28th May 2007

WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

uwe GMbH v. Telepathy, Inc.

Case No. D2007-0261

 

1. The Parties

The Complainant is uwe GmbH, Schwäbisch Gmünd, Germany, represented by Menold Bezler Rechtsanwälte, Germany.

The Respondent is Telepathy, Inc., Washington, United States of America, represented by ESQwire.com Law Firm, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <uwe.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 February 22, 2007. On February 26, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On March 2, 2007, 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 for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 6, 2007. The Center verified that the Complaint together with the amendment to the Complaint (referred to collectively in this decision as ‘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 March 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response April 16, 2007. The Response was filed with the Center April 16, 2007.

On April 27, 2007, the Complainant made a supplemental filing. (Paragraph 12 of the Rules provides that the Panel, in its sole discretion, may request further statements or documents from the parties. No such information was requested. Further, in providing its supplemental filing, the Complainant did not explain why it should be accepted, including whether there were any new facts or circumstances which it could not reasonably have anticipated, or provide evidence of, in it original Complaint. For these reasons, the Panel did not admit the supplemental filing.)

The Center appointed James A. Barker, Christian Schalk and David E. Sorkin as panelists in this matter on May 14, 2007. 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 a company that manufactures spa equipment, such a solariums, saunas, current-swimming and hydro-therapy massage systems. The Complainant operates a website at “www.uwe.de”.

The Complainant is the owner of various registered marks for UWE. Its German and international registered mark were first filed in 1969. The Complainant also has registered marks in the European Union (first filed in 1998) and in the Unites States of America (first filed in 2003, and now registered in the principal register of the USPTO).

The Complainant uses the UWE mark in connection with the supply of its products. It claims to use the mark in Germany and other countries, including Japan and the United States of America, and in Europe.

The Respondent’s business includes the speculative registration of domain names. The disputed domain name was registered by the Respondent in 1998. At the same time the Respondent registered a large portfolio of domain names comprising three-letter combinations.

As of the date of this decision, and as referred to in the Complaint, the disputed domain name reverts to a ‘portal’ website. The website includes links to other websites, under headings including “University”, “Tanning equipment”, “Solarium”, “Bristol”, “Uwe tanning”, “Films”, “Picture”, “Books”, “Students”, “Uwe”, and “Private”.

 

5. Parties’ Contentions

A. Complainant

The following contentions are summarized from the Complaint.

After more than 50 years in business the Complainant is one of the leading manufacturers of solariums in the world and has developed a considerable reputation and goodwill in its UWE trademark.

The disputed domain name is identical to the Complainant’s mark.

The Respondent has created a high degree of similarity between the content of its website at the disputed domain name and the Complainant’s trademark, by choosing white letters on a blue background. (The Complainant’s clear implication is that the Respondent deliberately created this similarity to confuse Internet users.)

Under German law these facts would constitute an action for transfer of the disputed domain name. German law is applicable in this case, because the Respondent was a German resident when the disputed domain name was registered (citing e.g. Russel Coutts v. Massimo Gallotta, WIPO Case No. D2006-0008).

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent does not have a registered trademark for the term “uwe”; is not licensed by the Complainant to use its mark; and is not commonly known by that mark. There is no relation between the Respondent and the term “uwe”, and no evidence that the Respondent is making a legitimate non-commercial use of the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The Respondent has intentionally attempted to attract Internet users by creating confusion with the Complainant; and has prevented the Complainant from reflecting its trademark in a corresponding domain name.

A finding of bad faith may be made where the Respondent knew or should have known of the international registration and the Complainant’s trademark. (See Moari Television Service v. Damien Sampat, WIPO Case No. D2005-0524.)

B. Respondent

The following is summarized from the Response.

There is no basis for transferring the disputed domain name to the Complainant.

The Respondent takes no position regarding the validity of the Complainant’s mark, or its application to this proceeding.

The Respondent has a legitimate interest in the disputed domain name. The Respondent acquired the disputed domain name because it incorporated the simple 3-letter combination “uwe”, which the Respondent believed was valuable because it was a short, easy-to-remember domain name. The Respondent uses the disputed domain name in connection with its provision of advertising links, and its use as a search engine.

It is well-established that anyone is entitled to register a 3-letter combination (Kis v. Anything.com Ltd., WIPO Case No. D2000-0770). The Complainant does not have exclusive rights to this term, evidenced by 3.98 million third party results for “uwe” on an advanced Google search (the first 50 results of which were attached as evidence to the Response).

The links on the Respondent’s website that relate to the Complainant, were not selected by the Respondent. Those links were automatically generated based on user searches.

