|Kläger||7(S) Personal GmbH|
|Entscheider||Christie, Andrew F., Pibus, Christopher J. (Presiding), Sorkin, David E.|
|Entscheidung||Complaint denied with dissenting and concurring opinion|
The Complainant is 7(S) Personal GmbH of Hamburg, Germany represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte of Germany.
The Respondent is Zhaohua Luo of Oxnard, California, United States of America.
The disputed domain name <7s.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2010. On November 17, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 17, 2010, GoDaddy.com, Inc. 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 on November 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2010. The Response was filed with the Center on December 13, 2010.
The Center appointed Christopher J. Pibus, Andrew Frederick Christie and David E. Sorkin as panelists in this matter on January 6, 2011. 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.
The Complainant operates a business providing personnel recruitment, temporary staffing and other human resource services for various industry sectors. The Complainant has established offices in over 110 locations in Germany, but also several other several European countries. The Complainant’s business has over 6,600 employees.
The Complainant owns several trademark registrations for the trademarks 7S, 7(S) & Design, 7(S) Personal, 7(S) Engineering, 7(S) Gastronomie, 7(S) Service & Montage, 7(S) Office, and 7(S) Aviation. In particular, the Complainant owns the following Trademark Registrations for 7S and 7(S):
German Trademark Registration No. 30052622 dated November 9, 2000;
German Trademark Registration No. 30062747 dated November 20, 2000;
German Trademark Registration No. 30140771 dated October 5, 2001;
European Trademark Registration No. 748804 dated November 23, 2000;
European Trademark Registration No. 756229 dated January 1, 2001.
The Complainant operates a website in association with three domain names, namely: <7s.de>; <7s-gruppe.de>; and <7s-gruppe.com> in connection with its business of providing human resource services.
The Respondent is an individual residing in Oxnard, California, United States of America. The Respondent registered the disputed domain name <7s.com> on April 15, 1998. At the time the Complaint was filed, the disputed domain name reverted to a parking site.
The Complainant owns the trademark 7S. The Respondent has registered the domain name <7S.com> which is identical to the Complainant’s registered trademark, except for the addition of the url designation “.com”.
The Complainant submits that the Respondent is not commonly known by the 7S trademark, and argues that “7S” is not a dictionary word or a generic term. The Complainant further submits that the Respondent was not authorized or licensed to use the Complainant’s 7S Trademark, and that it is not making a bona fide use of the disputed domain name. Instead, the Respondent is alleged to be using the disputed domain name in connection with a website which provides links to other third party sites for the purposes of monetary gain, that is, as a click-through site.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) the Respondent was aware of the Complainant’s trademark rights in the mark 7S and registered a confusingly similar domain name to trade on the goodwill and reputation of the Complainant; (ii) the Respondent registered a confusingly similar domain name and is using the disputed domain name in association with the operation of a website which provides links to third party websites for the purpose of monetary gain, and for the purpose of attracting Internet users seeking the Complainant’s website to the Respondent’s site; (iii) the Respondent is thereby preventing the registered trademark owner from obtaining and using the disputed domain name; and (iv) the Respondent registered a confusing similar domain name for the purpose of selling the disputed domain name to the Complainant, as the registered trademark owner, at a cost which is significantly higher than the out-of-pocket expenses for registration of the disputed domain name.
The Respondent admits that the disputed domain name is identical to the Complainant’s Trademark 7S. However, the Respondent contends that the disputed domain name was registered over two years prior to the registration of the Complainant’s trademark 7S.
The Respondent further submits that the Complainant has not provided evidence that the trademark 7S alone is well-known or directly associated with the Complainant’s business or human resource services.
The Respondent claims that the disputed domain name was registered in 1998, when the Respondent also registered several other domain names, namely:
<8r.com> – registered May 4, 1998
<J4.com> – registered May 10, 1998
<788.com> – registered December 10, 1998
<889.com> – registered April 29, 1998
<988.com> – registered December 3, 1998
<e88.com> – registered May 1, 1998
<e99.com> – registered May 30, 1998
The Respondent submits that, for many years he has used all these domain names, including <7s.com> in connection with his website and online store at <geometry.net> thereby confirming his legitimate interest in the <7s.com> domain name.
The Respondent contends that he registered the <7s.com> domain name about 31 months before the Complainant first used the 7S trademark. The Respondent states that the Complainant did not establish any rights in the 7S Trademark prior to the date that the Respondent first acquired the disputed domain name. The Respondent states that he was not aware of the Complainant or the Complainant’s trademarks before he registered the disputed domain name, and in fact never traveled to Germany where the Complainant is located. Accordingly, the Respondent claims that registration of the disputed domain name prior to the existence of the Complainant’s trademark rights cannot be considered evidence of bad faith under the Policy.
