Successfully Defended client in UDRP proceedings at WIPO against German Company Digel Aktiengesellschaft in DIGEL.com domain dispute.
1. The Parties:
The Complainant is Digel Aktiengesellschaft of Nagold, Germany, represented by Witte, Weller & Partner, Germany.
The Complainant owns a number of trade mark registrations for DIGEL in various classes relevant to its activities including class 25 (clothing) and class 18 (leather bags, wallets and purses). The Complainant also owns a domain name, <digel.de>, which resolves to a website promoting its products.
Prior to 2006, the Complainant’s international and national trade mark registrations covered many countries in Europe as well as, amongst other countries, China, the United Arab Emirates, the Russian Federation, Egypt and Ukraine. It obtained a trade mark registration for DIGEL in the United States of America (“USA”), as part of an international registration, in September 2014 and a trade mark registration in Canada in April 2017.
The disputed domain name was registered on July 11, 2006. It resolves to a website offering it for sale. Between March and April 2018 negotiations for the purchase of the disputed domain name took place between an Internet service provider, which was acting on behalf of an unnamed party (this being the Complainant) and a registrar acting on behalf of the Respondent. The Respondent sought USD 29,000 for the disputed domain name. However, the most the Complainant was willing to pay was USD 12,000 and, accordingly, the parties did not reach agreement.
(i) The disputed domain name is identical to a trade mark in which the Complainant has rights.
(ii) The Panel accordingly finds that there is no basis for finding that the Respondent knew, or could reasonably have been expected to know, of the Complainant or its rights in DIGEL as at the date of its registration of the disputed domain name in 2006. The Respondent’s assertion that it registered the disputed domain name because it might be of interest to multiple parties is credible. Having regard to the general approach of previous UDRP panels to this issue, as outlined above, its registration and offer for sale of the disputed domain name is considered to comprise a bona fide offer of goods and services.
The Complainant has not made out a prima facie case that the respondent lacks rights or legitimate interests. But, even if it had, the Respondent’s evidence is sufficient to rebut any burden of production on the Respondent’s part. The Panel accordingly finds that the Complainant has failed to establish that the Respondent lacks any rights or legitimate interests in the disputed domain name.
(iii) If the Respondent was unaware of the Complainant and its DIGEL trade mark as at the date of registration of the disputed domain name, as the Panel has found, it follows that the Respondent cannot have registered or acquired the disputed domain name for the purpose of selling or transferring it to the Complainant or a competitor of it. For that reason, the fact that the Respondent was plainly seeking in negotiations a sum in excess of its out-of-pocket costs directly related to the domain name does not assist the Complainant. None of the other circumstances which are, without limitation, set out at paragraph 4(b) as pointing to bad faith registration and use, are either alleged by the Complainant or are of application on these facts. The Complainant has therefore also failed to establish that the disputed domain name was registered and used by the Respondent in bad faith.
For the foregoing reasons, the Complaint is denied !
Read Complete decision @ https://www.indrp.com/germany-based-digel-loses-udrp-over-digel-com-domainer-rights-to-sell-upheld/