Beiersdorf AG v. yoyo.email et al.
Claim Number: FA1407001571112
Complainant: Beiersdorf AG of Hamburg, Germany.
Respondent: yoyo.email of Dunsatble [sic], International, GB.
yoyo.email of Dunsatble [sic], International, United Kingdom.
Yoyo.Email of G20 Traverse City, US.
REGISTRIES and REGISTRARS
Registries: Spring Madison, LLC
Registrars: GoDaddy.com, LLC
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Examiner in this proceeding.
Terry F. Peppard, as Examiner.
Complainant submitted: July 23, 2014
Commencement: July 23, 2014
Response submitted: August 6, 2014
Having reviewed the relevant communications records, we find that the National Arbitration Forum has discharged its responsibility under URS Procedure ¶¶ 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain names in issue be suspended for the life of their registrations.
Clear and convincing evidence
PRELIMINARY ISSUE: DEFAULT BY DEFICIENT RESPONSE
The Response filed by Registrant fails to follow the format prescribed by the URS Procedure. It also greatly exceeds the word count permitted by URS Procedure ¶ 5.4. Whether taken singly or together, these deficiencies justify rejection of the Response in its entirety and treatment of Registrant as in default. Moreover, this is not the first occasion on which Registrant has ignored required URS proced-ures. See Foot Locker Retail, Inc. v. yoyo.email, FA1406001565344 (Nat. Arb. Forum July 8, 2014). Accordingly, the Complaint stands unopposed and findings for Complainant must follow. We will nonetheless examine the submissions of the parties to determine whether the interests of justice would have required another outcome had Registrant not defaulted.
URS Procedure ¶ 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name registration should be suspended:
1. The registered domain name is identical or confusingly similar to
a mark for which Complainant holds a valid national or regional
registration and that is in current use;
2. Registrant has no right to or legitimate interest in the domain name;
and
3. The same domain name was registered and is being used by
Registrant in bad faith.
In its Complaint, Complainant shows that it holds a valid registration for the trade mark BEIERSDORF (Office for Harmonization in the Internal Market (“OHIM”) Registry No. 000363143, issued October 2, 1998, in International Classes 3 (soaps, etc.), 5 (medicines, etc.), 7 (packaging machines, etc.), 10 (medical instruments, etc.), 16 (adhesive tapes, etc.) and 17 (industrial adhesives, etc.)), and for the trade mark NIVEA (OHIM Registry No. 000012609, issued October 1, 1998), in International Classes 1 (pharmaceutical products, etc.), 3 (cleaning and bleaching products, etc.) and 5 (health care preparations, etc.). Registrant does not dispute this.
Complainant also shows that Registrant registered both the <beiersdorf.email> and <nivea.email> domain names in 2014. Registrant does not deny this.
Identity or Confusing Similarity
There is no dispute on the record that the <beiersdorf.email> and <nivea.email> domain names are both substantively identical to Complainant’s BEIERSDORF and NIVEA trade marks, or that Complainant holds a valid registration for, and therefore has rights in, each of the marks and that each of them is in current use. Accordingly, we so find.
Registrant’s Rights or interests
There is no dispute in the record that Registrant is not affiliated with Complainant in any way, that Complainant has not authorized Registrant to register or use domain names incorporating its BEIERSDORF and NIVEA marks, or that Regis-trant was aware of Complainant and its marks at the time each of the domain names <nivea.email> or <beiersdorf.email> was registered. Moreover, there is no indication in the record that Registrant has been commonly known by either of the domain names.
Registrant argues that the domain names in issue were registered as part of a system to use domain names to create a domain name directory and a method to record the sending and receipt of e-mail traffic on behalf of enterprises that sub-scribe to its service. Registrant alleges that the essence of the system is that it will function as an e-mail courier. To this end, Registrant has registered a large number of domain names, including those using Complainant’s marks, in the format <[companyname/mark].email>.
Registrant contends that its employment of the contested domain names cannot be questioned because no fee is charged to its patrons for use of the system. However, the absence of a user fee does not end the inquiry as to whether the domain names’ use is commercial in nature or whether Registrant intends to achieve commercial gain from them. In this regard, there is no question that Registrant is a commercial enterprise and that it intends to profit from the oper-ation of its e-mail courier system. Registrant is incorporated as a private limited company and it has a CEO. It asserts in its Response that it is “developing a new email business model.” It further asserts that its system is intended to be used for “business purposes,” and it describes its target market as constituting “consumers.”
Because Registrant’s system is clearly commercial in nature and because it is built on a foundation that includes domain names which incorporate Complain-ant’s trade marks without its consent, this is enough to establish that Registrant’s use of the domain names is not a bona fide offering of goods or services within the meaning of the URS Procedure.
Registrant relies on the doctrine of fair use to establish its claim of rights in the disputed domain names. It doesn’t mention descriptive fair use, presumably because it knows that the marks in issue are not descriptive, but instead are unique corporate names. Instead, it appears to lean on the concept of nomin-ative fair use. But Registrant cannot pass the first test of nominative fair use because the product/service it purports to offer can be readily identified without using the marks. This is so because Registrant could use a scheme of alpha-numeric codes to identify client companies within its system. For this reason, and because Registrant intends to gain commercially from the use of the domain names, it cannot avail itself of the safe harbor otherwise afforded by URS Pro-cedure ¶ 5.7.3.
In addition, that Registrant appropriates Complainant’s marks in the design of its system has the effect of preventing Complainant from using its company names in <.email> domain names of its own.
Accordingly, Complainant has adequately shown that Registrant has no rights to or legitimate interests in the disputed domain names.
BAD FAITH
Under the URS Procedure, essentially the same considerations that make it clear that Registrant has no rights to or legitimate interests in the contested domain names are also pertinent to an analysis of whether the domain names have been registered and are being used in bad faith. See URS Procedure ¶ 1.2.6.3 a.-d. and ¶ 5.7. A finding of bad faith in the registration and use of the domain names therefore follows directly from the above discussion of the absence of any rights or legitimate interests accruing to Registrant from the facts presented in the Complaint and Response filed in this proceeding.
For all of the reasons indicated, the outcome of this proceeding would not be different had Registrant not defaulted in its obligation to respond to the Com-plaint. Accordingly, we find from a review of the submissions of the parties that the Complaint was not brought in abuse of this proceeding and that it does not contain any material falsehoods. We further find that Registrant has defaulted in this proceeding, and that Complainant has demonstrated by clear and convincing evidence all three elements of the URS. We therefore Order that the following domain names be SUSPENDED for the duration of their respective registrations: <beiersdorf.email> and <nivea.email>.
Terry F. Peppard, Examiner
Dated: August 07, 2014
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