WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Zwack Unicum Rt. v. Erica J. Duna

Case No.: D2000-0037

 

1. Parties

Complainant is Zwack Unicum Limited, a company organized under the laws of the Hungarian State, having its registered seat in Budapest.

Respondent is Erica J. Duna, an individual resident in Budapest (Hungary).

 

2. Domain Name and Registrar

The domain name at issue is "zwackunicum.com", registered with Network Solutions Inc. (NSI).

 

3. Procedural History

A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (WIPO Center) on February 4, 2000.

On February 8, 2000, an Acknowledgement of Receipt was sent by WIPO Center to Complainant and on February 9, 2000, the complaint was notified to the Respondent.

On February 8, 2000, a Request for Registrar Verification was transmitted to Registrar wherein NSI was notified by WIPO Center of the subject of Complaint and NSI was requested to

1) confirm that a copy of the Complaint was sent to NSI by Complainant, as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, Paragraph 4(b),

2) confirm that the specified domain name is registered with NSI,

3) confirm that the entity identified above as Respondent is the current Registrant of this domain name,

4) provide the full contact details (i.e., postal address(es) telephone number(s), facsimile number(s), e-mail address(es) that are available in NSIís WHOIS database for the domain name Registrant, technical contact, administrative contact and billing contact, for the above domain name(s), if registered with NSI,

5) confirm that the Uniform Domain Dispute Resolution Policy is in effect,

6) indicate the current status of the domain name.

On February 8, 2000, Network Solutions, Inc. confirmed by reply e-mail that "zwackunicum.com" is registered with NSI and Respondent Erika J. Duna is the current Registrant of that domain name, Network Solutions Inc. Service Agreement is in effect and the domain name is placed on "Hold" status.

On February 9, 2000, a Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator. Panel has independently determined and agrees with the assessment of the WIPO Center that Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by Complainant.

On February 9, 2000, a Notification of Complaint and Commencement of Administrative Proceeding was issued and transmitted along with a copy of the Complaint to Respondent by WIPO Center Case Administration setting a deadline of 20 days within which the Respondent could file a Response to the Complaint. The last day for sending the Response to WIPO was February 29, 2000.

On March 1, 2000, having received no Response from Respondent, WIPO Center issued a Notification of Respondent Default and on the same day WIPO Center invited Dr. Katalin Szamosi to serve as Sole Panelist in case No. D2000-0037 and a Statement of Acceptance and Request for Declaration of Impartiality and Independence was sent to her.

On March 3, 2000, pursuant to Paragraph 6 of Uniform Domain Name Dispute Resolution Policy Dr. Katalin Szamosi was appointed to Sole Panelist in the above case.

 

4. Factual Background

4.1. Complainant is the sole legal holder of the wordmark "Zwack Unicum" registered with the Hungarian Patent Office under No. 142 431 on March 3, 1994. Documentary evidence thereof is contained in Annex 3 of the Complaint.

4.2. Complainantís trade name is Zwack Unicum Liqueur Industry and Trading Company Limited, in short and generally used form Zwack Unicum Limited. The company was registered in the Company Register under No. Cg.01-10-042048 by the Registry Court of the city Budapest on December 31, 1992. Documentary evidence thereof is contained in Annex 4 of the Complaint.

4.3. The registration of the domain name "zwackunicum.com" was requested by Respondent on April 18, 1999. The domain name was used until July 21, 1999, when a letter was sent to NSI by Complainant requesting the suspension of use of the domain name in question. On September 13, 1999, the domain name was placed on "Hold" by NSI.

4.4. On January 13, 2000, Complainant received a letter from NSI informing Complainant that under the new Domain Name Dispute Policy the "Hold" on the "zwackunicum.com" domain name would be removed and the domain name reactivated, unless Complainant would file a Complaint under the new domain dispute policy.

Respondentís website address "www.zwackunicum.com" made for Internet user possible to hyperlink automatically to one of the principle competitors of Complainant in the alcoholic beverages market.

 

5. Parties contentions

A. Complainant

Complainant contends that Respondent has registered as a domain name a mark which is identical to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

B. Respondent

Respondent has not contested the allegations of the Complaint.

 

6. Discussion and Findings

6.1. Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) that the domain name registered by Respondent is identical or confusingly similar to a trademark in which Complainant has rights; and

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

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

6.2. Paragraph 15/a of the Policy instructs Panel as to the principles Panel is to use in rendering its decision. "A Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".

