Zur Zulässigkeit von Preisanpassungsklauseln in AGB - OLG Köln, Urteil vom 13.1.2006, Az.: 6 U 148/05
Kein Verbreitungsverbot des Films "Rothenburg" - LG Kassel, Beschluss vom 12.01.06, Az.: 5 O 55/06
Leitsätzliches
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 <sharelock.com> be transferred to the Complainant.

sharelock.com - Wipo Entscheidung vom 26. Januar 2006, Case-No.: D2005-1001

 

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION
S GmbH vs. E.
Case No. D2005-1001


1.      The Parties<?xml:namespace prefix = o ns = "urn:schemas-microsoft-com:office:office" /><o:p></o:p>

The Complainant is S.  Beteiligungs GmbH, Dortmund, Germany,

represented by Withöft & Terhaag Rechtsanwaltspartnerschaft,
Rechtsanwalt Wolfgang Mews, Germany.

The Respondent is E. Partner, Y N. , Pohang, Republic of Korea.

2.     The Domain Name and Registrar<o:p></o:p>

The disputed domain name <sharelock.com> is registered with E., Inc.

3.      Procedural History<o:p></o:p>

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 21, 2005. On September 21, 2005, the Center transmitted by email to E., Inc a request for registrar verification in connection with the domain name at issue.

On September 22, 2005, E., Inc 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.

[...]

The Center appointed Richard Tan as the sole panelist in this matter on November 20, 2005. 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 asserts that it is a provider of internet services and offers, in particular, Internet directory services in different languages available at the gTLD <S. .com>, as well as at other European ccTLDs, all adopting <S. > as the domain, such as <S. .de>, <S. .ch>, etc.

The Complainant also asserts trademark rights in the term S. , and has sought to rely on various trademark registrations in respect of "S. " in various classes, all in the name of "S. ' Internet Kommunikations- und Marketing Beteiligungs GmbH" – specifically, German Trade Mark Nos. 39827879.2 and 30100657 (together with a device), filed in 1998 and 2001 respectively, and European Community Trade Mark registration no. 001230655 filed in 1999.

The Respondent registered the disputed domain name with E., Inc on August 24, 2004. The disputed domain name resolves to a search portal displaying the words "sharelock.com", as well as various directory listings in German. The web page also contained a statement "Domain for Sale – make an offer", and next to it, a box with a "submit" button, presumably allowing for bids to be submitted.

  5.    Parties' Contentions<o:p></o:p>

A. Complainant

The Complainant contends as follows:

(a)     that the disputed domain name <sharelock.com > is confusingly similar to the Complainant's "S. " mark in which the Complainant has rights;

(b)    the Respondent has no rights or legitimate interest in respect of the disputed domain name, on account of, inter alia, the website under the domain name not referring to "sharelock", and searches revealing that the Respondent does not own any corporate or trademark rights in the same;

(c)    the Respondent's registration and use of the disputed domain name is in bad faith as it sought to use the disputed domain name to divert unsuspecting viewers who are seeking the Complainant's services to an unrelated portal with unrelated links.

B. Respondent

The Respondent has not filed any Response.

  6.   Discussion and Findings<o:p></o:p>

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

   (i)    that the Respondent's domain name is identical or confusingly similar to a
          trademark or service mark in which the Complainant has rights; and


(ii)    that the Respondent has no rights or legitimate interests in respect of the domain name; and<o:p></o:p>

(iii)    that the Respondent domain name has been registered and is being used in bad faith".<o:p></o:p>

The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute "based upon the complaint".

Paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to "draw such inferences" from the Respondent's failure to comply with the Rules "as it considers appropriate."

As the Respondent has not submitted a Response, and there having been no exceptional circumstances brought to the attention of the Panel, in accordance with paragraph 5(e) of the Rules, this Panel is entitled to decide the dispute based on the Complaint and the Complainant's further statement.

The Respondent's default, however, does not lead to an automatic ruling in favour of the Complainant. The burden remains on the Complainant to establish, on a balance of probabilities, that it is entitled to a transfer of the domain name: World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001.

A. Identical or Confusingly Similar Domain Name

The Complainant is required under Paragraph 4(a)(i) of the Policy to prove that the domain name is identical or confusingly similar to a trademark in which Complainant has rights. The Complainant has sought to rely on various German and CTM trademark registrations for S.  registered in the name of "S. ' Internet Kommunikations-und Marketing Beteiligungs GmbH".

In its further statement filed pursuant to this Panel' s Administrative Order No. 1 as set out in Section 3 above, the Complainant stated that the name "S.  Beteiligungs GmbH" as used in the Complaint was a contraction of the name "`S. ' Internet Kommunikations-und Marketing Beteiligungs GmbH" appearing in the official documents exhibited as part of the Complaint, and that both names in fact referred to the same entity.

