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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Red Chip Company Limited v. Paul van der Heu

Case No. DNU2005-0003

 

1. The Parties

The Complainant is Red Chip Company Limited, Port Louis, Mauritius, represented by Baker & McKenzie.Wong & Leow, Singapore.

The Respondent is Paul van der Heu, Amsterdam, Netherlands.

 

2. The Domain Name and Registry

The disputed domain name <behringer.nu> is registered with .NU Domain Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2005. On November 1, 2005, the Center transmitted by email to .NU Domain Ltd. a request for registrar verification in connection with the domain name at issue. On November 1, 2005, .NU Domain Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 November 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2005.

The Center appointed Arne Ringnes as the sole panelist in this matter on December 6, 2005. 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 dispute concerns the domain name <behringer.nu>.

The Complainant deals in electronics. It sells amplifiers and other electronic apparatus.

The Complainant is the holder of the trademark BEHRINGER and the BEHRINGER & ear device (figure). These trademarks are registered in, amongst others, classes 9, 11 and/or 15 of the International Classification of Goods and Services in Argentina, Australia, Brazil, Cambodia, Canada, Croatia, Dominican Republic, Estonia, Finland, Federal Republic of Germany, Honduras, Hong Kong S.A.R., Iran, Israel, Japan, Kazakhstan, Korea, Latvia, Mauritius, Moldova, Monaco, New Zealand, Nicaragua, Paraguay, Peru, Puerto Rico, Russia, Singapore, South Africa, Spain, Sweden, Taiwan R.O.C., Turkmenistan, Uganda, Ukraina, the United Kingdom, Uruguay, the United States of America, Uzbekistan, Zaire (Republic of Congo) and Zambia.

There are a total of 55 registered and 34 pending BEHRINGER trademarks worldwide.

The Complainant or other companies in the Behringer Group have been using the BEHRINGER trademarks worldwide in relation to audio and audio-related products since 1989.

The Respondent has registered the disputed domain name, and has operated a website under this domain name. The website has contained a “discussion forum” related to Behringer products.

On July 1, 2005, the Complainant sent an email to the Respondent setting out the rights of the Complainant and the Behringer Group to the trademarks and requesting that the Respondent take steps to transfer the domain name to the Complainant or the Behringer Group.

By an email dated July 1, 2005, the Respondent replied:

“Even though the name Behringer is not exclusive to your company and the forum does not exclusively contain discussion groups on Behringer audio product I am willing to take the forum down, but not just hand you the domain. Unless you can offer me a better deal on transferring the domain then just the cost of doing so I will do just that. It could well be other parties with legitimate claims to the brand name BEHRINGER might be interested in the domain”.

Following further correspondence between the parties, the Respondent has redirected all traffic to the website “www.behringer.net”. This website is related to Behringer Enterprise, which is primarily involved in the manufacture of band sawing machines, and is not related to the Complainant or the Behringer Group.

 

5. Parties’ Contentions

A. The Complainant

The Complainant contends that the domain name reproduces fully and is clearly identical or similar to the point of creating confusion in respect of the BEHRINGER trademarks.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant is not aware of any rights that the Respondent may have acquired in the BEHRINGER trademarks, whether by registration or through use. It is asserted that the prima facie evidence strongly suggests that the Respondent has no rights or legitimate interests in the domain name. The Complainant argues that the burden of proof is shifted to the Respondent and refers in this respect to De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005.

With respect to the condition that the domain name was registered and is being used in bad faith, the Complainant states that the Respondent has demonstrated a clear intention to profit from the transfer of the domain name. In particular the Complainant refers to the Respondent’s email of July 1, 2005, in which he indicated his willingness to transfer the domain name to the Complainant but “not to just hand you the domain”. The Respondent added that unless the Complainant “can offer me a better deal on transferring the domain then just the cost of doing so I will do just that”.

Further, the Complainant alleges that when it subsequently became apparent that the Complainant was reluctant to pay more than the documented out-of-pocket expenses for the transfer of the domain name, the Respondent, in his email of July 25, 2005, demonstrated that he was quite prepared to approach other parties who may be willing to pay more. The last paragraph of his email of July 25, 2005, states:

“… I intend to transfer the domain name to Behringer GmbH (“www.behringer.net”) as soon as they agree with my offer to them”.

