Mr. Hans Jakob Limbach v. Matthew V. Millett, Millett International Holdings (HK) Ltd
Case No. D2015-1297
1. The Parties
Complainant is Mr. Hans Jakob Limbach of Heidelberg, Germany, represented by BPM Legal, Germany.
Respondent is Matthew V. Millett, Millett International Holdings (HK) Ltd, of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2015. On July 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on August 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 27, 2015.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on September 16, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is a physician and medical specialist for laboratory medicine who founded his Heidelberg, Germany laboratory in 1979, which now has more than 30 locations, 300 medical specialists and 5,500 employees.
Complainant owns the Community registered trademark no. 005881941 for LABOR LIMBACH in classes 39, 42 and 44, registered on February 29, 2008. Complainant also owns the Community registered trademark no. 005884911 for LIMBACH LABORATORIES in classes 39, 42 and 44, registered on April 1, 2008. Complainant offers his companies’ services online at .
The disputed domain name was registered on September 30, 2012 and expires on September 30, 2015.
5. Parties’ Contentions
Complainant states that he is the founder of one of the leading laboratories and the biggest owner-operated group of laboratories in Germany, in connection with which the LABOR LIMBACH mark is used. Complainant alleges that the disputed domain name is confusingly similar to his LABOR LIMBACH trademark because it is identical, with only the addition of a dash between the words, and “.com”. Additionally, the second level of the disputed domain name is identical to the second level of the domain name Complainant uses for his business: .
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for or use the disputed domain name, which incorporates Complainant’s LABOR LIMBACH mark. Complainant further alleges that there is no evidence that Respondent intends to use the disputed domain name in connection with a bona fide offering of goods or services, or that Respondent is known by or trades under the name “Labor Limbach”.
Regarding bad faith registration, Complainant alleges that its LABOR LIMBACH mark is highly distinctive, solely connected to Complainant and well established, such that Respondent must have been aware of Complainant’s mark when the disputed domain name was registered. Regarding bad faith use, Complainant provided evidence showing that the disputed domain name directed to a pornographic website, which Complainant alleges is per se bad faith use. Complainant further alleges that Respondent’s use of the disputed domain name disrupts Complainant’s business by reducing the number of visitors to Complainant’s website.
Respondent did not respond to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the LABOR LIMBACH trademark in view of its trademark registrations. The Panel further finds that the disputed domain name is confusingly similar to the LABOR LIMBACH mark because it incorporates the entirety of the trademark. The addition of a “-” between “labor” and “limbach” and the addition of “.com” does not differentiate the disputed domain name from Complainant’s mark.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
The evidence of record supports Complainant’s unrebutted allegations that Respondent is not authorized to use the LABOR LIMBACH mark and is not a licensee of or affiliated with Complainant. While the disputed domain name currently resolves to a parked page stating “Welcome to labor-limbach.com This site is under construction and will be available soon”, Complainant provided evidence that the disputed domain name was forwarding Internet users to the website “www.pornhub.com” which contains pornographic content. Such use does not establish rights or legitimate interests, and is not a bona fide offering of goods or services. See, e.g., National Football League Prop., Inc., et al. v. One Sex Entm’t. Co., WIPO Case No. D2000-0118. Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name; Respondent, by virtue of its default, has failed to rebut that showing.
The Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Regarding bad faith registration, the Panel finds that Complainant’s LABOR LIMBACH mark has been registered since 2008, more than four years prior to the date that the disputed domain name was registered. Moreover, the mark appears to only refer to Complainant and his services. It is therefore unlikely that Respondent was unaware of the LABOR LIMBACH mark and Complainant’s rights when it registered the dispute domain name.
Regarding bad faith use, because the disputed domain name redirected to a website featuring pornographic content, the Panel finds that such use diverts Internet traffic from Complainant’s website for commercial gain, such that the disputed domain name is being used in bad faith. See, e.g., Bass Hotels & Resorts v. Mike Rodgerall, WIPO Case No. D2000-0568.
The panel observes that the disputed domain name was set to expire on September 30, 2015 and the Parties were notified of this by the Center. The ICANN Expired Domain Deletion Policy (EDDP) addresses this issue, and states as follows:
“22.214.171.124.In the event that a domain which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, the complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant. If the complainant renews or restores the name, the name will be placed in Registrar HOLD and Registrar LOCK status, the WHOIS contact information for the registrant will be removed, and the WHOIS entry will indicate that the name is subject to dispute. If the complaint is terminated, or the UDRP dispute finds against the complainant, the name will be deleted within 45 days. The registrant retains the right under the existing redemption grace period provisions to recover the name at any time during the Redemption Grace Period, and retains the right to renew the name before it is deleted.”
Since the disputed domain name presumably expired on September 30, 2015, it is not clear what effect a transfer order would have as neither Party has apparently taken any steps to renew the disputed domain name. The Panel nonetheless finds that Complainant’s evidence does satisfy the Policy and justify a transfer of the disputed domain name. Complainant should be considered a prevailing Complainant under this proceeding and entitled to all remedies available to a prevailing complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Lawrence K. Nodine
Date: October 8, 2015