DECISION

 

Schlund + Partner AG and GMX GmbH v. Global Tlds Inc.

Claim Number: FA0307000174667

 

PARTIES

Complainants are Schlund + Partner AG, Karlsruhe, Germany and GMX GmbH, Munich, Germany (“Complainants”) represented by John Berryhill of Dann, Dorfman, Herrell, and Skillman P.C. Respondent is Global Tlds Inc., Dunedin, FL (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <schlund.us> and <gmx.us> registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and Namescout.com, respectively.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Sandra Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 28, 2003; the Forum received a hard copy of the Complaint on the same day.

 

On July 29, 2003, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <schlund.us> is registered with Iholdings.Com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On August 1, 2003, Namescout.com confirmed by e-mail to the Forum that the domain name <gmx.us> is registered with Namescout.com and that Respondent is the current registrant of the name. Namescout.com has verified that Respondent is bound by the Namescout.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.

 

On August 4, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 25, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for the usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On September 3, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainants request that the <schlund.us> domain name be transferred from Respondent to Complainant Schlund + Partner AG (hereinafter, “Schlund”), and that the <gmx.us> domain name be transferred from Respondent to Complainant GMX GmbH (hereinafter, “GMX”).

 

PARTIES’ CONTENTIONS

A.  Complainants make the following assertions:

 

1.      Respondent’s <schlund.us> and <gmx.us> domain names are identical to Complainants’ SCHLUND and GMX marks.

 

2.      Respondent does not have any rights or legitimate interests in the <schlund.us> and <gmx.us> domain names.

 

3.      Respondent registered and used the <schlund.us> and <gmx.us> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant Schlund is a world leader in Internet domain name registrations and is among the top 10 ICANN-accredited domain name registrars globally. Schlund has provided evidence of German Trademark Registration No. 30,084,888 and European Community Trademark Registration No. 1,933,274 for the SCHLUND+PARTNER mark.

 

Complainant GMX is an international provider of Internet connectivity, networking, web hosting, e-mail and related services. GMX has produced evidence of German Trademark Registration No. 39,830,515.3 and Canadian Trademark Registration No. TMA563,675 for the GMX mark.

 

Complainants allege, without documentation, that both Schlund and GMX are “related and commonly-owned by 1&1 Internet AG of Montabaur, Germany.”  The Panel accepts this assertion as true since it has not been contested by the Respondent and because the Complainants have requested that each domain name be transferred to the respective mark holder.

 

Respondent registered the <gmx.us> domain name on April 24, 2002 and the <schlund.us> domain name on May 18, 2002. Respondent has made no use of either of the disputed domain names.  Complainants engaged a third-party agent to negotiate with Respondent for the purchase and sale of the two names; however, their attempt was unsuccessful.

 

Respondent has registered several other .us domain names reflecting the names of well-known domain name registrars, including <gandi.us>, <yesnic.us>, and <speednic.us>.  Respondent has also registered multiple .us domain names that are identical to the names of popular celebrities, teams, events and companies.

 

DISCUSSION

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.”

 

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainants’ undisputed representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to Paragraph 14(b) of the Rules.

 

Paragraph 4(a) of the Policy requires that the Complainants 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainants have established their respective rights in the SCHLUND and GMX marks for the purposes of Policy ¶ 4(a)(i) through their production of trademark registrations from Germany, the European Community and Canada.

 

Respondent’s <schlund.us> and <gmx.us> domain names are identical to Complainants’ marks under the Policy because both of the disputed domain names appropriate Complainants’ entire mark and simply add the country-code top-level domain “.us” to the end of them. The addition of a top-level domain does not sufficiently differentiate a domain name from a mark under Policy ¶ 4(a)(i). See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to Complainant’s TROPAR mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

Accordingly, the Panel finds that Complainants have established Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Respondent has neglected to furnish the Panel with a Response in this proceeding. Therefore, the Panel may accept all reasonable allegations and inferences in the Complaint as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

 

Furthermore, based on Respondent’s failure to respond, the Panel may presume that Respondent lacks any rights to or legitimate interests in the disputed domain names in accordance with Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

 

Since its registration of the <schlund.us> and <gmx.us> domain names over one year ago, Respondent has made no use of the domain names. The Panel finds that Respondent’s passive holding of the disputed domain names is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names).

 

Moreover, Respondent has proffered no evidence and there is nothing in the record that suggests Respondent is commonly known by the domain names or that Respondent holds trademarks identical to the names. Thus, the Panel finds that Respondent has failed to demonstrate any rights to or legitimate interests in the disputed domain names in accordance with Policy ¶ 4(c)(i) & (iii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting UDRP ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

 

The Panel finds that Policy ¶ 4(a)(ii) has been established.

 

Registration and Use in Bad Faith

 

Unlike claims made under the UDRP, Complainants may establish the bad faith requirement of Policy ¶ 4(a)(iii) by proving either bad faith registration or use.

 

Complainants have provided evidence that Respondent has registered the names of several Internet registrars as .us domain names.  Respondent has also registered the names of well-known celebrities, sports teams and events as domain names.  This evidence demonstrates a pattern of behavior that can have no purpose other than to prevent mark holders from registering domain names reflecting their marks (Policy ¶ 4(b)(ii)) or to extort valuable consideration from mark holders for the domain names (Policy ¶ 4(b)(i)).  Accordingly, the Panel finds that Respondent registered the disputed domain names in bad faith within the meaning of Policy ¶ 4(a)(iii).  See Pep Boys Manny, Moe & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that, where Respondent registered many domain names, held them hostage, and prevented the owners from using them, the behavior constituted bad faith); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <Marlboro.com> domain name evidenced bad faith registration and use pursuant to UDRP ¶ 4(b)(ii)).

 

Policy ¶ 4(a)(iii) has been established.

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <schlund.us> domain name be TRANSFERRED from Respondent to Complainant Schlund + Partner AG, and that the <gmx.us> domain name be transferred from Respondent to Complainant GMX GmbH.

 

 

 

Sandra Franklin, Panelist

Dated: September 10, 2003

 

 

 

 

 

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