WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Südkurier GmbH v. Reinhard Herrmann
Case No. D2011-1437
1. The Parties
The Complainant is Südkurier GmbH of Konstanz, Germany, represented by CMS Hasche Sigle Partnerschaft von Rechtsanwälten und Steuerberatern, Germany.
The Respondent is Reinhard Herrmann of Ockenheim, Germany.
2. The Domain Name and Registrar
The disputed domain name <südkurier.com> [xn--sdkurier-65a.com] is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2011. On August 25, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 6, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 7, 2011.
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” 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 September 12, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2011.
The Center appointed Brigitte Joppich as the sole panelist in this matter on October 21, 2011. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is the publisher of the "Südkurier", a regional daily newspaper with a circulation of about 130,000, which is one of the biggest regional newspapers in the southern areas of the federal state of Baden-Württemberg, Germany. The Complainant publishes its newspaper in print and, since 1996, also online, using the domain names <südkurier.de> and <suedkurier.de>.
The Complainant is registered owner of two trademarks including SÜDKURIER, namely German trademark no. 901996 SÜDKURIER UNABHÄNGIGE TAGESZEITUNG FÜR DEN SÜDEN DES LANDES BADEN-WÜRTTEMBERG & design with priority of October 22, 1971, and German trademark no. 30425716 SÜDKURIERTEL with priority of May 5, 2004 (hereinafter referred to as the “SÜDKURIER Marks”).
The disputed domain name was registered on July 1, 2009 and has been used in connection with a parking website which provides advertising links to third parties’ websites, offers the disputed domain name for sale, and also provides news articles copied from the Complainant's website. The Respondent advertises the disputed domain name on Google by stating that it is the “website of the leading daily newspaper for Lake Constance, the Black Forest and Upper Rhine”.
The Respondent has previously been involved in at least seven other domain name cases where the transfer of the domain names at issue to the respective complainant was ordered in each case (cf. Kingfisher France v. Reinhard Herrmann,
WIPO Case No. DES2010-0011; Kingfisher SAS v. Domains by Proxy Inc / Reinhard Herrmann,
WIPO Case No. D2009-1197; Kingfisher France SAS v. Reinhard Herrmann and Domains by Proxy Inc.,
WIPO Case No. D2009-1167; Confédération Nationale Du Crédit Mutuel v. Reinhard Herrmann,
WIPO Case No. DTV2009-0008; Societe Anonyme des Galeries Lafayette and Galeries Lafayette Voyages v. Domains By Proxy, Inc./Reinhard Herrmann, WIPO Case No. D2009-0904; BCBG MAX AZRIA GROUP contre M. Reinhard Herrmann,
WIPO Case No. DFR2008-0040; France Printemps v. Reinhard Herrmann,
WIPO Case No. D2007-0971).
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is identical to the Complainant's title rights and company symbol and bears a strong similarity to the SÜDKURIER Marks. With regard to German trademark no. 901996 SÜDKURIER UNABHÄNGIGE TAGESZEITUNG FÜR DEN SÜDEN DES LANDES BADEN-WÜRTTEMBERG & design, the Complainant contends that the mark is dominated by the element SÜDKURIER because the other elements are written in much smaller font and placed under the dominating word SÜDKURIER. With regard to German trademark no. 30425716 SÜDKURIERTEL the Complainant contends that SÜDKURIER is the only distinctive element of this mark as the suffix TEL is merely a descriptive abbreviation for telecommunications.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as he has no registered trademark rights in SÜDKURIER, does not use the name “Südkurier” in any respect other than the disputed domain name and is not known under the disputed domain name.
