A German thermal solutions company attempted to use its Thermamax mark to wrestle the domain Tmax.com away from its Korean registrant.
The domain’s registration (2000) predates all marks, and the Complainants limited reach outside of Germany let a three member panel to deny the domain’s transfer.
They also found the Complainant guilty of Reverse Domain Name Hijacking:
“It looks to the Panel as if this is a case in which the Complainant has, some years after registration of the disputed domain name, decided to gradually re-brand from “Thermomax” to “Tmax” and has undertaken a programme of registering or acquiring various domain names incorporating TMAX accordingly. More recently, in September 2019, the Panel infers on balance that the Complainant decided that it also required the key “.com” Top-Level domain name but after its efforts to contact the Respondent bore no results it then decided to proceed with this Complaint, regardless of the likelihood that it would not be able to demonstrate the Respondent’s registration in bad faith. This is not the purpose for which the Policy was conceived and in the Panel’s view amounts to reverse domain name hijacking.”
Full details on this decision for Tmax.com follow:
Copyright © 2024 DomainGang.com · All Rights Reserved.Thermamax Hochtemperaturdämmungen GmbH v. MySite Corporation
Case No. D2020-02461. The Parties
The Complainant is Thermamax Hochtemperaturdämmungen GmbH, Germany, represented by Reble & Klose Attorneys & Patentattorneys, Germany.
The Respondent is MySite Corporation, Republic of Korea, self-represented.
2. The Domain Name and Registrar
The disputed domain name <tmax.com> is registered with Gabia, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2020. On January 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2020, 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.
On February 18, 2020, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On February 21, 2020, the Complainant requested for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
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 in both English and Korean of the Complaint, and the proceedings commenced on February 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2020. On March 10, 2020, the Respondent requested a three-member Panel. The Response in both English and Korean was filed with the Center on March 16, 2020.
The Center appointed Alistair Payne, Andrea Jaeger-Lenz, and Steven A. Maier as panelists in this matter on April 8, 2020. The Panel finds that it was properly constituted. Each member of 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
The Complainant based in Germany operates an international business in the design and manufacture of thermal and acoustic insulation systems for engine compartments and exhaust lines for engines and drive systems. It owns various combined word and logo trademark registrations that include the stylized characters TMAX, including in particular, German trade mark registration no. 39600221 registered on July 3, 1996, European Union trade mark registration no. 000718817 registered on May 31, 1999, and International trade mark registration no. 1003207 registered on February 19, 2009. It also owns numerous generic and country code Top-Level domain names that incorporate its TMAX trade mark.
The Respondent registered the disputed domain name on September 26, 2000. Since that time it has redirected to a parking service provider’s page.
5. Parties’ Contentions
A. Complainant
The Complainant submits that it owns various trade mark registrations that incorporate its TMAX mark as noted above. These registrations, says the Complainant, contain TMAX as their dominant element and the disputed domain name is therefore identical to the Complainant’s registered trade marks except for the “.com” element.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. It notes that the disputed domain name was registered in September 2000 which was long after the 1996 and 1999 registration dates of the Complainant’s registered trade marks. Considering, says the Complainant, the international market presence of the Complainant and its mark by the date of registration of the disputed domain name, the Respondent must have known of the Complainant’s trade marks.
The Complainant further says that the disputed domain name has only been used to redirect to a parking page that features pay-per-click (“PPC”) links on “Yamaha” and “Tmax” products since registration in 2000. This says the Complainant demonstrates that the Respondent has not made any preparations to use the disputed domain name for any bona fide purpose. It says that, to the best of its knowledge, the Respondent is not commonly known by the trade name “tmax” and is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant says that its TMAX trade mark is inherently distinctive for the goods and services for which it is registered and has become even more distinctive as a result of considerable worldwide use since 1996. In summary the Complainant submits that the fact that the disputed domain name has only been used to divert to a website that provides PPC links in relation on “Tmax” products of the Complainant, to Yamaha products, and to a Tmax Scooter is indicative of the Respondent’s bad faith. The Complainant says that the use of these PPC links supports a finding of bad faith registration as a result of the Respondent seeking to profit from the reputation attaching to these marks and products by diverting Internet users and then obtaining PPC revenues. In addition, the Complainant submits that the fact that the Respondent has concealed his identity and refused to respond to the Complainant’s emails suggests that his contact details are false.
