12th Jan 2009
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ADITO Software GmbH v. Domain Admin, Mrs. Jello LLC
Case No. D2008-1771
1. The Parties
The Complainant is ADITO Software GmbH of Germany, represented by Rothkopf Theobald Elbel Patent- and Rechtsanwdlte Rechtsanwalt, of Germany.
The Respondent is Domain Admin, Mrs. Jello LLC of United States of America, represented by ESQwire.com Law Firm, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <adito.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2008. On November 18, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On November 19, 2008, Moniker Online Services, LLC 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced November 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response December 11, 2008. The Response was filed with the Center December 11, 2008.
The Center appointed James A. Barker, Torsten Bettinger and David E. Sorkin as panelists in this matter on December 29, 2008. The Panel finds that it was properly constituted. Each member of 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 the owner of, inter alia, a registered figurative mark for “ADito” in Germany (registered in 1999), as well as a corresponding Community and international mark. The Complainant is also the owner of a word mark for ADITO registered in Germany in 2007. The marks are registered in various classes, generally concerning IT goods and services.
The Response does not detail the Respondent's business. The Respondent has, however, been a previous respondent in proceedings under the Policy. In one of those proceedings, the then panel found that “The Respondent appears to operate a business in which it registers descriptive or generic domain names and seeks to resell them for profit.” Canadian Hockey Association v. Mrs Jello, LLC, WIPO Case No. D2005-1050.
At the date of this dispute, the disputed domain name referred to a ‘pay-per-click' (“PPC”) or “landing” website. The Respondent also provides evidence of that website, as it was on December 10, 2008. At that date, the website, in English, contained a number of links titled e.g., “Male Strippers”, “Adult Personals”, and “Dating Sex”.
5. Parties' Contentions
The Complainant says that the disputed domain name is phonetically identical to its registered marks.
Secondly, the Complainant says that the Respondent's related website offers sexual related goods or sexual services provided by third parties. Customers and clients of the Complainant have objected the content of that website and have asked whether it has any connection with the complainant. The Respondent's website has been used in this way recently to pressure the Complainant to purchase the disputed domain name. The Respondent's website includes a link via which the disputed domain name is offered for sale.
On September 18, 2008 an employee of the Complainant sent an email to the Respondent regarding purchase of the disputed domain name. A few hours later the Complainant received the answer “How can I help you? If it is regarding the domain adito.com you are welcome to make an offer”. The Complainant replied “Hello, we are really interested in the www.adito.com domain. What's your proposal to get an agreement? Best regards”. According to the Complaint, 23 minutes later on Friday, September 19, 2008 the Complainant received the answer by email “Do not have a proposal. Let's try it again: You are welcome to make an offer”. The Complainant replied on September 19, 2008 offering USD $1,500. The Complainant received no answer. Nevertheless, it is obvious that the only intention of the Respondent is to sell the disputed domain name for an overweighed price to the Complainant.
Thirdly, in relation to the Respondent's bad faith, the Complaint states “Please see also arguments submitted [above]”.
The Respondent claims, in summary, that there is no basis for transferring the disputed domain name to the Complainant.
The Respondent says that the disputed domain name solely incorporates the common Italian word “adito”, which means entrance. The Respondent acquired the disputed domain name for this reason alone on August 21, 2005 as the successful bidder in a SnapNames.com domain name auction. Strong corroboration that Respondent selected the disputed domain name because of its value as a generic word (and not because of Complainant's trademark) is the fact that Respondent has registered dozens of other common word domain names in English, Italian and other foreign languages.
The Respondent also claims that the Complainant has made several misstatements of fact. It is untrue that the Respondent “recently” placed adult content on its website. The website has displayed adult-related content since Respondent purchased the disputed domain name in 2005. The Complainant made this misstatement to suggest adult content was added to somehow “pressure” Complainant to buy the domain name, which is untrue. Complainant also falsely states that Respondent's website contained a link to enable users to contact Respondent “in order to buy” the domain. The website never contained a link suggesting the disputed domain name was for sale. Nothing in the record supports the inference that it was the Respondent's intention to sell the disputed domain name to the Complainant.
The Complainant does not have exclusive rights to the common Italian word “adito”. Moreover, in 2005 when the Respondent acquired the disputed domain name, the Complainant was the owner of a design mark, not a mark for the word standing alone. The differences between the design mark and the disputed domain name are more than sufficient to find they are not identical or confusingly similar. Under the Policy, descriptive marks are entitled to very limited protection and “small differences” are sufficient to establish the lack of confusing similarity under these circumstances. The Complainant's word marks were registered in 2007 after the disputed domain name was registered and, thus, are not enforceable or relevant.
The Respondent has a legitimate interest in the disputed domain name because “adito” is a common word in the dictionary that anyone is entitled to register, if done so without the intent to profit from the trademark rights of another. There was no such intent here. The fact that “adito” is a common term is underscored by substantial third party use, evidenced by over 400,000 third party Google results containing the word “adito”. Moreover, the Respondent has used the disputed domain name in connection with bona fide goods and services in the nature of pay-per-click ads which further establishes its legitimate interest.
The Respondent denies knowledge of the Complainant or its trademarks when it acquired the disputed domain name. (The Respondent attaches an affidavit of its managing member to this effect). The Complainant has proffered no evidence suggesting that it had such knowledge. Nor was there a basis for the Respondent to have had such knowledge when it acquired the disputed domain name. The Complainant does not appear to operate its business nor does it own a trademark in the United States, where the Respondent is domiciled.