The Respondent further states that if he was unaware of the Complainant and the Complainant’s trademark rights, he could not have targeted the Complainant for resale of the disputed domain name. In fact, the Respondent states the disputed domain name is currently in use as a dedicated server. The Respondent states that the offer to sell the disputed domain name for an amount higher than out-of-pocket expenses is not evidence of bad faith, in all the circumstances of this case.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant does have trademark rights in the mark 7S by virtue of its trademark registrations, namely German Registration No. 30052622 dated November 9, 2000, German Registration No. 30062747 dated November 20, 2000, European Registration No. 748804 dated November 23, 2000, European Registration Nos. 756229 dated January 1, 2001 and German Registration No. 30140771 dated October 5, 2001.
The Panel further finds that the domain name <7s.com> is identical to the Complainant’s registered trademark 7S, except for the addition of the “.com” designation. The addition of a “.com” designation or other url designation does not serve to distinguish a domain name from a registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy.
In beginning an analysis of legitimate rights or interests in the domain name, the Panel takes note of the fact that the Respondent registered the disputed domain name in April 1998, more than 2 years before the Complainant’s 7S trademark was registered in Germany. This single fact is of utmost importance in the analysis, as it calls out for an explanation from the Complainant, in the context of section (ii) of paragraph 4 of the Policy. Although it is common for respondents in the UDRP process to claim that they are unaware of the trademark rights in question, as the Respondent has stated here, there are a number of factors present in this situation that lead the panel to give credence to Respondent’s avowal, and to recognize a legitimate interest on his part in the <7s.com> domain name.
Firstly, we note that the Respondent resides in California, where the Complainant has never carried on business. The evidence suggests that the Complainant’s business is based primarily in Germany, with other offices in some countries in continental Europe. Although the Complainant clearly has a business presence and reputation in Europe, the evidence does not show any tangible presence or reputation in the U.S.
Secondly, the Respondent registered his domain name in April 1998, which was more than 2 years prior to the filing of Complainant’s first trademark application for 7S. This is particularly significant because the Complainant has not provided any evidence that it actually used the 7S mark, or developed any reputation in the mark, prior to the act of registering its mark. In these proceedings, it was open to the Complainant to bring forward evidence of common law use prior to May, 2000; the fact that it has not done – when it must have been aware of the Respondent’s earlier registration date for the disputed domain name – leads to the inference that such common law use did not occur.
Thirdly, the Respondent has advanced his own explanation with respect to the choice of name, which has nothing to do with the Complainant’s branding or business. Respondent has been actively operating a website called “geometry.net” for more than 12 years. That website, broadly speaking, has an educational purpose, in that it contains information on categorical geometry and bore the sub-title “the on-line learning centre”. The domain name in question <7s.com> was re-directed to <geometry.net> beginning in 1999. From 2003 forward, the Respondent operated an online store through <www.geometry.net>, and the <7s.com> domain name was employed to run a branch of the online store, connected to <amazon.co.uk>.
Fourthly, the Panel notes that, over the course of 1998, Respondent registered at least 8 short, alpha-numeric domain names, which he characterizes as generic, including <7S.com>; <8r.com>; <j4.com>; <788.com>; <889.com>; <988.com>; <e88.com>; <e99.com>. All these domain names were ultimately used in connection with the website at “www.geometry.net”, as outlined above. This pattern of conduct is consistent with the Respondent’s overall characterization of his business activities, namely that he was involved in the development and operation of a website having an educational purpose, with related commercial activities in the field of categorical geometry.
In this matter, the burden of proof to show the absence of a legitimate interest or right, on the part of the Respondent, rests squarely on the Complainant. In the Complaint, little is pleaded in this regard, except for the conventional allegations that the Respondent was never licensed to use the disputed domain name, was not commonly known under the name, and is not making a bona fide use of the name. In the Panel’s view, these allegations are not sufficient to meet the burden of proof when weighed against the countervailing facts established by the Respondent.
It may be objected that the Respondent’s use of “7S” does not appear to have a natural connection to a website in the field of categorical geometry. Clearly “7S” is not literally descriptive of the subject matter of its website, although it may be viewed as possibly suggestive of a mathematical variable. However, in the Panel’s view, a legitimate right or interest can certainly be created in an arbitrary or entirely fanciful mark, through lawful adoption and use. So even if “7S” is found to be entirely unrelated to categorical geometry, that would not preclude the Respondent from acquiring legitimate interests or rights in the mark through appropriate means. Trademark rights are fundamentally grounded in use; where the Respondent can provide tangible evidence of lengthy use (such as the 12 year period in this case) a portion of which actually predates the Complainant’s proven rights, then Respondent’s use can support a finding of legitimate interest or rights even in an arbitrary mark that is unrelated to the character or nature of the Respondent’s business.