In the absence of any response by the Respondent to the Complainant's further statement , and noting that the correspondence address stated on the CTM trade mark extract corresponded with that of the Complainant stated in the Complaint, this Panel is prepared to accept that "S.  Beteiligungs GmbH" is in fact the same entity as "S. " Internet Kommunikations-und Marketing Beteiligungs GmbH".

Turning to the issue of confusing similarity under Paragraph 4(a)(i) of the Policy, the Panel notes that the subject domain, "sharelock.com", differs from the "S. " mark in respect of which the Complainant claims rights only by the letter "c" and the addition of the ".com" gTLD.

This Panel notes that there are numerous decisions under the UDRP which regard a difference of a single character as not being sufficient to prevent a finding of confusing similarity, and particularly where the trade mark in question is highly distinctive: see Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (July 13, 2000). Ultimately, the comparison raises an issue of impression.

For the purposes of the present proceedings, and in the absence of a Response, the Panel is prepared to find that the combination of the unrelated generic words "share" and "look" is reasonably distinctive, and that "S. " and "Sharelock" are visually and phonetically similar, such that the domain name is confusingly similar to a trademark in which Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.

B.       Rights or Legitimate Interests

The onus is initially on the Complainant to establish a prima facie case, and once this has been done, the onus shifts to the Respondent to prove the contrary. See Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.

It has been recognized by many panels that having the Complainant prove a negative for the purposes of paragraph 4(a)(ii) of the Policy is difficult, since it raises matters within the knowledge of the Respondent. Accordingly, many Panels have held that it is sufficient for the Complainant to adduce enough evidence to make a prima facie case, thereby shifting the burden of proof on the Respondent (see for example Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553, Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467).

In the present case, one of the grounds upon which the Complainant seeks to rely is the fact that, based on its searches of European Union and German trade mark registers, the Respondent does not hold any trademark rights in the term "sharelock", and that this term does not appear on the Respondent's web page. This Panel rejects the proposition that it may conclude that the Respondent does not have any rights or legitimate interests in "sharelock", simply because the Respondent does not appear to have secured any Community Trade Marks or German trade marks. In particular, the Respondent appears to be from the Republic of Korea, and it is quite possible that the Respondent has rights or legitimate interests in the domain name even though it has not secured any trade mark rights in Europe.

The Complainant also asserts that the Respondent has no legitimate interest in the domain name, as the website under the disputed domain name makes no reference to "sharelock", nor is any company mentioned therein with "sharelock" as part of its name.

In the absence of a Response, this Panel accepts that this could prima facie suggest that the Respondent has no rights or legitimate interests in the domain name. Nevertheless, the Panel remains obliged to consider whether any of the (non-exhaustive) circumstances provided in paragraph 4(c) of the Policy are present to support a finding of the Respondent having rights or legitimate interests in respect of the disputed domain name, namely:

(i)        before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or<o:p></o:p>


(ii)       the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or<o:p></o:p>

(iii)      the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".

If any of the above circumstances are established, the Respondent may be said to have rights to or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii) (see Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827), in which event the Complaint must be denied.

Upon a review of the evidence filed, the Panel notes the Respondent's site only appears to contain a series of unrelated hyperlinks, mostly in German. There is no other content an the site, and the Respondent does not appear to be using the disputed domain name in connection with a bona fide offering of goods or services. The website also features a prominent invitation to visitors to make an offer for the purchase of the domain name. Apart from the domain name having been registered in the name of "sharelock.com", there is also no evidence to suggest that the Respondent has been commonly known by the disputed domain name. There also appears to be no co-relation between the contents of the site and the name "sharelock".

On the totality of the evidence and in the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and Used in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which, "if found by the Panel to be prevent, shall be evidence of the registration and use of a domain name in bad faith", namely:

(i)      circumstances indicating that the Respondent has registered or has 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 its documented out-of­pocket costs directly related to the domain name; or

(ii)     the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or

(iii)      the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)     by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service an its website or location.

The Complainant asserts that the Respondent registered and used the disputed domain name in order to disrupt the business of the Complainant and to gain unfair competition advantage by misleadingly diverting potential customers of the Complainant to the website of the Respondent.<o:p></o:p>

The Panel notes that the Respondent' s site provides a search tool, and also various hyperlinked subject headings in the German language. These appear to be services similar to and competing with those offered by the Complainant. It also appears somewhat unusual that the Respondent has established a website with hyperlinks in German, even though the Respondent is based in Korea, and this might suggest that the Respondent's website is deliberately targeted at a German audience, which in turn suggests that the Respondent's website is intended to divert the Complainant's customers.<o:p></o:p>

These factors, coupled with the standing offer to visitors to the site to purchase the domain name, would tend to support the inference that the registration and use of the domain name was in bad faith under paragraph 4(b)(i) and/or (iii) of the Policy, and in the absence of a Response, the Panel finds in favor of the Complainant.<o:p></o:p>

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 <sharelock.com> be transferred to the Complainant.

Richard Tan
Sole Panelist
Dated: January 26, 2006