WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

evoq communications AG v. Dynamo.com LLC

Case No. D2010-0538

1. The Parties

The Complainant is evoq communications AG of Zurich, Switzerland, represented by Bird & Bird LLP of Germany.

The Respondent is Dynamo.com LLC of New York, United States of America (“USA”).

2. The Domain Name and Registrar

The disputed domain name <evoq.com> (the “Domain Name”) is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2010.

The Center transmitted its request for registrar verification to the Registrar on April 9, 2010. The Registrar replied on the same day, confirming that the Domain Name had been placed under a locked status to prevent transfers or changes during this proceeding and that the registration agreement was in English and required the registrant to consent to the jurisdiction of the courts in King County, Washington. The Registrar also provided the current contact information in respect of the Domain Name on its WhoIs database.

The Center wrote to the Registrar again on April 14, 2010, noting that the Domain Name was set to expire on May 15, 2010, requesting confirmation that it would remain in Registrar LOCK status after the expiry date until this proceeding is concluded, and inquiring whether any action was required by the parties to keep it in this status. The Registrar replied confirming that the Domain Name would remain LOCKED after expiry until this proceeding is concluded, but could be deleted if not renewed if it went into redemption status after expiration; that no action was necessary to maintain the lock prior to expiry; and that should it expire before conclusion of this proceeding, the Complainant could renew it to prevent deletion. The Respondent subsequently informed the Center that it had renewed the Domain Name.

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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 15, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 5, 2010. The Response was filed with the Center May 5, 2010.

The Center appointed Jonathan Turner, Jacques de Werra and David H. Bernstein as panelists in this matter on June 3, 2010. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.

Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.

4. Factual Background

In 1999 the Cadillac division of General Motors unveiled a concept car named “Cadillac Evoq”. The car was not put into production. General Motors registered EVOQ as a mark in class 12 in Switzerland and Germany and made (in August 1998) but subsequently abandoned (in June 2002) an application to register that mark in the USA.

The Respondent is a long-established branding company, providing name conception, logos and brand graphics, trademark research, and promotional copy. Its clients include Intel, Procter & Gamble and Time Warner. It registered the Domain Name in May 2004 and pointed it to a parking page of the Registrar.

The Complainant was founded in 2007 to engage in the methodic development of trademarks and corporate identities. It has been using “Evoq” as a trade name since 2007 and has a website at “www.evoq.ch”. Its customers include Bank Hapoalim (Switzerland), Dornier, Bernafon and the Swiss railways, SBB. It has registered EVOQ as a mark in class 35 in Switzerland and some other European countries.

In late December 2007, the Respondent replied to an inquiry regarding the Domain Name, inviting the inquirer to declare that the “Buyer or Lessee had no malicious intent to threaten the data security nor defraud the customers of any existing entity using a similar name, but intends to build a new and bona fide trademark in good faith.” The inquirer responded affirmatively and the Respondent sent the inquirer a draft transfer agreement which included a warranty in similar terms to the declaration and proposed a price of USD 95,000. The inquirer subsequently withdrew its bid for the Domain Name on the ground that the terms were unacceptable.

5. Parties' Contentions

A. Complainant

The Complainant contends that it has registered rights in the mark EVOQ and that the Domain Name is confusingly similar to this mark.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. It states that it has not consented to the Respondent's registration of the Domain Name, that the Respondent is not commonly known by the Domain Name, that the Respondent is not conducting any activity under the name “Evoq” and that it does not hold any trademark or other rights in this name. The Complainant maintains that the Respondent is not using the Domain Name in connection with any bona fide offering of goods or services, that the only value of the Domain Name derives from the Complainant's mark, and that the only interest for the Respondent to register the Domain Name was the use of “Evoq” by General Motors.

The Complainant alleges that the Respondent registered and is using the Domain Name in bad faith. From the facts that the Domain Name was registered after General Motors' announcement of its concept car called “Evoq” and that the Respondent does not offer any products or services under this name, the Complainant infers that the Respondent must have registered it primarily for the purpose of selling, renting or otherwise transferring it to the Complainant or others for valuable consideration. The Complainant points out that the Respondent must have been aware that General Motors had registered EVOQ as a mark and draws attention to the high price at which the Respondent offered the Domain Name for sale.

