The Ham Brothers, Vertical Axis just lost a UDRP on the typo pheonixcontact.com to Phoenix Contact GmbH & Co. KG of German.
As a UDRP the case is a slam dunk for the International trademark holder.
However the case serves as a cautionary tale for those domain holders that believe that all they have to do is give up a questionable trademark infringing domain once they get the C & D letter, that sometimes that strategy doesn’t work and you wind up with a UDRP decision against you.
Before the UDRP was filed, Vertical Axis states that on November 14, 2012, the Respondent advised the Complainant’s counsel that it would transfer the disputed domain name to the Complainant. The parties exchanged settlement documents and the proceedings were suspended. After a few email exchanges the parties appeared to have reached a final agreement. On December 12, 2012, without explanation, the Complainant reinstituted the proceeding”.
Vertical Axis even tried just agreeing to give up the domain name after the UDRP was filed by stipulating to “transfer the disputed domain name to the Complainant”.
“”Where a respondent stipulates to transfer a domain name to a complainant, the panel may immediately transfer the domain name, without issuing an opinion on the merits of the case”
However citing Texas Medical Center v. Joseph Spinder, NAF Claim No. 0886496, even where the “Respondent has agreed to transfer, the Panel may decide to forego the traditional UDRP analysis and order the immediate transfer of the domain names”.
Basically the complainant wanted the panel to issue a full opinion on the case:
“”The Panel has considered the cases cited by the Respondent but has decided to proceed to a substantive determination on the basis of a number of the countervailing factors mentioned in paragraph 4.13 of the WIPO Overview 2.0, in particular the fact that the Complainant has not agreed to a consent decision and is entitled to a decision for which it has paid in filing the Complaint”.
“The Panel is also persuaded that there is a broader interest in reaching and recording a substantive determination so that the conduct of the Respondent, if found to have registered and used the disputed domain name in bad faith, can be taken into account by other future UDRP panels”
Here are the facts and findings by the one member panel:
“The Complainant is incorporated in Germany and operates a business founded by the Complainant’s predecessor in 1923. The Complainant has traded under the name “Phoenix Contact” since 1982″.
“The Complainant’s group distributes a wide range of products in the field of industrial electro-technology. The Complainant supplies many industries including automotive, chemicals, energy and water, oil and gas, device manufacturers, telecommunications and transportation services”.
“The Complainant’s group has some 11,000 employees with a turnover of EUR 1.5 billion in 2011 with 30 sales partners worldwide”.
“The Complainant owns a number of registered trade marks for “Phoenix Contact” including the following:
- German trade mark no. 1104067 for the stylised words PHOENIX CONTACT in class 09, filed on April 16, 1982.
- International trade mark no. 511123, for the stylised words PHOENIX CONTACT in class 09, based on German trade mark No. 1104067, registered on May 8, 1987 and designated in DZ (Algeria), AT (Austria), BX (Benelux), CH (Switzerland), EG (Egypt), ES (Spain), FR (France), HR (Croatia), HU (Hungary), IT (Italy), LI (Liechtenstein), MA (Morocco), PT (Portugal), RO (Romania) and SK (Slovakia).
The Complainant’s main website is at phoenixcontact.com’.
The disputed domain name was registered on August 28, 2005.
As an unspecified date, the Respondent used the disputed domain name for a website with sponsored links to websites relating to animals and pets.
“The Complainant has not licensed or otherwise authorised the Respondent to use its trade mark”.
“As to paragraph 4(c)(i) of the Policy, the disputed domain name has been used for a parking page with links to animal and pet-related websites. Such use of the disputed domain name in the Panel’s opinion could not of itself confer rights or legitimate interests. See paragraph 2.6 of WIPO Overview 2.0, which states:
“Panels have generally recognized that use of a domain name to post parking and parking pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” … As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value … By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
“While one can discern a connection between the phoenix, a mythical bird, and sponsored links to animal and pet-related websites, the Panel does not consider that there has been a use of PPC links genuinely related to the generic meaning of the disputed domain name given that the disputed domain name contains a misspelling, and adds the word “contact”, not an obvious word to associate with a phoenix”.
“Accordingly, the Panel does not consider that this use of the disputed domain name constitutes a bona fide offering of goods or services”.
“The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy”.
“In the Panel’s view, it is obvious that the Respondent registered the disputed domain name with the Complainant’s trade mark in mind”.
“It is difficult to conceive of any plausible reason for combining the words “phoenix” and “contact” other than in connection with the Complainant’s trade mark, still less to use a misspelling of “phoenix”.
“The Respondent has not attempted to put forward any form of explanation or justification for its registration of the disputed domain name, beyond saying that the disputed domain name had previously expired and become available for registration”.
“Accordingly, under the circumstances described above, the Panel concludes that the Respondent registered the disputed domain name in bad faith”.
“The Panel also considers that the Respondent has used the disputed domain name in bad faith”.
“By using the disputed domain name, involving an obvious misspelling of the Complainant’s trade mark, in connection with a parking page, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark”.
“It is true that the parking page consists of links to animal / pet-related websites and not sites relating to the type of products produced by the Complainant. This may or may not have been an attempt by the Respondent to give the (false) impression that the disputed domain name was registered for generic purposes in connection with the mythical phoenix”.
“In any case, it makes no difference that users arriving at the Respondent’s site are likely to realize that the site is not connected with the Complainant”.
“Paragraph 4(b)(iv) of the Policy is concerned with the intentional attracting of Internet users. Here, the Respondent used the disputed domain name to create “initial interest confusion” on the part of Internet users seeking the Complainant and in order to profit from at least some of that traffic”.