Wedi.com saved in UDRP against WEDI GmbH, Germany

Wedi GmbH v. Dong Jin Kim [UDRP Case No Case No. D2020-2608]

The German Company Wedi GmbH brought complaint over the 4L (four letter) domain name WEDI.com. The disputed domain name was registered in August 2000 by the Respondent while the Trademark of the Trademark had a registration date that of January 2002, that is, the domain registration pre-dated the disputed domain name by 2 years. Though Complainant has been in exitence since 1983 as Wedi Wannenbauelemente GmbH, a leading manufacturer and system provider of tileable building materials and waterproof shower and construction system in many parts of the world.

Complainant alleged: 

• The disputed domain name is identical or confusingly similar to the Complainant’s trademark
• Disputed domain name contains the WEDI mark in its entirety.
• Since the word “wedi” is a family name of the founder of the Complainant’s company, the Complainant has been using the WEDI mark as the trade name and the trademarks.
• The Respondent has no legitimate rights or interests in the disputed domain name.
• The Complainant has the exclusive right of the WEDI trademark and has never authorized the Respondent to register or use the disputed domain name.
• The Respondent is not commonly known by the disputed domain name.
• The disputed domain name was registered and is being used by the Respondent in bad faith.
• The Respondent has failed to explain why he has not properly used the disputed domain name for 20 years and to provide any plausible evidence demonstrating that he has a solid reason for using it. In addition the Complainant alleges that before the Complainant got into contact with the Respondent, the Respondent’s website only showed the sign “under construction” and then its website was in operation immediately after contacting the Respondent.
• Given the Complainant’s widespread use of the mark in connection with tileable building materials, the floor-level shower and the design modules the Respondent knew or at least should have known, of the existence of the Complainant’s trademark and its use of WEDI mark at the time of registering the disputed domain name.
• Thirdly, the Respondent has a tendency to register the domain names that incorporate other’s trademarks. In addition the Respondent’s prior adverse UDRP decisions constitute further evidence of a pattern of bad faith registration. (see MPDV Microlab GmbH v Dongjin Kim, WIPO Case No. D2008-0065; Volkswagen AG 대김동진, WIPO Case No. D2003-0582).

The Respondent responds:

• Although the disputed domain name is identical to the Complainant’s trademark, the Respondent registered the disputed domain name <wedi.com> for its wedding information service one year and five months earlier than the Complainant registered the International Trademark WEDI Registration No. 780068 (Registration date of January 29, 2002).
• The Respondent was not aware of the Complainant’s registration of WEDI trademark, which was neither widely known nor famous at the time of registering the disputed domain name in the Republic of Korea. 
• The Respondent has rights or legitimate interests in the disputed domain name because the disputed domain name was legitimately registered and was not registered by the Respondent in bad faith.
• The Respondent registered the disputed domain in attempt to conduct its noncommercial business of wedding information, considering that “wedi” means “wedding information” service.
• In the beginning the Respondent failed to obtain the disputed domain name <wedi.com> which was already registered by someone other than the Complainant. However, as soon as the Respondent found that the registrant abandoned it, he registered it.
• This is further supported that at the same date of registering <wedi.com> the Respondent registered the domain names <jemi.com> for the male information service and <pegi.com> for the female. 
• The disputed domain name is neither registered nor is being used in bad faith. Firstly, it is impossible that the Respondent registered the disputed domain name <wedi.com> in bad faith, because he registered the disputed domain name much earlier than the Complainant registered the International Trademark WEDI Registration.
• Secondly, at the time of registering disputed domain name the Complainant’s trademark is neither famous nor widely known in the Republic of Korea where the Respondent resides. In addition the passive holding of a domain name does not constitute the bad faith use in the circumstance when its mark is neither distinctive nor widely known. The word “wedi” is a common family name and not distinctive.
• Thirdly, unless the Respondent does not infringe on the Complainant’s right in the WEDI mark, its registration and use of the domain name should be allowed (See DSPA B.V. v. Bill Patterson, Reserved Media LLC, WIPO Case No. D2020-1449). The failure of contacting the Respondent by the Complainant does not prove the bad faith use of the disputed domain name. 
• The Respondent asserts that the Complaint was brought in bad faith, especially in an attempt at Reverse Domain Name Hijacking. The Complainant knew that it could not succeed since the disputed domain name was registered much prior to the Complainant’s filing date of trademark application or the registration date of the WEDI trademark. 

Policy Conditions: 

Under paragraph 4(a) of the Policy, the Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; and 

The disputed domain name <wedi.com> incorporates the term “wedi” which is entirely identical to the Complainant’s trademark. In cases where a domain name incorporates the entirety of a trademark, the domain name will be considered confusingly similar to that mark for purposes of UDRP standing.