The Complainant requests a decision that the Domain Name be transferred to it.

B. Respondent

The Respondent states that it registered the Domain Name as an option for a new brand for a client engaged in medical and archaeological illustration. The name was not adopted by the client since the spelling was considered too obscure for its customers. The Respondent thereafter retained the Domain Name as a brand option for new companies, services or products. The Respondent submits that its retention of the Domain Name is part of a legitimate business and that it therefore has rights or legitimate interests in the Domain Name.

The Respondent points out that a fee of USD 75,000 is routine for the conception of a naming option for a new enterprise and draws attention to its terms requiring its clients (and any domain name purchasers) to confirm that they will not misuse the domain name in violation of the intellectual property rights of third parties.

The Respondent insists that its registration of the Domain Name was in good faith. It points out that selling a domain name is not per se contrary to the UDRP and reiterates that it has not offered the Domain Name for sale to the general public and that its standard terms preclude misuse by the purchaser.

The Respondent emphasises that it registered the Domain Name before the Complainant was formed and has not used it to promote confusingly similar or competing products or pornographic or illegal content or maliciously to redirect traffic.

The Respondent considers that the Complainant cannot rely on General Motors' rights in the mark EVOQ for a concept car as proof of bad faith registration, pointing out that it was not an ongoing product and that General Motors' had abandoned its application to register the mark EVOQ in the USA before the Respondent registered the Domain Name. The Respondent also draws attention to information suggesting that the inquiry to purchase the Domain Name was made on behalf of the Complainant.

The Respondent requests a decision denying the Complaint.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has registered rights in the mark EVOQ.

The Domain Name is identical or confusingly similar to this mark, from which it differs only in the addition of the generic top level domain suffix, which is discounted when making the comparison required by this element of the UDRP.

The fact that the Complainant acquired its rights only after the Domain Name was registered is not relevant to this element of the UDRP, but rather is a matter to be taken into account with the second and third elements. This is the consensus view of the Center's UDRP panelists: see paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.

The first requirement of the UDRP is satisfied.

B. Rights or Legitimate Interests

The Panel is doubtful whether the Respondent can claim rights or legitimate interests in respect of the Domain Name. In the Panel's view, this element of the UDRP must require something more than the speculative retention of a domain name originally registered in good faith. However, it is not necessary to resolve this in view of the Panel's finding on bad faith.

C. Registered and Used in Bad Faith

Faced with the fact that the Domain Name was registered in 2004, well before the Complainant was formed in 2007, the Complainant argues that the Domain Name was registered in bad faith directed at General Motors, which had announced a concept car called “Evoq” in 1999.

Some members of the Panel are inclined to conclude that, to prove bad faith registration, the Respondent must have had a bad faith intention with respect to the Complainant's mark. However, the Panel does not need to reach a definitive conclusion on that issue because, even if bad faith directed at third parties could constitute bad faith for the purpose of this requirement, the Panel does not find the existence of any such bad faith on the evidence in this case. By the time the Domain Name was registered, General Motors had abandoned its interest in the name “Evoq”, at least in the USA; and, even if it had not done so, the Domain Name could have been registered and used in good faith in relation to unconnected products or services (which, Respondent persuasively shows, was its intention at the time it registered the Domain Name). The Panel sees no reason to disbelieve the Respondent's certified explanation that it registered the Domain Name in good faith in connection with a proposal for a client in the business of medical and archaeological illustration.

Nor has use of the Domain Name in bad faith been established. It is not disputed that the Domain Name has merely been directed to a holding page with no attempt to profit from or damage the Complainant's reputation under the name “Evoq”. The Complainant has not shown that its mark is so well-known that passive holding could, in this circumstance, constitute bad faith use. Cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Respondent's willingness to sell the Domain Name for a substantial price to a purchaser who confirmed its intention “to build a new and bona fide trademark in good faith” does not substantiate bad faith. This four-letter “.com” Domain Name may well be sufficiently attractive intrinsically to have justified this price without reference to General Motors' long-abandoned mark or the Complainant's newly-formed company.

The third requirement of the UDRP is not satisfied. The Complaint must therefore be rejected.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: June 16, 2010