(3) The disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant contends that the Respondent is clearly familiar with the Complainant's mark as he copies news articles from the Complainant’s website on the website available at the disputed domain name. With regard to bad faith use, the Complainant contends that the disputed domain name has been registered for the purpose of selling it to the Complainant or a competitor at an unreasonably high price, that the Respondent is somehow related to a company named “Domdoo LLC”, which has registered domain names in a wide range of industries and is a typical domain grabbing company, and that the Respondent and Domdoo LLC have previously been involved in UDRP proceedings. The Complainant further argues that the Respondent is seeking to exploit the reputation of the Complainant for its own activities and to inflict harm on the Complainant's business: The Respondent copied entire subpages of the Complainant's website at “www.südkurier.de” to one of the sub-pages of “www.südkurier.com” or included at least links to the Complainant's website therein, and advertises on Google, stating that the domain name is the "website of the leading daily newspaper for Lake Constance, the Black Forest and Upper Rhine".
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trade mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name consists of the term “südkurier”, which is included in the Complainant’s trademarks, and is confusingly similar to such trademarks.
The fact, that the Complainant’s trademarks contain additional elements, namely UNABHÄNGIGE TAGESZEITUNG FÜR DEN SÜDEN DES LANDES BADEN-WÜRTTEMBERG and TEL, respectively, does not hinder a finding of confusing similarity. With regard to the trademarks at issue, the Panel finds that the trademark SÜDKURIER UNABHÄNGIGE TAGESZEITUNG FÜR DEN SÜDEN DES LANDES BADEN-WÜRTTEMBERG & design is dominated by SÜDKURIER as the additional elements UNABHÄNGIGE TAGESZEITUNG FÜR DEN SÜDEN DES LANDES BADEN-WÜRTTEMBERG (German for “independent daily newspaper for the south of the state of Baden-Württemberg) are merely generic, while SÜDKURIER is at the same time reflected in the trademark in a font many times bigger than the additional words. As to as the trademark SÜDKURIERTEL, the suffix TEL is merely a descriptive abbreviation for telecommunications.
Furthermore, the similarity between a trademark and a disputed domain name is not eliminated only by the fact that the trademark includes generic elements which are not included in the disputed domain name (cf. Corcom, Inc. v. Jazette Enterprises Limited,
WIPO Case No. D2007-1218: omission of the word “sports”; Shell Vacations LLC, Shell Vacations Club, L.P. v. Pluto Domain Services Private Limited/PrivacyProtect.org,
WIPO Case No. D2008-1713: omission of the word “club”; Stanworth Development Limited v. Michael Rand,
WIPO Case No. D2008-0158: omission of the word “online”).
Finally, it is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between a complainant’s trademark and a disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,
WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among panelists that a complainant can make only a prima facie case, as long as it is unrebutted, to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent's rights or legitimate interests in the domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Respondent’s use of the disputed domain name in connection with a parking website which also contains content copied from the Complainant’s websites is no bona fide use under the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The Panel is satisfied that the Respondent must have registered the disputed domain name with full knowledge of the Complainant and its rights in the SÜDKURIER Marks. Just like the Complainant, the Respondent is located in Germany. Furthermore, the fact that the Respondent uses the disputed domain name in connection with a website providing content directly copied from the Complainant’s websites makes it more likely than not that the Respondent registered the disputed domain name being fully aware of the Complainant and its rights in the SÜDKURIER Marks.
As to bad faith use, by using the disputed domain name in connection with a parking website which also includes content directly copied from the Complainant’s websites, the Respondent is misleading Internet users into thinking that his business is in some way connected to, sponsored by or affiliated with the Complainant or that his business or his activities are approved or endorsed by the Complainant. The Respondent therefore was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. Such finding is supported by the fact that the Respondent advertises the disputed domain name on Google by stating that the domain is the "website of the leading daily newspaper for Lake Constance, the Black Forest and Upper Rhine".
Furthermore, the finding of bad faith is supported by the fact that the Respondent was ordered to transfer domain names to the respective complainant in at least seven earlier proceedings where registration and use in bad faith were established. The Respondent therefore engaged in a pattern of conduct aimed at preventing owners of a trademark or service mark from reflecting their marks in a corresponding domain name as required under paragraph 4(b)(ii) of the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements 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 <südkurier.com> [xn--sdkurier-65a.com] be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: October 31, 2011
