Decisión del Panel Administrativo nº D2018-1328 of WIPO Arbitration and Mediation Center, August 09, 2018 (case Digel Aktiengesellschaft v. Vinay Shan)
| Resolution Date | August 09, 2018 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Complaint denied |
| Dominio | Generic Domains |
The Complainant is Digel Aktiengesellschaft of Nagold, Germany, represented by Witte, Weller & Partner, Germany.
The Respondent is Vinay Shan of Gurgaon, India, represented by Cylaw Solutions, India.
The disputed domain name [digel.com] is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2018. On June 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2018, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2018. On June 26, 2018, the Respondent requested the automatic four-day extension of the deadline to file a Response under paragraph 5(b) of the Rules. The Center granted the requested extension and confirmed that the new deadline for Response was July 12, 2018. The Response was filed with the Center on July 12, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on July 26, 2018. 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.
The Complainant produces high-quality menswear. It was founded in 1939 in Nagold, Germany and now has about 300 employees.
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). Its registrations include, by way of example only, European Union Trade Mark registration no. 000043885 for DIGEL in class 25, registered on June 19, 1998. 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.
The Complainant says that it was founded in 1939 and that “Digel” has been used as its firm name since at least 1941. Its DIGEL trade mark is now in use in more than 40 countries and its Digel products are available in more than 3,000 shops. It has a portfolio of twelve DIGEL trade marks, details of which have been provided as part of the Complaint. The disputed domain name is therefore identical to a trade mark in which it has rights.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence, before any notice to the Respondent of the dispute, of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods and services. To the best of the Complainant’s knowledge, the Respondent does not own any trade mark registrations or trade mark applications or other rights in DIGEL. Furthermore, to the Complainant’s knowledge, the Respondent has not been commonly known by the disputed domain name.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. On March 2, 2018 the Complainant’s representative sent an email expressing interest in the disputed domain name and offering to pay a reasonable price for it. The Respondent’s representative replied indicating that the Respondent had paid a lot for the disputed domain name and the price would have to be well into five figures. The negotiations between the parties became deadlocked and no agreement was reached. Presently, the disputed domain name is offered for sale for a purchase price of EUR 47,169. This sum far exceeds the Respondent’s out-of-pocket costs directly related to the disputed domain name.
The Respondent says that he works for a company based in the USA helping with the monetization of domain names. It is that company, Level2 LLC, which owns the disputed domain...
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