B. Respondent
Firstly, the Respondent submits that the Complainant’s registered trade mark right is only in Germany while the disputed domain name is designed to be based in the Republic of Korea.
The Respondent submits that it registered the disputed domain name in 2000 originally for the purposes of supporting a business using the phrase “Try Maximum”.
The Respondent says that the term “tmax” is widely used as a combination of generic words, acronyms, surnames and first names, as the name of musical artists, as trade marks, as the abbreviation of companies, or as identification terms for items from a company. The Respondent submits numerous examples of such use in commerce. As a result, the Respondent submits that the term is neither distinctive nor proprietary but generic or in common usage for various purposes and has no unique significance.
The Respondent notes that the Complainant has been carrying on business under the “Thermamax” brand and that the Complainant’s website at “www.thermamax.com” did not come into existence until August 15, 2007. It says that the Complainant’s TMAX mark has only been effectively used domestically in Germany and as the Complainant is not listed on the domestic German stock market this makes the Complainant’s claim of global repute dubious.
The Respondent says that the domain names belonging to the Complainant that contain “tmax” were all registered significantly after the registration date of the disputed domain name, which implies, according to the Respondent, that the Complainant considers THERMAMAX to be the primary trade mark for their target market and “tmax” to be a reference word. It notes also that all 62 of the Complainant’s domain names redirect to the website at <thermamax.com> and that the global trade mark used by the Complainant was filed on February 19, 2009 and registered on September 21, 2010 and that this occurred well after the registration date of the disputed domain name. The Respondent also asserts that the Complainant’s TMAX mark does not attract global recognition on the Internet and the Respondent has provided evidence of search results in search engines and social networks to this effect. The Respondent submits as a result that the Complainant was not using the TMAX mark when the Respondent registered the disputed domain name.
The Respondent says that it did not register the disputed domain name in order to disrupt the Complainant’s business. In this regard it notes that it is not in competition with the Complainant and that the Complainant’s domestic use of its trade mark was not known to the Respondent operating in a different country.
The Respondent says that pending the launch of its website it used a parking service in order to avoid not using the disputed domain name and that the PPC link pages were not determined by the Respondent and in any event the website at the disputed domain name attracts very few visitors and ranks very low on Alexa. The Respondent notes that domain names that are registered as being for sale often display the legend “This domain is for sale” on their front page, however it has never sought to sell, or rent the disputed domain name and accordingly has never responded to the Complainant’s email requests to purchase the disputed domain name.
The Respondent maintains that the Complaint is an example of reverse domain name hijacking. In addition to its case as set out above, it suggests that the Complainant recently underwent a change of shareholding and of its website and also acquired the domain names <tmaxgroup.com> and <tmax-holding.com>. The Respondent says that it suspects that the Complaint is an attempt to acquire <tmax.com> for the purposes of the re-branded company.
6. Discussion and Findings
Under paragraph 11 of the Rules, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise. Although the language of the registration agreement here is Korean, it is apparent based on the English name of the Respondent Corporation and the fact that the Respondent submitted the Response in English, that the Respondent will not be prejudiced by these proceedings being carried on in the English language. Accordingly, the Panel determines that the language of these proceedings will be English.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns various combined word and logo trademark registrations that contain the term “tmax”, including in particular, German trade mark registration No. 39600221 registered on July 3, 1996, European Union trade mark registration No. 000718817 registered on May 31, 1999, and International trade mark registration No. 1003207 registered on February 19, 2009. The word “tmax” is the dominant element of these combined logo and word mark registrations and is identical to the element of the disputed domain name before the “.com” Top-Level Domain root.