The Respondent seeks a finding of reverse domain name hijacking against the Complainant.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Respondent must submit to this mandatory administrative proceeding where the Complainant asserts in its Complaint, in accordance with the Rules, that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
The Policy is explicit that “the complainant must prove that each of these three elements are present.” It is well-established that the Complainant must generally provide evidence and argument which is credible to the Panel on the balance of probabilities. See e.g. Whitstrand Investments Limited T/A DataDirection v. Direction Research Group Limited, WIPO Case No. D2005-0101; Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc., WIPO Case No. D2003-0185; Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001.
Whether the Complainant has met its burden in relation to the three elements of paragraph 4(a) of the Policy is discussed as follows.
A. Identical or Confusingly Similar
The Complainant claims that the disputed domain name is phonetically identical to its registered marks. The Respondent denies that the disputed domain name is identical or confusingly similar, essentially because the Complainant's relevant mark is stylized. The Respondent argues that the word mark which the Complainant registered after the disputed domain name is not enforceable in these proceedings. The Respondent also states that, because the Complainant's mark incorporates a descriptive Italian word, it is weak.
Similar arguments to these of the Respondent have not been accepted by prior panels regarding this first element of the Policy. (See e.g. Hero v. The Heroic Sandwich, WIPO Case No. D2008-0779: “Whether a domain name is identical (or confusingly similar) to a mark is to be judged objectively, against the dominant textual elements of a complainant's mark, rather than graphic or stylized elements.” More recently, see e.g. Verridian Plc v. Nadine Leech, WIPO Case No. D2008-1539: “In considering the similarity between a domain name and a trademark, the only issue is whether the letter strings are identical or similar”). The Complainant's first registered mark is stylized, but not significantly. Even if it were, the Complainant's registered word mark is relevant, at least in relation to this first element. Paragraph 4(a)(i) of the Policy refers only to a mark in which the Complainant “has rights”. It is clear from the opening words of paragraph 4(a) that it is enough for the Complainant to have those rights when it files the Complaint with the applicable provider.
The Respondent's claimed weakness of the marks is also not relevant in the circumstances of this case. While the Complainant's mark may have a descriptive meaning in Italian, there was no evidence in this case of such a meaning in Germany, where the marks are registered. It is possible that Internet users, not familiar with Italian, could perceive the mark as a fanciful (and therefore distinctive) mark.
It is well-established that, in relation to paragraph 4(a)(i), the gTLD should usually be disregarded for the purpose of comparison. Disregarding the “.com” extension here, the Panel finds that the disputed domain name is relevantly identical to the Complainant's mark.
B. Rights or Legitimate Interests
Because of the Panel's finding in relation to bad faith, it is not necessary for it to make a finding in relation to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out illustrative examples of bad faith. Each of them requires or implies that the Respondent had an intention to take unfair advantage of the Complainant or its trademark in registering and using the disputed domain name. More generally, a panel may under certain circumstances, make a finding against a respondent on this ground where there is probable bad faith intent demonstrated in the record.
The Complaint provides no evidence on which the Panel could make such a finding. Apart from evidence of its marks, the only evidence attached to the Complaint were copies of the emails exchanged between the Complainant and the Respondent. The Respondent denies any knowledge of the Complainant and its marks when it registered the disputed domain name. Having regard to the lack of evidence presented by the Complainant, that denial is plausible in the Panel's view. It remains plausible even if the Respondent's explanation for choosing the disputed domain name (because it “incorporated a common word” in Italian) appears somewhat contrived.
In relation to bad faith, the Complainant refers only to its argument that the Respondent lacks rights or legitimate interests. The Complainant claims that the Respondent has no such rights or legitimate interests: one, because the Respondent's PPC website offers sexual related goods and services of third parties and, two, because the Respondent intended (claims the Complainant) to sell the disputed domain name.
Neither of these arguments by themselves establish bad faith. For the first, simply operating a website which provides links to sexual related goods or services is not a ground for a finding of bad faith. See e.g., a previous decision of this panel, constituted by two of the same panel members, in Lana Sociedad Cooperativa Ltda. v. Alberta Hot Rods, WIPO Case No. D2005-1200.
Regarding the second of the Complainant's arguments, an offer for sale is not, by itself, evidence of bad faith. Even if it were, there is no evidence that the Respondent made such an offer. The Complainant made that offer, and the Respondent did not ultimately reply to it. Nothing in that correspondence suggests that the Respondent was aware of the Complainant when it registered the disputed domain name. Neither did the Complainant provide evidence of its claim that the Respondent's website offered the disputed domain name for sale via a link.
In these circumstances, the Panel finds that the Complainant has not established this third element.
D. Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking against the Complainant. The Respondent requests this because the “Complainant surely knows that ‘adito' is a common Italian word which anyone is entitled to register in good faith.”
Paragraph 15(e) of the Rules allows a panel to make a finding of reverse domain name hijacking. The Rules define reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. (Reverse domain name hijacking is referred to in paragraph 15(e) as illustrative of a complaint brought in bad faith.)
A finding under paragraph 15(e) of the Rules is intended only for those cases where there is proven bad faith such as malice or dishonesty or some other abuse of process. See e.g., Plan.Net concept Spezialagentur für interactive Kommunikation GmbH v. Murat Yikilmaz, WIPO Case No. D2006-0082; citing Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309. While the Complainant has not provided sufficient evidence to make its case, the evidence does not suggest that the Complainant acted in such bad faith in filing the Complaint. The Complainant has a registered mark which it is entitled to take action to protect. There is no evidence that the Complainant ought to have been aware of whether “adito” was a descriptive term in Italian. The Respondent's publicly available address is in the United States and its website is in English neither of which suggest any obvious Italian connection.
For these reasons, the Panel does not make a finding of reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
James A. Barker
David E. Sorkin
Dated: January 12, 2009