CA Immobilien Anlagen Aktiengesellschaft v. Tianlang Li
Claim Number: FA1103001380921
Complainant is CA Immobilien Anlagen Aktiengesellschaft (“Complainant”), represented by Wilfried Seist, Austria. Respondent is Tianlang Li (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <caimmo.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 29, 2011; the National Arbitration Forum received payment on March 28, 2011.
On March 31, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <caimmo.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@caimmo.com. Also on April 6, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 26, 2011.
An Additional Submission was received from Complainant and determined to be complete on April 29, 2011.
On April 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a commercial real estate developer based in Austria that owns the trademark CA IMMO. The mark is registered as a word mark in several European countries, and is registered as a composite mark consisting of words and an abstract design in numerous countries including the United States. Complainant alleges that the disputed domain name <caimmo.com> is identical or confusingly similar to its mark.
Complainant further asserts that Respondent lacks rights or legitimate interests in the disputed domain name, on the grounds that the domain name is not currently in use and has not been used for any commercial activities (based primarily upon the lack of evidence of such use that may be found via Google searches). Complainant alleges that Respondent’s only interest in the domain name is to block its commercial use by Complainant and to profit from a possible future sale of the domain name to Complainant. Complainant further states that Respondent is not commonly known by the disputed domain name.
Complainant contends that Respondent registered the disputed domain name for the purpose of selling the registration to Complainant for disproportionate consideration in excess of Respondent’s costs. In support thereof, Complainant states that in response to an inquiry by Complainant, Respondent informed Complainant that it would only be willing to sell the domain name for US $75,000. Complainant submits that this amount far exceeds Respondent’s out-of-pocket costs associated with the registration of the domain name, and further notes that according to the Registrar, the estimated value of the domain name is less than $100. Complainant increased its purchase offer from $500 to $750 and then $1,500, but Respondent did not reduce its asking price from $75,000. As further evidence of bad faith, Complainant states that the registration of the domain name was apparently changed from “DOMAIN Admin” to Respondent’s name immediately after the first version of the Complaint was filed.
B. Respondent
Respondent denies that the disputed domain name is identical or confusingly similar to Complainant’s mark, on the grounds that the figurative component of Complainant’s composite mark should be regarded as an important and distinctive part of the mark, and that Complainant’s word mark is not registered in the United States, where Respondent is located.
Respondent asserts rights and legitimate interests in the disputed domain name based upon having used it since less than one month after acquiring it on September 27, 2007, for a “California Immobilizer” website promoting vehicle immobilizer products. Respondent states that the “CA” in the domain name is an abbreviation for “California,” the state in which Respondent is located, and “IMMO” refers to immobilizers, the product offered by Respondent.
Respondent denies having registered or used the disputed domain name in bad faith, on the same grounds set forth above, and in particular denies having had any knowledge of Complainant’s business or trademark at the time that the domain name was registered. Respondent admits having responded to Complainant’s inquiry regarding a possible purchase of the domain name, but submits that such a response to an unsolicited offer does not demonstrate bad faith under the Policy. Respondent explains the change of registrant name as merely a correction, and further points to Complainant’s inaction for more than three years since the registration of the domain name as an indication that Complainant itself did not believe that the domain name was registered in bad faith.
C. Additional Submissions
Complainant requests the Panel to consider its Additional Submission in order to address statements in the Response regarding Respondent’s claimed use of the disputed domain name.
Complainant disputes Respondent’s claim that the domain name has been in use since shortly after its registration. Complainant notes that Respondent has not provided any evidence of such use, nor any figures regarding the volume of its business. Complainant asserts that the domain name was in fact never online and never used for business purposes. In support thereof, Complainant notes that a search of the Internet Archive returns no archived web pages from the relevant period. Complainant also offers a printout of a cached copy of the website at http://www.caimmo.com/ dated April 15, 2011, which appears to be an empty directory listing displayed by an Apache web server.
Complainant states further that the “California Immobilizer” website to which the domain name currently resolves does not include information about the company that ordinarily would be found on such a site (including even its address), and does not display prices or any other information regarding distribution or terms of sale. Complainant concludes that the website was invented by Respondent for the purpose of making it appear that Respondent had legitimate interests in the domain name.
In addition, Complainant states that the “California Immobilizer” website appeared only after the Complaint in this proceeding was filed, and that it should therefore be disregarded in the Panel’s determination of whether Respondent has rights or legitimate interests in the domain name, and to the contrary should be considered as evidence of bad faith.
The Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights; that the Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The disputed domain name is identical to Complainant’s registered word mark CA IMMO, but for the addition of the top-level domain suffix and the omission of a space; it is immaterial to paragraph 4(a)(i) that the word mark is not registered in Respondent’s country of residence. Furthermore, the words CA IMMO clearly represent the distinctive component of Complainant’s composite mark, which is registered in the United States. The Panel therefore finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights.
Respondent is not commonly known by the domain name, and Complainant has not authorized Respondent to use its name. Complainant thus has made a prima facie showing that Respondent lacks rights and legitimate interests in respect of the disputed domain name, shifting to Respondent the burden of production to come forward with concrete evidence of such rights or legitimate interests. See, e.g., Google Inc. v. Texas Intl. Property Assocs., FA 1212995 (Nat. Arb. Forum Aug. 25, 2008). Respondent has not met this burden, having made unsubstantiated assertions in the Response but having submitted no evidence of any use of or preparations to use the domain name prior to the filing of the Complaint in this proceeding, and no evidence of any bona fide business activity. The Panel therefore finds that Complainant has met its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Under the circumstances, it appears to the Panel more likely than not that Respondent registered the disputed domain name intending to profit from its correspondence to Complainant’s mark, and belatedly set up the pretextual “California Immobilizer” website in order to create the appearance that Respondent was engaged in a bona fide offering of goods. Paragraph 4(b)(i) of the Policy provides that bad faith may be found based upon circumstances indicating that the Respondent has registered the disputed domain name primarily for the purpose of selling it at a profit to the owner of a corresponding trademark. The Panel finds that paragraph to be applicable here, and on that basis finds that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <caimmo.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 6, 2011
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