As a result, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s registered trade mark rights and the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has no rights or legitimate interests in the disputed domain name. It says that the disputed domain name was registered in September 2000 which was long after the 1996 and 1999 registration dates of the Complainant’s registered trade marks. According to the Complainant the Respondent must have known of the Complainant’s trade marks because of the international market presence of the Complainant and of its mark by the date of registration of the disputed domain name.
The Complainant further says that the disputed domain name has only been used to direct to a parking page that features PPC links on “Yamaha” and “tmax” products since registration in 2000. This says the Complainant demonstrates that the Respondent has not made any preparations to use the disputed domain name for any bona fide purpose. It submits that, to the best of its knowledge, the Respondent is not commonly known by the trade name “tmax” and is not making a legitimate noncommercial or fair use of the disputed domain name.
By contrast the Respondent says that the term “tmax” is widely used as a combination of generic words, acronyms, surnames and first names, as the name of musical artists, as trade marks and as the abbreviation of companies or as identification terms for items from a company and has provided a wide variety of evidence in this regard. As a result, the Respondent submits that the term is neither distinctive nor proprietary but is rather in common usage for a variety of purposes. Based on the evidence submitted, the Panel accepts this to be the case.
The Complainant, based in Germany, has provided very little evidence to support its assertion that its TMAX mark is known internationally and in particular in the Republic of Korea, whether at the date of the registration of the disputed domain name in 2000, or currently. The Complainant’s sector of activity appears to be quite specialized, concerned as it is with the design and manufacture of thermal and acoustic insulation systems for engine compartments and exhaust lines for engines and drive systems. The Respondent, based in the Republic of Korea, notes that it does not operate or compete in this sector and even if the Complainant’s TMAX mark does enjoy a wide degree of repute in this business sector (on which the Panel makes no finding), there is nothing on the record to suggest to the Panel that the Respondent would, or should have been aware of the Complainant’s business and trade mark when it registered the disputed domain name, or indeed after that date. In fact, it appears that although the Complainant had earlier trade mark rights in its home European territories, its International registration for TMAX only dates from 2009 and even then only designates the United States of America and China.
Although it is clear that the Complainant uses its TMAX mark, based on its own website screenshots as submitted in evidence, it looks to the Panel as if the Complainant’s principal trading name and trade mark is “Thermamax” which is consistent with the Respondent’s contention that the Complainant’s 62 TMAX domain names all redirect to its website at “www.thermamax.com”. This only serves to reinforce the Panel’s view that there is no reason why the Respondent would have known of the Complainant’s business and trade mark rights as submitted by the Complainant.
Although the Respondent has not developed its own business using the disputed domain name, the fact that the disputed domain name has been redirected since its registration in 2000 to a parking page containing PPC links is not necessarily indicative of a lack of bona fides or of bad faith in circumstances that the Respondent has targeted precisely the Complainant. For the further reasons outlined under Part C below, the Panel finds no such evidence of targeting.
Accordingly, the Panel finds that the Complainant has not successfully fulfilled the onus upon it under this part of the Policy of demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name. As a result and also for the reasons set out under Part C below, the Panel finds that the Complaint fails under this element of the Policy.
C. Registered and Used in Bad Faith
At the date of registration of the disputed domain name the Complainant owned registered trade mark rights for its TMAX combined word and device mark only in Germany and in the European Union. There is insufficient evidence on record to suggest that at that date the Complainant enjoyed such a degree of reputation attaching to its TMAX mark that the Korean based Respondent would or should have known of the Complainant’s business or trade mark rights. This is even more so the case in circumstances that the Complainant operates in quite a specialized area of business activity, as described under Part B above and the Respondent says that it is not a competitor and does not operate in the same field of activity.
