|Kläger||Unverferth Manufacturing Co., Inc.|
|Beklagter||Domain For Sale/Email your offers|
|Entscheider||Tootal, Christopher P.|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Unverferth Manufacturing Co., Inc. v. Domain for Sale
Case No. D2001-1469
1. The Parties
The Complainant in this administrative proceeding is Unverferth Manufacturing Company, Inc., (hereinafter "UMC") a corporation organized under the laws of the state of Ohio, of the United States of America, having its principal place of business in West Kalida, Ohio, represented by G. Franklin Rothwell and C. Nichole Gifford, of Rothwell, Figg, Ernst & Manbeck P.C., Washington, DC, United States of America. The Respondent is Domain For Sale | Email your offers!, Radviliskis, Lithuania.
2. The Domain Name and Registrar
The domain name in issue is <4unverferth.com> ("the Domain Name"), the Registrar of which is Domain Discover of San Diego, California, United States of America, ("Domain Discover").
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received on December 20, 2001, the hard copies of the Complaint and accompanying documents and on January 7, 2002, an electronic copy of the same. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center. On January 8, 2002, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.
On January 7, 2002, the Center transmitted via e-mail a request for registrar verification in connection with this case. On the same day, Domain Discover transmitted via e-mail to the Center its Verification Response, confirming that the registrant is Domain for Sale, the Respondent herein and stating that the Administrative Contact, the Technical Contact and Zone Contact is Domain For Sale | Email your offers!, Web Master of the above Lithuanian address.
No Response has been filed by the Respondent. The Center attempted to send notification of the Complaint to the Respondent by courier, by e-mail and by fax. Only the fax seems to have been successfully transmitted. Notification of Respondent Default was also successfully transmitted by fax on January 30, 2002, although delivery by courier and e-mail again failed. The Panelist concludes that the Respondent has deliberately chosen not to respond to the Complaint, but that it has received adequate notice of the same.
On February 8, 2002, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality and Independence, and his decision is scheduled to be forwarded to the Center by February 22, 2002.
4. Factual Background
(a) The Complainant is the registered proprietor of United States Trademark No. 2,156,495 protecting the mark UNVERFERTH ("the Trademark"), registered on May 12, 1998.
(b) The Domain Name was registered on July 16, 2001.
5. Parties Contentions
The Complainant asserts, inter alia, as follows:-
(i) UMC is a manufacturing company in the business of building and selling agricultural equipment, and is the owner, user and registrant of the Trademark for, inter alia, agricultural vehicles, machinery and transporters in the United States.
(ii) Continuously since 1968, UMC has used the Trademark and as a result of years of use and extensive marketing, promotion and sale of goods under the Trademark, consumers and members of public in general have come to recognise it as designating equipment and services of the highest quality originating exclusively from UMC.
(iii) Sometime prior to 1999, UMC attempted to register the Domain Name <unverferth.com>. However, the domain name was unavailable for registration. Then UMC instead registered the domain name <4unverferth.com> under which it sold and advertised its agricultural equipment. On or about May 13, 1999, UMC learned that the domain name <unverferth.com> was available for registration. At that time, in order to strengthen its rights in the Trademark, UMC registered the domain name <unverferth.com> and allowed its registration of <4unverferth.com> to lapse.
(iv) Upon information and belief, on about July 16th, 2001, Respondent, or its predecessor in interest, registered the Domain Name for operation of a website which contains adult pornographic material.
(v) During September 2001, a representative of UMC was informed that its former website <4unverferth.com> was directing customers to an adult pornographic website.
(vi) At that time UMC investigated and determined based on the information in the Whois Database that the <4unverferth.com> website was registered to *BUY THIS DOMAIN* at 5 Tpagrichnery St., #33 Yerevan, 375010 Armenia.
(vii) On October 10, 2001, by and through its attorneys, UMC sent a letter to the address listed above demanding that the Registrant listed at that time in the Whois Database cease and desist its bad faith, infringing use of the website <4unverferth.com>. This letter was returned unopened stating that the addressee had moved.
(viii) The Domain Name website currently states that anyone interested in purchasing the domain name should submit an offer of at least US $ 450.00. An employee of UMC submitted an offer to purchase the domain name for US $600 from his personal e-mail address. The UMC employee received a response stating that the cost of the domain name was US $1500.
(ix) The Respondent registered and is using the Domain Name to link to pornographic material and upon information and belief, the Respondents choice of the Domain Name was no coincidence. UMC has reason to believe that the Respondent or the Respondents predecessor in interest is in the business of registering recently expired domain names for the sole purpose of diverting Internet users to its pornographic websites and to tarnish the former Registrants goodwill by using a confusingly similar name to furnish pornography.
As noted above, no Response has been filed.
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
As to element (i), the Panelist has no hesitation in accepting the Complainant's submission that the Domain Name is confusingly similar to the Trademark. The addition of the numeral 4 as a prefix is wholly non-distinctive.
As to element (ii) of paragraph 4(a) of the ICANN Policy, the Respondent has done nothing to demonstrate that it has any rights or legitimate interests in the Domain Name. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the ICANN Policy apply (i.e. before notice of the dispute preparation to use the Domain Name, being commonly known by the Domain Name or making a legitimate non-commercial or fair use of the Domain Name). The facts put forward by the Complainant suggest (see paragraph 5(ix) above) that the Respondent's interest in the Domain Name was not in connection with a bona fide offering of goods or services, but rather to take advantage of the reputation of the Trademark to attract potential customers to a pornographic website. In the absence of any justification from the Respondent of the activities in relation to the Domain Name, the Panelist concludes that the Complainant has established element (ii).
Lastly, the Complainant must establish element (iii), i.e. that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b)(i) of the Policy indicates to a Respondent that the following circumstances shall be evidence of registration and use of a domain name in bad faith:
"Circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name,"
The offer to sell the Domain Name to UMC for US$ 1500, a sum in excess of what the Respondents costs could possibly be, satisfies the Panelist that the Complainant has established element (iii).
It is unnecessary for the Panelist to make any finding concerning the manner in which the Respondent may otherwise be using the Domain Name.
The Panelist, therefore, concludes that the Respondent registered and has been using the Domain Name in bad faith.
In the light of the findings in paragraph 7 above, the Panelist concludes that:-
- the domain name <4unverferth.com> is confusingly similar to the trademark UNVERFERTH of the Complainant;
- the Respondent has no rights or legitimate interests in the domain name;
- the domain name has been registered and is being used in bad faith.
Accordingly, the Panelist orders that the Domain Name <4unverferth.com> be transferred to the Complainant, Unverferth Manufacturing Co., Inc.
Dated: February 22, 2002