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ADR Center for .eu attached to the Arbitration Court attached to the Czech Chamber of Commerce and the Agricultural Chamber of the Czech Republic (Czech Arbitration Court)
Panel Decision
§ B12 of the .eu Dispute Resolution Rules (ADR Rules)
Case No.: 07727 Time of Filing: 2018-12-27 11:04:24 Administrative Contact: Iveta Špiclová Complainant Name: Deutscher Anwaltverein e.V. Complainant's Authorized Representative Name: SCHULTZ-SÜCHTING Rechtsanwälte Part mbB, Torsten Spiegelhalder Respondent Name: Renee Fontane Respondent's Authorized Representative Name: Domain Name(s): DEUTSCHERANWALTVEREIN.EU Other Legal Proceedings English summary of the decision: English summary of this Decision is hereby attached as Annex 1 Factual Background
The Complainant has provided details of trademark registration including the following registration owned in the EU being DeutscherAnwaltverin & device under registration number 016287062 registered on January 25 2017 in classes 9,16,35,36,38,41,42,43,45
The Complainant relies on the above trademark registration as well as their common law rights arising from their long use of the name and their operation of the websites <deutscheranwalverein.de> and <anwaltverein.de> to sustain that the disputed domain name <deutscheranwaltverein.eu> infringes their trademark, is confusingly similar to their trademark, creates a danger of confusion to the public that the Respondent has no rights or legal interest in the subject domain name and that the Respondent registered and is using the domain name in bad faith.
The Respondent has not filed any response to the Complaint.Parties’ Contentions
In relation to the disputed domain name the Complainant states as follows:
1. The subject domain name is confusingly similar to its trademark, particularly in the circumstances in which it is being used and that where the subject domain name incorporates the entire trademark of the Complainant.
2. That the respondent has no legal interest in the subject domain name. The Respondent is using the subject domain name for legal services which are also covered by the Complainants trademark and related signs used by the Complainant.
3. That the Respondent has registered and is using the subject domain name in bad faith. They contend that the Respondent is solely using the name to create a pretence of a legal relationship between his entity and the Complainant in order to mislead recipients of warning letters sent by the email address info@deutscheranwaltverein.eu.
4. Lastly it contends that there is no legitimate use for the disputed domain name by the Respondent.Discussion and Findings
(i) The domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or Community law and; either
(ii) The domain name has been registered by the Respondent without rights or legitimate interest in the name or
(iii) The domain name has been registered or is being used in bad faith
The Panel also notes the provisions of article B10 of the ADR Rules regarding the failure of either Party to a complaint to comply with the time periods as set out in the ADR Rules and inferences that may be drawn from same.
(i) Identical or Confusingly Similar
The disputed domain name incorporates the Complainants´ trademark and business name in full. The Complainant has proven that it is the holder of the trademark and evidence has been provided of Community Trademark registrations and usage. The Respondent has not made any submission in response to this submission. The Panel finds that the domain name <deutscheranwaltverein.eu> is confusingly similar to a name in respect of which the Complainants have established a right. The Condition set forth at Article B11(d) (i) is fulfilled.
(ii) The domain has been registered by the Respondent without rights or legitimate interest in the name
Under the ADR Rules the burden of proof for the lack of rights and legitimate interests of the Respondent lies with the Complainant. The Complainants have demonstrated their legitimate interest in the Deutscher Anwaltverein name. The Complainants have further stated that they are not aware of any rights or legitimate interests that the Respondent has in respect of the disputed domain name. The Complainants in this case have submitted that the Respondent is only using the subject domain name to create a false impression of a legal relationship between his entity and the Complainant association.
Article B11 (e) of the ADR rules provides a non exhaustive list of circumstances that a respondent may use to demonstrate a legitimate interest. The Respondent has failed to provide any response and has therefore not demonstrated any legitimate interest or rights in the name. In the absence of any response from the Respondent or the presentation of any other evidence to the Panel proving any legitimate interest or rights of the Respondent the Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Having regard to paragraph B11(e) of the ADR Rules the Panel does not find that the Respondent has met any of the three threshholds set out therein namely:
1. The Respondent has not furnished evidence that prior to any notice of the dispute, it has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so;
2. It has not been known by the domain name;
3. The Respondent has not furnished any evidence to ground a claim that it has a legitimate and non-commercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law
(iii) The domain name has been registered or is being used in bad faith
As the Panel has reached the decision at (2) above it is not necessary to investigate if the domain was registered in bad faith but it is clear to the Panel that the disputed domain name was intentionally used to create a false impression of connection to the Complainant and this created a likelihood of confusion for consumers.
The Complainant Deutscher Anwaltverein e.V. has a registered office within the EU; therefore it satisfies the eligibility requirements under Paragraph 4 (2) (b) (i) of Regulation 733/2002 and is entitled to request the transfer of the disputed domain name.Decision
the domain name DEUTSCHERANWALTVEREIN.EU be transferred to the ComplainantPanelists
- Griffin Conor
Date: 2019-03-15 Annex 1
II. Country of the Complainant: Germany, country of the Respondent: France
III. Date of registration of the domain name: [27 June 2018]
IV. Rights relied on by the Complainant (Art. 21 (1) Regulation (EC) No 874/2004) on which the Panel based its decision:
1.. figurative CTM, reg. No. 016287062, for the term 10 years, filed on 25 January 2017, registered on [25 January 2017 in respect of goods and services in classes 9, 16, 35, 36, 38. 41, 42, 43, 45
V. Response submitted: No
VI. Domain name/s is/are identical/confusingly similar to the protected right/s of the Complainant Yes
VII. Rights or legitimate interests of the Respondent (Art. 21 (2) Regulation (EC) No 874/2004):
1. No
2. Respondent has not provided a response to demonstrate any rights or legitimate interests
VIII. Bad faith of the Respondent (Art. 21 (3) Regulation (EC) No 874/2004):
1. Yes
2. Evidence has been submitted showing that the domain name is being used to mislead consumers regarding fake breach of copyright claims and to create a false impression of association with the Complainant.
IX. Other substantial facts the Panel considers relevant:
X. Dispute Result: Transfer of the disputed domain name
XI. Procedural factors the Panel considers relevant:
XII. [If transfer to Complainant] Is Complainant eligible? Yes