Westmore · UDRP DecisionPrimagas.com
The Panel ordered transfer of <primagas.com>. It found the domain confusingly similar to the Complainant’s registered PRIMAGAS mark, found no rights or legitimate interests based on the unrebutted record and passive holding, and found bad-faith registration and use based on the Respondent’s likely knowledge of the mark, passive holding, and efforts to sell the domain for GBP 10,000.
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The decision illustrates a transfer based on the combination of an exact trademark match, a respondent default, passive holding, and a panel-accepted effort to sell the domain for a substantial stated amount. The sale effort supplied a specific Policy paragraph 4(b)(i) basis for bad faith, while passive holding reinforced both the absence of legitimate interests and bad-faith use under the circumstances.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Primagas Energie GmbH & Co. KG v. James H Park Case No. D2016-0047 1. The Parties Complainant is Primagas Energie GmbH & Co. KG of Krefeld, Germany, represented by Weber & Sauberschwarz, Germany. Respondent is James H Park of Gimhae-Si, Republic of Korea. 2. The Domain Name and Registrar The disputed domain name <primagas.com> is registered with DropCatch.com 726 LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2016. On January 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 10, 2016. The Center appointed Gary J. Nelson as the sole panelist in this matter on February 15, 2016. 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 Complainant is the owner of several German Trademark Registrations that incorporate the PRIMAGAS trademark for energy related goods/services. Specifically, Complainant owns at least the following trademark registrations: Country/Territory Registration No. Mark Classes Filing Date German 738091 ARETZ PRIMAGAS 4 January 2, 1959 German 30623270 PRIMAGAS 1, 4, 6, 11, 20, 37, 39, 42 April 10, 2006 German 30661021 ENERGIE ERSTER WAHL PRIMAGAS 1, 4, 6, 11, 20, 37, 39, 42 October 5, 2006 The disputed domain name <primagas.com> appears to have been registered on April 24, 2015. There is no active website associated with this disputed domain name. 5. Parties’ Contentions A. Complainant Complainant was founded in the 1950s and is an energy supply company featuring liquified natural gas, among other goods/services. Complainant operates a website at “www.primagas.de”, which has been operational since 1998. The PRIMAGAS portion of Complainant’s trademarks is identical to the “primagas” portion of the disputed domain name. Respondent does not run a commercial business. Respondent is offering to sell the disputed domain name for GBP 10,000. The disputed domain name <primagas.com> is confusingly similar to Complainant’s PRIMAGAS trademark. Respondent has no rights or legitimate interests in the disputed domain name. Respondent registered and is using the disputed domain name in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred: (i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Complainant has established that it owns prior rights in the PRIMAGAS trademark and that the disputed domain name is confusingly similar to Complainant’s PRIMAGAS trademark. Complainant owns several German Trademark Registrations containing the PRIMAGAS trademark. Accordingly, Complainant has established rights in its PRIMAGAS mark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption). The disputed domain name, <primagas.com>, is confusingly similar to Complainant’s PRIMAGAS-based trademarks because the disputed domain name incorporates the entirety of Complainant’s PRIMAGAS trademark and merely adds the generic Top-Level Domain suffix “.com”. Neither the addition of a purely dictionary term to a well-known mark nor the addition of a generic Top-Level Domain suffix is typically sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also Montage Hotels & Resorts, LLC v. Daniel Kirchhof / Unister GmbH, WIPO Case No. D2011-1042 (finding the addition of the geographic term “Beverly Hills” to complainant’s MONTAGE trademark created a domain name <montage-beverly-hills.com> that was confusingly similar to complainant’s trademark); see also Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied). The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has failed to file a response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name). By not filing a response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the word “primagas”. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 , the panel held that a lack of rights or legitimate interests could be found where (1) respondent is not a licensee of the complainant; (2) complainant’s rights in its related trademarks precede respondent’s registration of the domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a response, Respondent also failed to provide any evidence that it may be a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its PRIMAGAS trademark. For the disputed domain name, Respondent is maintaining a passive and undeveloped website. Respondent’s failure to develop an active website corresponding to the disputed domain name is evidence supporting the conclusion that Respondent has no rights or legitimate interests in the disputed domain name. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273 (finding no rights or legitimate interests where respondent failed to submit a response to the complaint and made no use of the domain name in question); see also Melbourne IT Limited v. Grant Matthew Stafford, WIPO Case No. D2000-1167 (finding no rights or legitimate interests in the disputed domain name where there is no proof that respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods or services before notice of the domain name dispute, the disputed domain name did not resolve to a website and respondent is not commonly known by the disputed domain name). The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Panel finds that Respondent registered and is using the disputed domain name in bad faith. The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the PRIMAGAS trademark. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”). Respondent is maintaining a passive website associated with the disputed domain name. Under the circumstances of this case, the Panel finds this inactivity to be further evidence that Respondent registered and is using the disputed domain name in bad faith. See Alitalia –Linee Aeree Italiane S.p.A. v. Colour Digital, WIPO Case No. D2000-1260 (finding bad faith where respondent made no use of the domain name in question and there were no other indications that respondent could have registered and used the domain name in question for any non-infringing purpose) and also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 . The Panel holds that Respondent’s efforts to sell the disputed domain name for GBP 10,000 is evidence that Respondent registered the disputed domain name for the primary purpose of selling the domain name registration to Complainant and, therefore, supports a finding of bad faith registration and use pursuant to Policy, paragraph 4(b)(i). The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <primagas.com> be transferred to Complainant. Gary J. Nelson Sole Panelist Date: February 19, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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