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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Abat AG v. Vadim Borziak

Case No. D2007-1642

1. The Parties

The Complainant is Abat AG, of Bremen, Germany, represented by Lambert Grosskopf, of Germany.

The Respondent is Vadim Borziak, of Calgary, Canada, represented internally.

2. The Domain Name and Registrar

The disputed domain name <abat.com> is registered with Schlund + Partner.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2007 naming as Respondent “1&1 Internet, Inc”. On November 9, 2007, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name at issue. On November 13, 2007, Schlund + Partner transmitted by email to the Center its verification response indicating the registrant as “Vadim Borziak”. In response to an email communication from the Center conveying inter alia the registrant information and contact details provided by the registrar in its email of November 13, 2007, the Complainant filed an amendment to the Complaint naming “Vadim Borziak” as Respondent on November 14, 2007. 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”), 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 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2007. The Response was filed with the Center on December 3, 2007.

In the amendment to the Complaint one of the Respondents, original listed as “John Doe” was identified by the Registrar Schlund & Partner as Vadim Borziak of Calgary, Canada. The Panel will consider “Vadim Borziak” as the Respondent for the purposes of this proceeding.

The Center appointed Clive Elliott as the sole panelist in this matter on December 10, 2007. 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.

On December 16, 2007, the Complainant filed with the Center an unsolicited supplemental filing in response to the Respondent's Response. On December 18, 2007, the Respondent submitted a reply to the Complainant's filing. The Panel notes that the Rules provide for the submission of the Complaint by the Complainant and the Response by the Respondent. No express provision is made for supplemental filings by either party, except in response to a deficiency notification or if requested by the Center or the Panel. In the circumstances of this case, the Panel has not considered it necessary to consider these unsolicited filings.

4. Factual Background

The Complainant was founded in 1998. The Complainant's core business is the introduction of SAP software and its integration with existing solutions, company structures and web systems. It is an Implementation Partner with SAP AG. The Complainant employs approximately 70 salaried employees in Germany and approximately 20 in Minsk.

The Complainant is the holder of the trademark ABAT, registered at the German Patent and Trademark Office for goods and services in classes 09, 35, 41 and 42 under registration number 20087312. The trademark registration was transferred to the Complainant with effect from April 12, 2002.

In its Complaint the Complainant initially asserted that the domain name was registered by a non disclosed registrant under the “Terms and Conditions for Private Domain Name Registration” by the registrar 1&1 Internet, Inc. As noted above, the Complainant then asserted (in its Amended Complaint dated November 14, 2007) that Vadim Borziak was the proper respondent and should be treated by the Panel as the sole Respondent in the proceeding. The Complainant asserts that Vadim Borziak is neither holder of a trademark, nor does he use the name “abat” as his company name, nor is he commonly known by the domain name.

The Respondent has for approximately 10 years been using the domain name <abat.com> in or in relation to the online dating industry.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it is the proprietor of the trademark ABAT and that the domain name <abat.com> is confusingly similar to the trademark. It argues that by comparing the trademark with the domain name, the domain name is identical in letter to the Complainant’s trademark.

The Complainant states that the Respondent has used and still uses the website under the domain name <abat.com> to promote Russian brides.

The Complainant asserts that Vadim Borziak is not the holder of a trademark, nor does he use the name “abat” as his company name, nor is he commonly known by the domain name.

The Complainant further states that the mark is arbitrarily applied by the Respondent and having not been granted any license from the Complainant it is inexplicable why the Respondent chose the domain name <abat.com>. It argues that the term “abat” does not possess any meaning in the colloquial sense nor is it occupied with any common raison d’кtre. Accordingly, it is asserted that the Respondent intended to maximize Internet search exposure by attracting consumers looking for the evocative term “abat” and thereby increasing their commercial gain.

The Complaint contends that bad faith is to be found in circumstances where Internet users searching for a particular mark are subsequently redirected to a third party website and that at the time of the registration of the domain name the Respondent was well aware of the Complainant’s trademark.

