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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Thorsten Rathmann v. Administrator Lunarpages / Customer of Lunarpages

Case No. D2007-1887

1. The Parties

The Complainant is Thorsten Rathmann, Herford, Germany, represented by Harmsen & Utescher, Germany.

The Respondent is Administrator Lunarpages / Customer of Lunarpages, La Habra, United States of America, represented by what is stated to be the “Legal Department of “Inncona.net”.

2. The Domain Name and Registrar

The disputed domain name <inncona.net> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2007. On December 21, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On December 21, 2007, Tucows transmitted by email to the Center its verification response confirming that the 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”), 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 December 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2008. Following a (German) request for extension by the Respondent of January 17, 2008, the Center extended the deadline for the Response to January 25, 2008. The Response was filed with the Center in German on January 24, 2008.

The Center appointed Tobias Zuberbьhler as the sole panelist in this matter on January 30, 2008. 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 purports to be “extremely successful” in the field of education and financial transactions, especially within the area of private placement.

The Complainant claims to have used the trade name “Inncona” for many years and is the owner of the German device trademark no. 398 26 474 INNCONA with a priority date of May 12, 1998.

The Respondent has registered the disputed domain name on October 24, 2007 and operated a protest site against the Complainant under the domain name. According to site visits by the Panel on February 11 and 12, 2008, however, the website is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant objects to the use of the domain name at issue by the Respondent and bases its Complaint on the following grounds:

(a) The domain name is identical to the Complainant’s trademark and trade name.

(b) The Respondent is not the owner of any trademark, trade name or any other rights in the name “Inncona”. There is no relationship between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant nor has he otherwise obtained any authorization to use the trademark and trade name “Inncona”. There is neither evidence of use or preparation of use of the domain name in connection with a bona fide offering or service.

(c) The Respondent obviously had knowledge of the Complainant’s trademark and trade name, since he uses the trademark and the trade name of the Complainant in an identical form on the website corresponding to the domain name. The Respondent uses the domain name for the purpose of defamation of the Complainant. It is also obvious that the registration of a domain name which is identical to the trademark of the Complainant constitutes a registration with the purpose of preventing the Complainant from reflecting its trademark in a corresponding (identical) domain name. Moreover, the domain name was registered and is being used by the Respondent with the primary purpose of disrupting the business of the Complainant.

B. Respondent

The Respondent requests a rejection of the Complaint due to the fact that the Complainant is stated in the Complaint as “Thorsten Rathmann”, while in reality only a person called “Torsten Rathmann” (first name without “h”) exists. The Respondent also contests the authenticity of the trademark registration certificate submitted by the Complainant.

The Respondent further points to criminal investigations in Germany against the Complainant alleging investment fraud and claims its right to free speech. Because the reporting about the Complainant allegedly originates on US soil, the Respondent claims that US law should be applicable.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

- that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

-that the Respondent has no rights or legitimate interests in respect of the domain name; and

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

Paragraph 4(c) of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the domain name at issue.

Paragraph 4(b) of the Policy sets out circumstances which, again 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.

A. Procedural Issues

The Respondent requests a rejection of the Complaint due to the fact that the Complainant is stated in the Complaint as “Thorsten Rathmann”, while in reality only a person called “Torsten Rathmann” (first name without “h”) exists. The Respondent also contests the authenticity of the document evidencing trademark registration submitted by the Complainant.

Any typographical error in the designation of the Complainant is obviously insignificant. The Panel also has no reason to doubt the authenticity of the document evidencing trademark registration. It appears to be a standard excerpt from a trademark search database.

The Complainant, on the other hand, objects to the fact that the Legal Department of “Inncona.net” submitted the Response, and not the registered Respondent “Administrator Lunarpages / Customer of Lunarpages”. The Panel, however, is sufficiently satisfied that the Response was sent by representatives of the Respondent and dismisses the Complainant’s objections.

