IDS Scheer AG v.
Claim Number: FA0901001244198
Complainant is IDS Scheer AG (“Complainant”),
represented by Patrick Jay Hines, of Cantor Colburn LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ids-sheer.com>, registered with Compana, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 23, 2009.
On January 26, 2009, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <ids-sheer.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 28, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 17, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on February 17, 2009.
On February 23, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. The Complainant’s submissions are as follows:
The Complainant is the market leader in Business Process Management software, solutions and services for corporations and public organizations worldwide. The company was established in 1984 by current supervisory board chairman and Chief Technology Advisor, Dr. August Wilhelm Scheer, who is regarded by many as the founder of Business Process Management. Complainant serves more than 7,000 customers in over 70 countries with approximately 3,000 employees. In 2007, Complainant’s revenue was in excess of 393 million Euro.
The disputed domain name is strikingly similar to Complainant’s name, mark and domain name, except that it includes a typographical error. Respondent’s domain name is an obvious attempt to trade off Complainant’s name, mark and domain name by means of typosquatting. The subject domain name differs from Complainant’s by deletion of the single letter “c” in the term “Scheer.” The stylized “Y” element in Complainant’s registered mark is more of a design element that forms part of Complainant’s house mark and logo. Accordingly, the subject domain name is nearly identical in sound, appearance and meaning to the dominant elements of the mark in which Complainant has established rights.
The disputed domain name resolves to a website that displays sponsored listings, advertisements and links for competing goods and services as well as links to various third-party commercial web sites. Such use is neither a bona fide offering of goods or services pursuant to the Policy nor a legitimate noncommercial or fair use pursuant to the Policy.
Respondent is not affiliated with Complainant. Complainant has not licensed or otherwise authorized Respondent to use Complainant’s mark in a domain name.
Respondent’s use is clearly meant to intentionally redirect Internet traffic to its site by means of typosquatting error for commercial gain.
There is no indication that Respondent, being Texas International Property Associates, has been commonly known by the domain name. Nor has Respondent acquired trademark or service mark rights in the domain name.
Respondent is not making a legitimate noncommercial or fair use of the domain name.
The disputed domain name resolves to a commercial website featuring sponsored listings, advertisements and links to third party commercial websites, many of which directly compete with Complainant’s business. Respondent’s website presumably generates revenues from these listings, advertisements and links and therefore financially benefits from click-through fees. As such, Respondent’s use amounts to an attraction for commercial gain, which evidences bad faith registration.
Since Respondent’s <ids-sheer.com> domain name is essentially identical to Complainant’s IDS-SCHEER Y mark and name and Complainant’s <ids-scheer.com> domain name, consumers accessing Respondent’s domain name by mistake may become confused as to Complainant’s affiliation with, sponsorship or approval of the resulting website. Confusion is particularly likely in view of the fact that both Complainant’s site and Respondent’s site offer business process management goods and services. Thus, Respondent’s commercial use of the disputed domain name constitutes bad faith registration and use pursuant to the Policy.
Respondent has engaged in a pattern of registering domain names that incorporate third party marks, as evidenced by 43 cases against Respondent in the database of the National Arbitration Forum in the last two years alone.
The Respondent’s submissions are as follows:
Prior to Respondent being sent the UDRP Complaint, there had been no contact between the parties. Had Complainant contacted Respondent, Respondent would have agreed to transfer the domain name. Regardless of not having had that opportunity, Respondent herein agrees to the relief requested.
Where the Respondent has made an offer to transfer there were numerous ways that Panel could proceed:
(i) To grant that relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claim;
(ii) To find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis; and
(iii) To proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right or because there is some reason to doubt the genuineness of the Respondent’s consent.
The best and most expeditious course is that “a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course.” Williams-Sonoma, Inc v. EZ-Port, D2000-0207 (WIPO May 5, 2000).
Respondent further cites Citigroup Inc. v. Texas International Property Associates NA, FA 1210904 (Nat. Arb. Forum Aug. 5, 2008) where it was stated that “[j]udicial economy dictates that the Panel should simply proceed to its decision since there is no dispute between the parties. Thus, this Panel disagrees with the proposition that even though a respondent consents to transferring an at-issue domain name, a substantive review may be required…. There is no need for a decision or findings on the merits where the Respondent, by consenting to the requested relief, obviates the necessity for such a ruling. Similarly, there is no requirement for a decision on the merits after the Complainant dismisses the Complaint.”
For the foregoing reasons, Respondent requests that the Panel order the immediate transfer of the disputed domain name.
The Respondent has put in a formal Response with the assistance of legal advice and has agreed to transfer the Domain Name to the Complainant as the Complainant requests.
Respondent consents to transfer the <ids-sheer.com> domain name to Complainant. However, after the initiation of this proceeding, the registrar, Compana LLC, placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. As the Respondent has not contested the transfer of the disputed domain name, but with legal advice has instead agreed to transfer the domain name in question to Complainant, the Panel has decided in this case to forego the traditional UDRP analysis and order an immediate transfer of the <ids-sheer.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Having reviewed the Complainant’s request for relief and the Respondent’s consent to that relief with the assistance of legal advice, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ids-sheer.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: March 10, 2009
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