B. Respondent

The Respondent in turn states that the Complainant’s trademark ABAT is registered only in Germany.

The Respondent points out that a large number of domain names contain the word “abat” and that this shows that the Complainant did not have interest in any Internet properties such as domain names (which could be viewed as “identical” to the Complainant’s trademark).

The Respondent notes that the domain name <abat.com> was registered by the Respondent on March 12, 1998, and has been maintained by the same Respondent for almost 10 years and that was 4 years before the Complainant first possessed any rights to the trademark, namely on April 12, 2002.

The Respondent states that the domain name <abat.com> was registered to reflect a company name operated by the Respondent at the time of registration which was registered in the province of Alberta, Canada in 1997 under the trade name “AB&T Intercom” (business registration # 669176).

The Respondent indicates that for almost 10 years <abat.com> has been a primary e-mail domain for all business, personal, clients contact communications and/or memberships subscriptions and is very well known in the dating industry and outside of the industry by e-mail for <abat.com>.

The Respondent finally notes that it operates its business in Canada whereas the Complainant operates its business in Germany in completely different market segments, in completely different geographical locations and that they are not competitors to each other.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

- The domain name is identical or confusingly similar to the trademark; and

- The Respondent has no right or legitimate interest in respect of the domain name; and

- The domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has registered the name/trademark ABAT and that it has certain rights in this name/trademark. The Panel also accepts that the Complainant has used the ABAT name/trademark in such a way as to provide the Complainant with rights and interests in the name/trademark.

Having said this, it is necessary to bear in mind that the issue is whether the domain name is identical or confusingly similar to a trademark in which the complainant has rights (refer paragraph 4(a)(i) of the Policy – with emphasis added). The Complainant may have interests and rights in Germany, but particularly in a situation where there is evidence that other parties in other countries use the same or a similar name/trademark it is necessary to gauge those rights and interests in proper context.

In the present circumstances the Panel is prepared to find for the Complainant on this ground but for reasons that become apparent below this is not sufficient to succeed overall because all three grounds need to be satisfied.

Nevertheless, in terms of this ground the Panel finds that the Complainant has satisfied it.

B. Rights or Legitimate Interests

As various courts and panels have said, special care has to be exercised where one party attempts to acquire exclusive rights in descriptive words and phrases. The same can be said for words, terms, phrases and acronyms that are apt to describe particular goods or services.

In a situation such as the present one, a complainant should be given the benefit of the doubt when it is able to establish arguable rights and interests in a particular word, term or phrase. It is also appropriate that if the complainant is able to satisfy the panel that it has rights and interests in a particular name/trademark that the question should be asked of the respondent - “Why have you chosen the particular name/trademark?” In other words, is the respondent able to explain and justify its decision to do so.

The Respondent’s response/explanation comes in essentially four parts:

1. It asserts that a large number of domain names contain the word “abat” and that the Complainant is clearly not the only party with an interest in the word;

2. That the Complainant first acquired rights in the trademark ABAT in 2002 which was a number of years after the Respondent acquired its rights in the domain name <abat.com> , namely in 1998;

3. That the Respondent chose the domain name <abat.com> to reflect a company name operated by the Respondent at the time of registration, which was registered in the province of Alberta, Canada in 1997 under the trade name “AB&T Intercom” (business registration # 669176); and

4. That the Respondent has used the domain name <abat.com> for approximately 10 years to run a business in a different country and providing different goods and services to those of the Complainant.

The Panel considers that cumulatively this evidence and these arguments are persuasive and provide a reliable basis for the Panel to draw the inference that the Respondent has a right and legitimate interest in the disputed domain name. The Panel further notes that the Complainant has not submitted any evidence that the ABAT trademark was widely used at the time of registration of the disputed domain name.

For these reasons the Panel finds for the Respondent on this ground.

C. Registered and Used in Bad Faith

Given the comments made above under “Rights and Legitimate Interests” the Panel finds for the Respondent on this ground.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Clive Elliott
Sole Panelist

Dated: December 24, 2007