Typo3 Association e.V. v. Domains By Proxy, LLC et al.
Claim Number: FA1705001733586
Complainant: Typo3 Association e.V. of Baar, Switzerland.
Complainant Representative: euromaier - Industrieberatung Maier AG of Sissach, Switzerland.
Respondent: Adventist Pro / Adventist of Romania, International, United States of America.
Daniel Grigore of , International, Romania.
Daniel Grigore of Bucharest, International, Romania.
Daniel Grigore / Creative of Teslui, International, Romania.
Domains By Proxy, LLC of Scottsdale, Arizona, US.
Personal of Bucharest, Unknown, Romania.
REGISTRIES and REGISTRARS
Registries: BLOG Registry; NEWS Registry; Romeo Town, LLC; Uniregistry, Corp.
Registrars: GoDaddy.com, 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 Examiner in this proceeding.
Richard W. Hill, as Examiner.
Complainant submitted: May 30, 2017
Commencement: May 30, 2017
Response Date: June 14, 2017
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.
URS Procedure 1.2.6 requires Complainant to prove, by clear and convincing evidence, each of the three elements listed below to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
a. Registrant has registered or 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 documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
The registered domain name(s) is/are identical or confusingly similar to a word mark
Complainant has registered the mark TYPO3 in the European Union, the USA, Canada, and Switzerland, with rights dating back to at least 2005.
Registrant states [sic]: “TYPO3 is an open-source CMS. For experienced web developers it is well known about this word and mark that have the famous internet web domain name - typo3.org.”
The Examiner finds that the disputed domain names are identical to the mark.
Registrant has no legitimate right or interest to the domain name
Complainant states that Registrant has no link with the Complainant and has no legitimate right or interest to the disputed domain names. The resolving web sites are blank
Registrant states [sic]: “I work and prepair to open up TYPO3 user group in Bucharest, after I will receive the permission of TYPO3 Association. Attach with the website, I will use meetup.com for announcements of date and schedule for meetings. I paid account since November 2016.”
Registrant does not provide any evidence to support his allegations.
Registrant is clearly well aware of Complainant and its activities, and he appears to admit that he cannot use the disputed domain names until he receives authorization from Complainant.
Under the circumstances, the Examiner finds that Registrant has no right or interest to the disputed domain names.
The domain name(s) was/were registered and is being used in bad faith
Complainant states that Registrant has been warned after the Registration of the domain names (<typo3.link>, <typo3.blog>, <typo3.group>) in November 2016 and was asked to transfer those domain names to Complainant. Registrant refused to transfer these domain names and prevents the Complainant from reflecting its mark in the corresponding domain names. Registrant registered these domains with a privacy proxy service, which strongly indicates bad faith.
Further, says Complainant, Registrant has engaged in a pattern of such a conduct since he recently registered the domain name <typo3.news>, again using a privacy proxy service and keeping the resolving web site blank.
Registrant states [sic]: “I have never asked to sale or rent for any of the domain names. It is only a scenario from the representative to argue his actions against me and to make bad reputation on me. There is no single evidence about this. I have told my plan and my intentions. I am not blocking the way for trademark holder to develop any services. Surround the main domain name website, there is anything there - about the groups, the news, the announcements, the blogs, etc. Everything related to trademark holder is published on typo3.org. Every event or meeting will have the written permission of TYPO3 Association. The spirit of community is to develop and help others to use TYPO3. There is no commercial gain. Check other TYPO3 User Groups in countries like Germany, Austria, etc.”
Registrant does not provide any evidence to support his allegations regarding plans and intentions, nor does he provide any evidence regarding other TYPO3 user groups.
Registrant states that he is not preventing the trademark holder to develop any services: the trademark holder can use its web site <typo3.org>. But that does not negate the fact that, by registering the disputed domain names, Registrant prevents the trademark holder from reflecting the mark in the corresponding domain names. Since Registrant was, by his own admission, well aware of Complainant’s activities and trademark, the Examiner finds that he registered the domain names in order to prevent the trademark holder from reflecting the mark in the corresponding domain names.
Registrant does explain why he would need more than one domain name in order to carry out his purported activities. Nor does he explain why he used a privacy proxy service.
Registrant does not contest that he received a warning from Complainant and does not explain why he did not reply to that warning.
Registrant does not contest that he registered an additional domain name containing Complainant’s mark after Complainant warned him not to do so and does not explain why he did so.
Registration of three domain names that were confusingly similar to a mark has been found to constitute a pattern of conduct, see Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, D2003-0602 (WIPO, Sept. 29, 2003). That conclusion is reinforced in the present case by Registrant’s registration of a fourth domain name after he had been warned by Complainant.
The disputed domain names are not being used. According to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “[p]anels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
In the present case, Registrant was well aware of Complainant’s trademark and himself states that it is well known. It is difficult to envisage any use of the disputed domain name that would not infringe Complainant’s rights, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
Further, Registrant concealed his identity by using a privacy proxy service, and Registrant’s response failed to address key allegations made by Complainant.
Given these circumstances, the Examiner finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain names are not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
The Examiner finds that the disputed domain names were registered and are being used in bad faith
Registrant states: “I started to correspond with the head of TYPO3 to get the permission for TUG Bucharest”, and alleges that the Complaint was brought in an abuse of the URS process or contains material falsehoods
Registrant does not provide any evidence to support his allegations.
The Examiner finds that the Complaint was not brought in an abuse of this proceeding and that it did not contain material falsehoods.
After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<typo3.blog> <typo3.group> <typo3.link> <typo3.news>
Richard W. Hill, Examiner
Dated: June 15, 2017
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