As to the question of the law to be applied the fact has to be considered that here the parties are domiciled in the same country (Hungary) but the domain names were registered in the USA. On deciding in the case both the applicable Hungarian law and at the same time the legislative history of ICANN and the decisions of WIPO Center Administrative Panel have to be considered.

This question is especially relevant concerning ß 4.a (iii) of the Policy, according to which the domain name must not only be registered in bad faith, but it must also be used in bad faith. Its clear from the decision made in case No. 99-00001 Word Wrestling Federation Entertainment, Inc. v. Michael Brossman that Complainant must establish not only bad faith registration, but also bad faith use.

6.3. On basis of the above during the examination of the case all circumstances as set forth in ß 4.a were covered.

4.a. (i) Identity and confusing similarity

Complainant proved that he is the sole legal holder of the trademark "Zwack Unicum" registered under number 142 431 with the Hungarian Patent Office. Pursuant to ß 27 of the Act XI of 1997 on the Protection of Trademarks any person who unlawfully uses a mark identical or confusingly similar to that of a third partyís trademark commits trademark infringement. Respondentís domain name is judged as identical to the Complainantís trademark.

Complainant certified that the domain name of Respondent is identical and confusingly similar to the short-form registered company name of the Complainant, Zwack Unicum Ltd.

4.a.(ii) Right and legitimate interests

Respondent could not present any evidence or refer to any circumstances on basis of which he could have the rights to use the domain name "zwackunicum". Since Complainant stated that it has not given its consent or a licence to Respondent on basis of which Respondent could legally have the rights to register the trademark in question as a domain name, it must be concluded that the word "zwackunicum" is associated exclusively with the Complainantís company and its trademark. Considering the above Panel found that Respondent has no rights or legitimate interests in respect of the domain name use.

4.a.(iii) Registration and use of domain name in bad faith

Considering the fact that pursuant to Uniform Resolution Policy not only bad faith registration but also bad faith use have to be proved by Complainant, the examination must cover both issues. The first issue to be determined is whether it can be proved by the Complainant that the domain name "zwackunicum.com" has been registered by Respondent in bad faith. With knowledge of the facts Panel found that on having the domain name registered Respondent must have been aware of the fact that Zwack Unicum is a well-known trademark in Hungary and enjoying good reputation. The company Zwack Unicum Limited is advertising continuously in the best-visited media (Hungarian Television, weekly and monthly papers, ads on giant posters).

Further the product Zwack Unicum is an unique liqueur, well-known and good reputed not only in Hungary but also throughout the world. Under the applicable Hungarian law, Act XI of 1997 on the Protection of Trademarks the registration of the domain name "zwackunicum.com" violates Complainantís trademark rights. Respondent has not given any reasonable comments on basis of which it could excuse itself for being not aware of Complainantís trademark and trade name when having the domain name in dispute registered.

Considering the above the registration of "zwackunicum.com" was effectuated in bad faith.

On examining bad faith use the fact is relevant that it is possible to hyperlink to homepage www.jagermeister.com from Respondentís website address. It can be stated as a fact that Complainant Zwack Unicum and Jägermeister are in the alcoholic beverage market but especially concerning herbal liqueurs principal competitors worldwide. Under competition law these products are qualified as fungible goods thus the legal injury is rather grave.

Consequently, in light of hyperlinking from "zwackunicum.com" domain address to Complainantís competitor, Jägermeisterís home page the Administrative Panel stated that the domain name was used in bad faith.

6.4. Considering the above facts the Administrative Panel concluded that

(i) Complainantís trademark is well-known and has a good reputation in Hungary and also throughout the world,

(ii) Respondent could not present any evidences and legality when using the Complainantís trademark and trade name as domain name,

(iii) Respondent made false representation and warranties for registration.

(iv) Respondent used its domain name to re-direct Internet user visiting its website address "www.zwackunicum.com" automatically to the homepage of Complainantís main competitor.

In light of the above facts the Administrative Panel stated that Complainant has duly proved its Complaint.

 

7. Decision

For all of the foregoing reasons, Panel decides that the domain name registered by Respondent is identical or confusingly similar to the trademark and trade name in which the complainant has rights, and that Respondent has no rights or legitimate interests in respect of the domain name, and that Respondentís domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4.i. of the Policy, Panel requires that the registration of the domain name "zwackunicum.com" be transferred to Complainant.

 


 

Dr. Katalin Szamosi
Sole Panelist

Dated: Budapest, March 10, 2000