WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
August Storck KG v. Tony Mohamed
Case No. D2000-0196
1. The Parties
Complainant is August Storck KG, a German company, having its principal place of business at Waldstrasse 27, 13403 Berlin, Germany. Complainant is represented by Joseph F. Schmidt and G. Peter Albert, