent's name does not coincide with the disputed domain name.
No authorization has been granted to the Respondent by the Complainant to use the DORFNER mark or to apply for any domain name incorporating the Complainant's trademark.
Moreover, the use of the disputed domain name cannot be considered a bona fide offering of goods or services. As a matter of fact, by registering the disputed domain name the Respondent clearly intended to profit from the use of a domain name identical to Complainant's trademark DORFNER, diverting Internet users to websites where pay-per click links exist and generate gain for the Respondent.
Finally, no Response was filed in the case and the Panel, in accordance with paragraph 14(b) of the Rules, draws the inference “that non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights” (see Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493, GA Modefine S.A. and Giorgio Armani v. Yoon-Min Yang,
WIPO Case No. D2005-0090).
Therefore, based on the evidence, the Panel is satisfied that the second element is met.
C. Registered and Used in Bad Faith
The Panel finds that the domain name was registered and is being 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 that the respondent has engaged in 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.
In light of the evidence submitted by the Complainant, the Complainant's registered DORFNER trademark predate the registration of the disputed domain name <dorfner.com> and in the Panel's belief, the Respondent must have known about the Complainant's existence and rights at the time of the registration of the disputed domain name. Indeed, the Respondent's awareness of Complainant's activity and rights is proven by the fact that the Respondent registered a domain name not generic or a common-word derivative but consisting in the surname of the Complainant Company's founding father (see The Common Fund for Nonprofit Organizations v. Modern Limited-Cayman Web Development a/k/a Cayman Trademark Trust,WIPO Case No. D2005-1250). Furthermore when the Complaint was filed, the disputed domain name resolved to a webpage containing several links to numerous unrelated third parties websites in German language. In the light of these circumstances the Panel believes that the choice of the disputed domain name by the Respondent could not result from a mere coincidence.
Moreover, the Complainant has proven that Respondent owns a huge number of domain names, between 26,000 and 36,000, and it was involved in several domain name dispute resolution proceedings that it all lost and in which it never submitted a Response. From the submitted evidence, according to Complainant's view, it can be stated that the Respondent is a “domain grabber” and that consequently his behaviour leads to an inference of bad faith (see Regency Homes, L.C. v. RegencyHomes.comWIPO Case No. D2004-0412).
It has been established in this case that the Respondent put the disputed domain name up for sale at <sedo.com>. Subsequently, the Complainant offered an amount between US$ 100 and USD 2,000 by e-mail but the Respondent replied that it sought to obtain an amount between USD 15,000.00 and USD 20,000. When the Complainant's authorized representative contacted the Respondent again and asked for a transfer of the disputed domain name in consideration of reasonable out-of-pocket expenses, the Respondent gave an identical response by e-mail, claiming USD 20,000.
In the light of the above submitted evidence the Panel finds that it is clear that the disputed domain name was registered or acquired primarily for the purpose of selling or transferring the same 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 disputed domain name.
Finally, Respondent is using the <dorfner.com> domain name for commercial gain by advertising links to unrelated third-party websites, and benefiting from the likely confusion between Complainant's mark and the disputed domain name. The Panel finds it likely that the Respondent is earning click-through fees from this practice. Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of use in bad faith according to numerous previous decisions (see MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios,
WIPO Case No. D2008-0325 and Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955).
Indeed, in the Panel's opinion the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant's products and to obtain information about Complainant's activity, to the Respondent's website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website. By exploiting the Complainant's trademark, the Respondent diverts Internet users looking for the Complainant's website and seeks to gain profit out of the domain name by providing sponsored links on the corresponding website obtaining revenues from the diverted traffic.
In light of all the above circumstances, the Panel is satisfied that the third element is met and that the domain names <dorfner.com> was registered and is being used in bad faith.
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 <dorfner.com> be transferred to the Complainant.
Alessandra Ferreri Sole Panelist
Dated: June 2, 2009
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