Further, it appears based on the historical screen shots of the Complainant’s website at “www.thermamax.com” submitted by the Respondent, that the Complainant’s website used “Thermamax” as its main mark around 2003–2004 and based on those screen shots there is no evidence of the presence of the Complainant’s TMAX mark at all. The Respondent also made the unchallenged assertion that the Complainant did not have a website (based on the Wayback Machine) in 2000 when the disputed domain name was registered. On this basis the Panel finds that it is more likely than not that the Respondent was not aware of the Complainant’s TMAX mark when it registered the disputed domain name in 2000 and therefore did not register the disputed domain name in bad faith.
Furthermore, in the circumstances, as noted above, that the Panel has found that the disputed domain name was not registered in bad faith and considering that the Parties are not in competition, that they operate in completely separate jurisdictions, that the term “tmax” appears to be used in common by numerous traders, and that there are no other factors to suggest that the Respondent in any way targeted the Complainant, whether by changing parking page providers after registration in order to do so, or otherwise, then the Panel does not consider that the use of a PPC parking page in this case featuring automatically generated links, which according to the Respondent does not generate profit because of its very low ranking, amounts to use of the disputed domain name in bad faith. Further, while there are links on the PPC page that refer to the term “Yamaha tmax” scooter (or to “tmax 530”, or “tmax usato”, apparently also related to Yamaha), it is not clear from the evidence what would be the connection between Yamaha and the Complainant (if any), and there are none that appear to refer to any “Tmax” products of the Complainant on its own. Thus, there does not appear to be enough evidence of bad faith vis-à-vis the Complainant in that regard.
In addition, the Panel notes that the Respondent did not respond to the Complainant’s emails seeking to acquire the disputed domain name, which is consistent with the Respondent not having sought to target the Complainant.
This is not to say that the Panel endorses a general approach that suggests that the diversion of a disputed domain name to a PPC parking page that generates automatically generated links cannot amount to use in bad faith. It is simply a question that in the Panel’s view of this particular case, the circumstances surrounding registration and use of the disputed domain name do not point to the Respondent’s targeting of the Complainant such as necessarily amounts to use in bad faith.
However, even if the Panel was to take a more narrow approach and to follow that of those UDRP panels that have found that a registrant cannot disclaim responsibility for the various links on a website linked to a disputed domain name where they are concerned either with the complainant or with the field of commercial activity in which the complainant operates (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 3.5), the Panel notes that the requirement under this element of the Policy is conjunctive, such that the Complainant must make out a prima facie case that the disputed domain name has on the balance of probabilities been both registered and used in bad faith. In circumstances that the Panel has expressly found that the disputed domain name was not registered in bad faith then the Complaint would also fail under this element of the Policy.
7. Reverse Domain Name Hijacking
The Respondent claims that this Complaint amounts to a case of Reverse Domain Name Hijacking (“RDNH”). RDNH is defined under the UDRP Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. In general UDRP panels have found RDNH in circumstances that a complainant should have known that it could not succeed under any element of the Policy. In this case the Panel finds that the Complainant should have known that it would be unable to fulfil the necessary onus upon it of demonstrating that the disputed domain name was registered in bad faith.
For the various reasons outlined in this regard under Part 6.C above, the legally advised Complainant should have known that this was not a case in which it could successfully make out a case that the disputed domain name was registered in bad faith. It looks to the Panel as if this is a case in which the Complainant has, some years after registration of the disputed domain name, decided to gradually re-brand from “Thermomax” to “Tmax” and has undertaken a programme of registering or acquiring various domain names incorporating TMAX accordingly. More recently, in September 2019, the Panel infers on balance that the Complainant decided that it also required the key “.com” Top-Level domain name but after its efforts to contact the Respondent bore no results it then decided to proceed with this Complaint, regardless of the likelihood that it would not be able to demonstrate the Respondent’s registration in bad faith. This is not the purpose for which the Policy was conceived and in the Panel’s view amounts to reverse domain name hijacking.
8. Decision
For the foregoing reasons, the Complaint is denied.
Alistair Payne
Presiding PanelistAndrea Jaeger-Lenz
PanelistSteven A. Maier
Panelist
Date: April 21, 2020
