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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Gerling Beteiligungs-GmbH (GBG) v. Domain For Sale! Services Client

Case No. D2006-0239

 

1. The Parties

The Complainant is Gerling Beteiligungs-GmbH (GBG), Cologne, Germany, represented by Loschelder Rechtsanwдlte, Germany.

The Respondent is Domain For Sale! Services Client, Yanisco Limited, Nicosia, Cyprus.

 

2. The Domain Name and Registrar

The disputed domain name <gerling.org> is registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2006. On February 27, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On February 27, 2006, Tucows 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 March 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2006.

The Center appointed Nathalie Dreyfus as the sole Panelist in this matter on April 12, 2006. 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 well-known financial service company based in Germany. The Complainant is the owner of the following trademarks:

- Dutch wording trademark “GERLING” n° 30066361.7 registered on November 23, 2000.

- Dutch figurative trademark “GERLING” n° 39742684.4 registered on November 19, 1997.

- Dutch figurative trademark “GERLING” n°39742683.6 registered on November 19, 1997.

- Dutch figurative trademark “GERLING” n°39742670.4 registered on November 13, 1997.

- Dutch figurative trademark “GERLING INSIGHT” n°30558200.3 registered on November 28, 2005.

The domain name <gerling.org> was registered on June 18, 2000.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the domain name is identical to its trademarks “GERLING” and that the Complainant and its group of companies are the owners of a large variety of different trademarks which contain the word “Gerling”.

The Complainant contends that the Respondent’s last name is not Gerling and that the word “gerling” has no meaning in any language except as the name of the Complainant’s company.

The Complainant considers that the disputed domain name is not used to post any content but only to direct internet users who enter said domain name to the website “www.escorts.co.uk”.

In order to prove the Respondent’s bad faith and lack of rights the Complainant contends that the Respondent does not use the domain name in a way which indicates a bona fida offering of goods and services nor does the domain name refer to the Respondent’s name. The Complainant considers that the Respondent intends to take advantage of the reputation of the Complainant’s name and trademarks. Furthermore, the Complainant contends that the word “gerling” has no meaning in any language except as the name of the Complainant’s company. It is not a coincidence that the named registrant in the Whois record is “DOMAIN FOR SALE”. Furthermore, the Complainant contends that the Respondent attempts to sell the domain to the Complainant for the amount of 15,000 €.

B. Respondent

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

 

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) That 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) 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 used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has demonstrated that it is the owner of the trademark “GERLING”.

The domain name <gerling.org> is identical to the trademarks “GERLING” with the simple inclusion of the “.org” suffix. Such an inclusion is due to the current technical specificities of the domain name system. This inclusion should not be taken into account in evaluating the identity or similarity of the disputed domain name and the Complainant’s mark (New York Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 or A & F Trademark, Inc., Abercrombie & Fitch Store, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc. et al., WIPO Case No. D2003-0172).

The comparison between the disputed domain name and the Complainant’s trademarks reveals the following:

- the contested domain name <gerling.org> is entirely composed of the mark “GERLING”; and

- the contested domain name includes the “.org” suffix, which is not to be taken into account as explained above.

As a result, the Panel finds that the domain name is identical or at least confusingly similar to the trademarks “GERLING” owned by the Complainant. Therefore, the Panel considers that the condition set out by paragraph 4(a)(i) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out examples of what a respondent may demonstrate to show that it has rights or legitimate interests in respect of a domain name.

“Any of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a 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.”

The Panel finds that the case file does not contain evidence of the Respondent’s use or preparations for use in connection with a bona fide offering of goods and services. The website associated with the domain name diverts Internet users to another website providing a directory for sexual services.

The Respondent has no relationship with the Complainant and the Complainant has not granted the Respondent the right to use this trademark in the domain name or otherwise.

Further, the Respondent does not appear to be known by the name “Gerling”.

Based on the case file and in the absence of a rebuttal by the Respondent, the Panel finds that the condition set out by paragraph 4(a)(ii) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

It should be taken into consideration that the circumstances of bad faith are not limited to the above.

It has been demonstrated that the Whois record of the disputed domain name <gerling.org> includes, as part of the registrant’s identification, the indication “domain for sale!”. In the Panel’s view indicates that the Respondent registered the domain name primarily for the purpose of selling it for valuable consideration.

The Panel agrees with the Complainant’s contention that the word “gerling” has no meaning in English or in other languages. The Complainant is well known for its financial services. Consequently, it cannot be a mere coincidence that Respondent has chosen this domain name but rather it appears that the Respondent knew about the activities and the trademark of the Complainant. (F. Hoffmann-La Roche AG v. MedCenter Canada, WIPO Case No. D2005-1291).

Therefore, the Panel finds that the domain name was registered in bad faith.

In order to meet the requirement of paragraph 4(b) of the Policy, it is not sufficient to prove that the domain name is registered in bad faith. It is also necessary to prove that the domain name is being used in bad faith.

The Complainant argues that the Respondent is in bad faith as it proposed to sell the domain name, the Complainant contends that “although it was the Complainant who initiated the correspondence, bad faith has to be assumed because the immediate response of the Complainant’s request was the offer to transfer the domain name for the mentioned amount of 15,000€”.

Some WIPO UDRP panels have found that offering a domain name for sale for an excessive price does not on its own always constitute bad faith, in particular when a complainant initiates the contact with a respondent (see for example Tvist Giyim Sanayi Pazarlama Ve Ticaret A.S. v. Machka Company C/O Yenidьnya,Yasin, WIPO Case No. D2005-0957 and Internationale Spar Centrale B.V. v. Scientific Process & Research, Inc., WIPO Case No. D2005-0603).

It appears that the Complainant contacted anonymously the Respondent to acquire the disputed domain name. The Panel notes that the Respondent immediately offered to transfer the domain name for 15,000€. The Panel finds that this may suggest the presence of circumstances enumerated in paragraph 4(b)(i) of the Policy.

Further, the domain name <gerling.org> directs Internet users to the website “www.escourts.co.uk”. This website is a directory for sexual services.

Previous UDRP decisions have confirmed that using a domain name to direct Internet users to an adult oriented website may be evidence of bad faith under the Policy (Beers LV Limited, De Beers LV Trademark Limited v. Registerfly.com, WIPO Case No. D2005-0630).

The Panel finds that the Respondent attempted by directing Internet’s users to the website website “www.escourts.co.uk” either to benefit from the goodwill of the Complainant’s trademark for its own commercial purposes or to hurt the image of the Complainant which both indicate bad faith.

Based on the record the Panel finds that the disputed domain name <gerling.org> has also been used in bad faith.

Taking into account the above-mentioned elements, the Panel concludes that the domain name <gerling.org> is registered and used in bad faith and consequently the Complaint meets the requirements foreseen by the Policy, paragraph 4(a)(iii).

 

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 <gerling.org> be transferred to the Complainant.

 

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Nathalie Dreyfus
Sole Panelist

Dated: April 28, 2006