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

Not Analyzed

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a)(iii) of the Policy requires that the domain name “has been registered and is being used in bad faith”. Thus, for the Complaint to succeed, a UDRP panel must be satisfied that a domain name has been registered and is being used in bad faith. These requirements are conjunctive; each must be proven or the Complaint fails. In this proceeding the Panel needs look no further than the Complaint to determine that the Complainant has not established that the Respondent registered the disputed domain name in bad faith.

Firstly, in this present case, the disputed domain name was registered on August 10, 2000 prior to the Complainant’s registration of the WEDI trademark on January 29, 2002. Although the Complainant alleges its ownership of the numerous WEDI trademarks predating the registration of the disputed domain name, the evidences submitted to the Panel show that the WEDI trademarks predating the registration of the disputed domain name are currently owned by SW Verwaltungs GmbH, which is an independent legal entity, different from the Complainant. Here, it is questionable that the Complainant did not registered the domain name <wedi.com> together with the regional domain name <wedi.de> at the time of its registration in 1998 and now that the present owner of those WEDI trademarks could not be invited to join this proceeding by the Complainant, who alleges that two companies are in the same WEDI family business.

Even assuming that the Complainant could show authorization to hold and use the WEDI mark, it would not change the analysis or outcome here. Most importantly, given that the registration of the disputed domain name predates the relevant trademark rights, but not their claimed first use, it would be incumbent on the Complainant to show sufficient reputation that would make it incontrovertible that the Respondent knew of and targeted the Complainant when it registered the disputed domain name.

Secondly, previous UDRP panels’ consensual view is that, absent exceptional circumstances, when a domain name is registered by the Respondent before the Complainant’s trademark right, the domain name can generally not have been registered in bad faith, as the Respondent could obviously not have been aware of the Complainant’s trademark as of the time the domain name was registered.(Section 3.8.1 of WIPO Overview 3.0) These exceptional cases include the limited circumstances where the respondent’s intent in registering the domain name was to unfairly capitalize on the Complainant’s unregistered mark in anticipation of obtaining trademark rights; for example, (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application. In this respect the Complainant fails to prove such exceptional circumstances that the Respondent registered the disputed domain name in bad faith.

Thirdly, the Complainant contents that the Respondent knew or at least should have known, of the existence of the Complainant’s trademark and its use of WEDI mark at the time of registering the disputed domain name. On the other hand the Respondent responds that he was not aware of the Complainant’s trademark at time of registering disputed domain name because the Complainant’s trademark is neither famous nor widely known in the Republic of Korea where the Respondent resides. The Respondent claims that he registered the disputed domain name for the noncommercial business of wedding information, considering that “wedi” means “wedding information” service. In this respect the Complainant failed to prove the distinctiveness and reputation of the WEDI mark in the jurisdiction of the Respondent at the time the disputed domain name was registered and could not persuade the Panel to consider that a respondent knew or should have known that its registration would be identical to the Complainant’s WEDI mark.

Fourthly, the Complainant refers the Telstra case to prove the Respondent’s bad faith registration. (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.) However, the present case is quite different from the circumstance of the Telstra case, in which (i)the trademark was distinctive and widely known around world (ii) the Respondent took active steps to conceal its identity (iii) the Respondent breached the registration agreement by providing false contact details. Thus, so-called “passve holding” bad faith can not apply to this case.

Finally, the Complainant asserts that the Respondent has the tendency of registering numerous numbers of domain names that incorporate others’ trademarks. However, simply owning a number of domain names is not of itself evidence of bad faith. Unless the Respondent does not infringe on the Complainant’s right in the WEDI mark, its registration and use of the domain name may be allowed. In order for the Panel to find that the Respondent has engaged in a pattern of conduct for the purpose of paragraph 4(b)(ii) of the Policy, the domain names which the Respondent has registered would need to reflect third party trademark and to target the owner of the trademark. Further, there is no evidence before the Panel of any sale by the Respondent of these domain names. While passive holding can, in some circumstances, support a finding of bad faith registration given in particular the timing, there is no basis for such an assertion here because the trademark is neither famous nor widely known at the time of registration of the disputed domain name.

The Panel therefore concludes the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.

D. Reverse Domain Name Hijacking

The Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”). Paragraph 15(e) of the Rules provides that, “If after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. In addition, RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

In consideration of the circumstance that the Complaint had obtained the ownership of the WEDI trademark predating (in particular as to first claimed use) the Respondent’s registration of the disputed domain name which later transferred it to the other, the Panel cannot conclude that the Complainant filed its Complaint in bad faith for the purposes of RDNH, and mere lack of success of the Complaint is not in itself sufficient for a finding of RDNH.

The Panel is of the opinion that the Complainant has not filed its Complaint in bad faith as an attempt at RDNH.

The Panel denies the Respondent’s request for a finding of Reverse Domain Name Hijacking.

7. Decision

For the foregoing reasons, the Complaint is denied.

Moonchul Chang
Sole Panelist
Date: January 24, 2021

source: https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2020-2608