Baur Versand (GmbH & Co KG) v. wang dongming
Claim Number: FA1602001661429
Complainant: Baur Versand (GmbH & Co KG) of Burgkunstadt, Germany.
Complainant Representative: JBB Rechtsanwaelte of Berlin, Germany.
Respondent: wang dongming of nanjing, Jiangsu, International, CN.
Respondent Representative: N/A
REGISTRIES and REGISTRARS
Registry: XYZ.COM LLC
Registrar: PDR Ltd. d/b/a PublicDomainRegistry.com
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Douglas M. Isenberg, as Examiner.
Complainant submitted: February 18, 2016
Commencement: February 18, 2016
Default Date: March 4, 2016
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
With respect to URS 1.2.6.1, Complainant states as follows: “The registered domain name(s) is/are identical or confusingly similar to the Complainant’s trademark ‘BAUR’ as a figurative mark CTM reg.-no. 011244431. The trademark is a figurative mark consisting of the word ‘BAUR’ in capital letters and only minor figurative elements. The domain therefor is almost identical to the Complainant’s trademark. The disputed domain name fully incorporates the Complainant’s trademark and merely adds the extension ‘.xyz’. It is well established that the addition of a domain name extension can be ignored when evaluating the identity or confusing similarity between trademark and disputed domain name.”
With respect to URS 1.2.6.2, Complainant states as follows: “The Registrant has no legitimate right or interest to the domain name. The disputed domain name is not in use. Trying to access the website there is only a dead page that says ‘Access denied’. No current use is being made of the website. The Registrant has no right or legitimate interest to the disputed domain name, that Respondent has never been authorized by the Complainant to register the disputed domain name, that Respondent has no connection or affiliation with the Complainant, and that there has been no bona fide use of the domain name. The Registrant’s name is ‘wang dongming’ and there is no business or trademark or any other right or legitimate interest in connection with the term ‘baur’ associated to the Registrant to be found anywhere.”
With respect to URS 1.2.6.3, Complainant states as follows: “The domain name was registered and is being used in bad faith. As stated by the Panel in State Farm Mut. Auto. Ins. Co. v. Sotelo (FA 1008269, Nat. Arb. Forum July 17, 2007) the requirement of use in bad faith does not require that it prove in every instance that a respondent is taking positive action. The mere failure to make an active use of the disputed domain name is indicative of bad faith registration and use pursuant to Subparagraph c) of the Paragraph 1.2.6.3., of the URS Procedure (see also Deutsche Lufthansa AG v. Zong Kai, FA1509001639608, Nat. Arb. Forum October 17, 2015; Twentieth Century Fox Film Corp. v. Risser, FA 93761, Nat. Arb. Forum May 18, 2000; LES PARFUMERIES FRAGONARD v. Wen Cheng Lai et al. FA1512001654755 Nat. Arb. Forum January 15, 2016). Furthermore, since ‘BAUR’ is neither generic nor descriptive, is not a coincidence that Registrant has selected the trademark to include it in the disputed domain name. Further, the Complainant has carried out a domain name search to find other domains registered in the Registrant’s name. The Registrant is the owner of 123 other domains as attached to this complaint, most of them being third parties’ trademarks the Registrant has no legitimate rights or interests to. It is well established that the registration of an excessive amount of domains including third parties’ trademarks is indicative for bad faith.”
The Respondent did not submit a Response.
With respect to URS 1.2.6.1, the Examiner finds that the Disputed Domain Name is identical or confusingly similar to the BAUR trademark, a word mark for which the Complainant holds a valid national or regional registration and that is in current use.
With respect to URS 1.2.6.2, the Examiner finds that the Registrant has no legitimate right or interest to the Disputed Domain Name.
With respect to URS 1.2.6.3, the Examiner finds that Complainant has failed to establish that the Disputed Domain Name was registered and is being used in bad faith. As the Complaint makes clear, the Disputed Domain Name is not being used in connection with an active website. While Complainant correctly observes that such passive holding of a domain name can, under certain circumstances, nevertheless constitute bad faith, those circumstances do not appear to be applicable here. For example, the BAUR trademark registration on which Complainant relies was only registered on January 24, 2013 and, unlike in other URS determinations involving passive holding, there is no evidence in the record that the trademark is “well known worldwide.” WhatsApp, Inc. v. LATICINIOS ABC CACU et al., NAF Claim No. 1661093. Further, a Google search indicates that the BAUR trademark is used by many entities other than Complainant, including in connection with electrical power distribution systems, a restaurant and a theater. As a result, the “failure to establish in the record that the relevant trademark is exclusively or most commonly associated with Complainant plus the absence of any evidence that the domain name is currently being used in a manner that is exclusively or strongly associated with that trademark – do not convince this Examiner by clear and convincing evidence that the Registrant has no legitimate right or interest to the domain name or that the domain was registered and is being used in bad faith.” Heartland Payment Systems, Inc. v. Whois Privacy Protection Service, Inc.; Kyle Ramsey, NAF Claim No. 1547394
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be RETURNED to the control of Respondent: <baur.xyz>
Douglas M. Isenberg, Examiner
Dated: March 06, 2016
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