The Complainant has not demonstrated that the disputed domain name was registered or is being used in bad faith. There is no evidence that the Respondent had knowledge of the Complainant’s mark when it registered the disputed domain name. There is no basis for the Respondent to have had knowledge of the Complainant’s mark, since the only registered trademark that existed in 1998 (when the disputed domain name was registered) was a German one. Nor has the Complainant provided evidence that its products and services enjoyed notoriety in the United States of America (where the Respondent resides) in 1998.

The Respondent seeks a finding of reverse domain name hijacking.

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove 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 in bad faith and is being used in bad faith.

The Complainant must prove each of these three elements, which are discussed in turn as follows.

A. Identical or Confusingly Similar

The Complainant provides evidence of having registered rights in the trademark UWE. It is clear that the disputed domain name is relevantly identical to that mark.

The Complainant also contends that, in relation to confusing similarity (and, by implication, more generally) that German law should apply. The Panel does not accept that contention. A particular jurisdiction’s law might be taken into account by a Panel, if the Panel considers it directly relevant (e.g. if both parties are resident of the same jurisdiction). The Complainant claimed that the Respondent was for some time a German resident. But the Complainant provided no evidence to support that contention. The Panel can find no other reason to have particular regard to German law in this case.

For these reasons, the Complainant has established this first element.

B. Rights or Legitimate Interests

For the reasons set out below, in relation to bad faith, it is not necessary for the Panel to consider this element.

C. Registered and Used in Bad Faith

The Panel finds that, overall, there is insufficient evidence that the disputed domain name was registered and used in bad faith.

The Complainant’s most difficult hurdle is to establish that the Respondent knew of its mark when the disputed domain name was registered. Some panels (although not all) have found that it is enough if a respondent ought to have known of a complainant’s mark, when the disputed domain name is registered. (For example, in Moari Television Service v. Damien Sampat, WIPO Case No. D2005-0524, cited by the Complainant, the panel stated that a finding of bad faith can be made when the respondent “knew or should have known of the registration and use of the trademark prior to registering the domain”, and cited other panel decisions to similar effect.)

However the Panel finds that, even on this approach to paragraph 4(a)(iii) of the Policy, which is more favorable to the Complainant, the Complainant does not succeed. The reasons for this are as follows.

Evidence that the Respondent should have been aware of the Complainant might be drawn from a number of sources. There might be such evidence if the Complainant was well-known in the Respondent’s jurisdiction; was well-known in a field or jurisdiction in which the Respondent operates; the mark was distinctively associated with the Complainant; or if it appears, on a common-sense approach and the surrounding facts, that the similarity between the domain name and mark was deliberately created. Here, there is insufficient evidence of this kind.

The Complainant argued that it is well-known in its field, and that it does business in a number of jurisdictions, including the Respondent’s (the United States of America). The Complainant gave little evidence to support these contentions. The Complainant only provided copies of two pages from its own website. Those pages contained brief statements of a marketing nature, and (in effect) reiterating its claims that it has been in business for 50 years and is the world’s leading supplier of solariums and health equipment. The Complainant provided no other evidence of its operations. Neither did it provide evidence of its business in the United States of America or otherwise, such that the Respondent should have been aware of it.

There is also little evidence that the Respondent should have been aware of the Complainant because of the field in which the Respondent operates. The Respondent speculates in domain names, and gave evidence that it registered the disputed domain name at the same time as a large number of other 3-letter domains names. The evidence of third-party interest in the letters “uwe” makes it more difficult for a finding that the Respondent was aware specifically of the Complaint’s mark when the disputed domain name was registered.

The other facts of this case do not, on balance, support a finding that the Respondent should have been aware of the Complainant’s mark. The value of “uwe” as a 3-letter combination makes the Respondent’s claim (that it did not know of the Complainant) plausible. The three letter combination “uwe” is also an abbreviation for different generic terms (like, e.g., University of West England or “Unterwasser-Electric Gesellschaft”, which formed part of the Complainant’s company name for some years). Furthermore, “Uwe” is a German first name.

Even if the Respondent had taken some active steps to conduct a trademark or other search, it is not clear that this would have discovered the Complainant’s trademark rights at that time. The Respondent is resident in the United States of America, while the Complainant is a German company. When the disputed domain name was registered (1998), the Complainant did not have its mark registered in the United States of America. The Panel also takes into account that, at the time the disputed domain name was registered, few trademark offices of the world provided the public with online access to its trademark registry, and that search engines were not as developed as they are today.

For these reasons, the Complainant has not established this third element.

D. Reverse Domain Name Hijacking

The Respondent seeks a finding of reverse domain name hijacking. Reverse domain name hijacking is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name”. The evidence does not support a finding that the Complaint was brought in bad faith.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


James A. Barker
Presiding Panelist


Christian Schalk

Panelist


David E. Sorkin

Panelist

Dated: May 28, 2007