The Respondent has submitted its Response in the German language, although the Registration Agreement is in English and thus the language of these proceedings is English. Since both parties appear to have a German background, however, the Panel is prepared to accept the Response in its present form. Nevertheless, the Panel decides to render its decision in English, as the Complaint was filed in English in accordance with paragraph 11 of the Rules and in light of sufficient circumstances indicating that the Respondent understands the English language.

B. Identical or Confusingly Similar

Since the domain name at issue is identical to the Complainant’s trademark INNCONA, the Complainant has fulfilled paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

With respect to protest sites, panels have at times taken divergent views as to whether a respondent could claim a legitimate non-commercial or fair use of a domain name which is identical to the Complainant’s trademark. There seems to be a divide between some US cases (where much weight is said to be given to First Amendment defenses) and non-US cases, where a right of free speech may not in itself be regarded as a sufficient basis for a protest site under a domain name which is identical to the Complainant’s trademark (see the comprehensive summary of the case law by panelist David Bernstein in Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014; compare also 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461)

The Respondent in this case contends that US law should be applicable because the Respondent’s reporting about the Complainant originated from US soil. However this may be, the language of the Respondent’s website was German and thus apparently directed to a German-speaking audience in line with the Complainant’s principal location. Accordingly, the case at hand could quite reasonably be said to have at least a close connection to Germany and German law. In any event, the Panel believes that there is sufficient UDRP case precedent to allow resolution of this matter without express reference to the laws of either country.

This Panel shares the view of a number of UDRP panelists that the right to freely express one’s views about a trademark owner on the Internet does not require a domain name which is identical to that Complainant’s trademark. Such identity can only foster confusion. It follows from this that the Panel does not believe that the Respondent here has succeeded in establishing rights or legitimate interests in the disputed domain name. The Panel notes the following circumstances to support such a finding: (1) The website connected to the disputed domain name does not appear to be active any more (according to visits by the Panel on February 11 and 12, 2008); (2) the logo used on the Respondent’s website is identical to the one used by the Complainant on its website; (3) there was no clear disclaimer by the Respondent on the website disassociating it from the Complainant. For a protest site, the Respondent may be expected to choose a domain name distinguishing it sufficiently from the Complainant and reflecting the critical nature of the site.

The fact that certain criminal investigations appear to be ongoing against the Complainant in Germany cannot change such finding, because the present proceedings are not an adequate forum to assess any respective allegations. In any event, one investigation appears to have been closed, and the outcome of other investigations is unclear. While the Panel certainly does not take the allegations by the Respondent lightly, it seems more appropriate to refer to the national courts and criminal investigators for any legal assessment and redress in this regard. Moreover, a finding by this Panel under the expedited UDRP process would not of course preclude a court of competent jurisdiction from subsequently reaching a different conclusion if it were so asked.

The Complainant has thus fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The additional circumstances set forth above are also applicable to the assessment of bad faith registration and use. Clearly, the purpose of registering the disputed domain was to foster confusion with the Complainant; to use, in effect, the Complainant’s own mark as a soapbox for posting critical content about the Complainant. At the same time, no visible attempt has been made by the Respondent to clarify that the Complainant itself has no relationship with the domain name or content posted thereon. While the Panel expresses no view on the merits or otherwise of the Respondent’s criticism of the Complainant, such registration and use is not in this Panel’s view consistent with good faith. In particular, this Panel finds persuasive the reasoning of the panel in 1066 Housing Association Ltd, supra, and the cases cited therein under the third element. Although the criticism material previously posted at the disputed domain name has now apparently been removed and no active webpage is visible, even were the domain name to be passively held, this would not necessarily prevent a finding of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In addition, the former use of the Complainant’s logo and absence of a disclaimer further support a holding of bad faith registration and use according to 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 <inncona.net> be transferred to the Complainant.

Tobias Zuberbьhler
Sole Panelist

Date: February 13, 2008