1. The Complainant argued that it should not have submitted an amended Complaint because the WHOIS registered indicated a privacy services as registrant and not the Respondent, who was only identified after the Complaint was filed. The Panel agrees that the Complainant complied with the requirements of the Rules, especially the requirement of Paragraph 3(b)(v) of the URDP Rules, which provides that Complainant should “[P]rovide the name of the Respondent (domain-name holder) and all information (including any postal and e-mail addresses and telephone and telefax numbers) known to Complainant regarding how to contact Respondent or any representative of Respondent, including contact information based on pre-complaint dealings, in sufficient detail to allow the Provider to send the complaint (..)”, when it identified Whois Privacy Corp. as the Respondent (e.g. Vanguard Trademark Holdings USA LLC and Enterprise Holdings, Inc. v. WanZhongMedia c/o Wan Zhong, CAC 100221 and paragraph 49 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). Therefore, the Panel is of the opinion that no amended Complaint is necessary. The initial Complaint has been regularly filed. From a procedural point of view, the change of the name of the Respondent after the notification of the Complaint shall be disregarded. This does, however, not mean that the Response shall be disregarded as it has been file by the actual Domain Name holder.
2. The Respondent claimed that the Complaint should be barred by the doctrine of laches because Complainant waited nearly 20 years to initiate this proceeding. Although some panels have accepted the doctrine of laches, the majority of the panels is of the opinion that the doctrine of laches does not generally apply in UDRP proceedings and should not result in the Complaint being inadmissible (paragraph 4.10 WIPO Overview 2.0). The Panel in these proceedings sees no reason to bar the Complaint by the doctrine of laches as such, although the Panel appreciates that the considerable delay to file the Complaint makes the Respondent’s intentions at the moment of registration of the Domain Name, for which the burden of proof is for the Complainant’s, more difficult.
3. It is well established that the generic Top-Level Domains (“gTLDs”) may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). While accordingly ignoring the gTLD “.com”, the Panel finds that the Domain Name is identical to the Complainant's trademark FEMCO. Consequently, the first element of paragraph 4(a) of the UDRP is met.
4. The Panel finds that the Complainant successfully submitted prima facie evidence that the Respondent has made no use of, or demonstrable preparations to use, neither of the Domain Name in connection with a bona fide offering of goods or services, nor is making a legitimate non-commercial or fair use of the Domain Name, nor is commonly known under the Domain Name. The Respondent did not challenge such prima facie evidence. Consequently, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the UDRP.
5. Pursuant to paragraph 4(b)(iv) of the UDRP, there is evidence of registration and use of the Domain Name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the FEMCO trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.
The Respondent admitted that at the time he registered the Domain Name there were different companies with the name, and possibly (unregistered) trademark FEMCO, although he claims that he wouldn’t have found the Complainant when he would have searched the US trademark register. The Respondent further argued that he registered the Domain Name as an acronym of “FEMale” and “COmpany”. The Panel considers that term “Femco” is neither a generic term nor known acronym and that Respondent has not provided any evidence for his alleged reason to register the Domain Name, while he was aware of companies’ names which were comprised in the Domain Name, and he admittedly had not searched a trademark database. While the trademark FEMCO was not yet registered in the United States when the Respondent registered the Domain Name, it was a registered trademark in the Benelux, and the Respondent should have considered the possibility of a conflicting trademark being registered elsewhere, especially in absence of the Respondent having any rights or legitimate interests in the Domain Name. Consequently the Respondent should have considered the Complainant’s prior right for which reason the Panel considers the registration of the Domain Name made in bad in faith.
The Panel is further satisfied that the Respondent used the Domain Name in bad faith, for the reason that the Respondent did not dispute the Complainant’s allegation that the website under the Domain Name is trading off the goodwill of the Complainant, by attracting internet users and diverting internet traffic intended for the Complainant to the Respondent’s website under the Domain Name for purposes of commercial gain, as some of the sponsored links are or may be offering products that compete with the products the Respondent is selling under the FEMCO trademarks.
Consequently, the third and last element of paragraph 4(a) of the Policy is also met.
|