Having considered the totality of the evidence furnished by the Respondent, the Panel is satisfied that he was engaged in educational and related business activities, in connection with the domain name <7S.com>, for a substantial period of time beginning in 1998, which actually pre-dated the use and registration of the Complainant’s trademarks. As such, the Panel concludes that the Complainant has not met its onus to establish the absence of a legitimate interest in the disputed domain name on the part of the Respondent.
Accordingly, the Complainant has not satisfied the requirements under paragraph 4(b) of the Policy.
In view of the findings on legitimate right and interest, the Panel will not proceed to find on registration and use in bad faith.
For all the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Andrew Frederick Christie
David E. Sorkin
Dated: February 3, 2011
I disagree with the majority’s finding that the Respondent has a right or legitimate interest in the disputed domain name.
Prior to pointing the disputed domain name to a generic landing page with PPC links to third parties’ websites, the Respondent pointed the disputed domain name (and numerous other of his domain names) to a website on “categorical geometry” and later to a generic “shopping center” landing page directing to amazon.com. None of the Respondent’s uses of the disputed domain name are of the type described in paragraph 4(c)(i) of the Policy. Although these uses are in connection with an offering of goods or services, they are not, in my view, in connection with a bona fide offering of goods or services (as paragraph 4(c)(i) requires).
Where a domain name is used simply to point to a website, I believe there needs to be some semantic relationship between the domain name and the website for that use to be bona fide. To hold otherwise would mean that pointing a domain name to any website – including to a website completely unrelated, in a semantic sense, to the domain name – will trigger a right or legitimate interest in the domain name. In my view, that type of use is not sufficient to give rise to a right or legitimate interest in a domain name. It is not a bona fide use; rather it is an arbitrary use.
This approach to determining whether pointing a domain name to a website gives rise to a right or legitimate interest in it has been recognized by other panels under the Policy, as shown by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (WIPO Overview). According to paragraph 2.2 of the WIPO Overview: “Factors a panel should look for when determining legitimate use would include … what the domain name is used for (a respondent is likely to have a right to a domain name “apple” if it uses it for a site for apples but not if the site is aimed at selling computers or pornography)”. I believe this logic is as applicable to a domain name that has no obvious meaning (such as “7s”) as it is to a domain name that has an obvious meaning (such as “apple”). Accordingly, in my opinion, it is necessary for there to be a plausible semantic connection between the domain name and the website to which it points for such a use to be a bona fide use for the purposes of paragraph 4(c)(i) of the Policy.
In this case, I do not consider that the uses to which the Respondent has put the disputed domain name are bona fide. In none of those uses is there a plausible semantic connection between the disputed domain name and the websites to which it has been pointed. That is to say, there is no plausible semantic connection between “7s” and categorical geometry, shopping or the generic PPC linking landing page. It is notable, but not surprising, that the Respondent did not provide any argument as to how “7s” relates to categorical geometry, shopping or a generic PPC linking landing page. It is not surprising because, in my view, there is no such plausible argument the Respondent could make in relation to this particular disputed domain name.
Finally, I believe the reasoning of the majority has confused principles applicable to trademarks with the principles applicable to domain names under the Policy. While it is true, as the majority state, that “[t]rademark rights are fundamentally grounded in use”, the Respondent has not been using the disputed domain name as a trademark (that is, as a mark indicating the origin of goods or services in trade); rather, the Respondent has been using the disputed domain name merely as a URL pointing to various unconnected websites. Thus, the fact that such use has occurred for more than 12 years does not assist the Respondent in establishing a right or legitimate interest in the disputed domain name if – as I believe – none of this use is bona fide.
For these reasons, I would find that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent has failed to rebut this case. Accordingly, I would find that the Respondent has no rights or legitimate interests in the disputed domain name.
Andrew Frederick Christie
Dated: February 3, 2011
I concur in the majority’s decision. I agree with the view expressed in the dissenting opinion that an arbitrary use of a domain name normally does not create rights or legitimate interests. In this case, however, we are presented with such use of the disputed domain name over a long period of time, together with the paucity of evidence that the use was pretextual or otherwise illegitimate. (The Respondent need not show that it has developed trademark rights in the domain name, but merely that the Complainant has failed to prove that the Respondent has developed any sort of rights or legitimate interests in the name). Furthermore, there is no indication whatsoever that the Respondent's selection of the domain name was motivated in any way by or targeted at the Complainant or its mark. I therefore conclude that the Complainant has failed to meet its burden of proving the requirements set forth in paragraph 4(b) of the Policy.
David E. Sorkin
Dated: February 3, 2011