The Complainant further contends that the Respondent has intentionally used the domain name to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the BEHRINGER trademarks as to the sponsorship, affiliation or endorsement of the said website. On this point, the Complainant refers to The New York Times Company v. New York Internet Services, WIPO Case No. D2000-1072.

The Complainant states that Internet users who come across the domain name on the basis of an Internet search for “BEHRINGER” are deceived into thinking that the domain name leads to a website that is sponsored by, affiliated to or endorsed by the Complainant. Consequently, the Respondent would have diverted traffic away from websites that are actually sponsored by, affiliated to or endorsed by the Complainant when the Internet users access the website by typing the domain name. Furthermore, when the Internet users see the homepage, they may be misled into thinking that the website was sponsored by, affiliated to or endorsed by the Complainant due to the statement, “WELCOME TO THE BEHRINGER FORUMS”. They may then be more inclined to make donations pursuant to the request on the homepage. Therefore, the Respondent would gain financial or other benefits.

The Complainant also points out that the discussion forum hosted on the website contained links to the Simple Machines Forum and Lewis Media. The Simple Machines Forum is a community forum that subsists through banner advertisements or donations and sponsorship. Lewis Media, on the other hand, is a company that provides a full range of Internet design and implementation services.

B. The Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant shall prove that the domain name is identical or confusingly similar to the Complainant’s trademark.

The disputed domain name <behringer.nu> contains the Complainant’s trademark BEHRINGER entirely and is identical to the trademark. Further the Complainant has proved that it has trademark rights in BEHRINGER, which is a mark registered in a number of jurisdictions for the Complainant.

Thus, the Panel finds that the first condition under the Policy is satisfied.

B. Rights or Legitimate Interests

Secondly, the Complainant shall prove that the Respondent has no rights or legitimate interest in respect of the domain name.

The Complainant has stated that it is not aware of any rights that the Respondent may have acquired in the trademark BEHRINGER. This statement is supported by the fact that the Respondent in his emails to the Complainant has not indicated any such rights. As held in De Agostini S.p.A.v. Marco Cialone, WIPO Case No. DTV2002-0005, the burden of proof is shifted to the Respondent if the Complainant provides prima facie evidence. The Panel finds that this is the case in this matter.

In the email correspondence between the parties, the Respondent has held that his website is a discussion forum for the Complainant’s products, and that the purpose of the site was to fill the need for a discussion forum for users of the Complainant’s products.

The Respondent’s use of the domain name does not amount to legitimate non-commercial or fair use of the domain name. As held in Tridos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776, the Respondent “… could readily use a domain name which telegraphs to visitors precisely what his site contains and thereby obviate any risk of deception”. In that case, the Panel went on to state:

“In the Panel’s view a deceptive use of another’s trade mark as part of a domain name is rarely if ever likely to give rise to a right or legitimate interest in respect of a domain name”.

The Panel concurs with this view, and adds that the Respondent’s website encourages the visitors to make a donation. Accordingly, the Respondent also has an interest in commercial gain.

The Respondent has also in his emails made the point that third parties, such as the band sawing machine manufacturer Behringer Enterprise, use the mark BEHRINGER. The Panel is of the opinion that this argument is clearly without foundation. What is decisive in this respect is that the Complainant has proved its trademark rights and that the Respondent is using this trademark without any rights to do so.

Accordingly, the Panel concludes that the second condition under the paragraph 4(a)(ii) of the Policy is fulfilled.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent has registered and used the disputed domain name in bad faith. In this respect, the Panel would like to point to the fact that the Respondent in his email dated July 1, 2005, to the Complainant stated that he would transfer the domain name provided that “you can offer me a better deal on transferring the domain then just the cost of doing so I will do just that. It could well be other parties with legitimate claims to the brand name BEHRINGER might be interested in the domain”.

This statement indicates bad faith on the part of the Respondent.

Furthermore, and despite the Respondent’s email comment that there are third parties using BEHRINGER as a trademark or trade name, it seems more likely than not, based on the case file, that the Respondent had the Complainant in mind when he registered the disputed domain name.

Thus, the Panel finds that the registration and use of the domain name was an attempt to freeride on the Complainant’s goodwill. Consequently, the third condition under paragraph 4(a)(iii) of the Policy is proved.

 

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 <behringer.nu> be transferred to the Complainant.

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Arne Ringnes
Sole Panelist

Dated: December 23, 2005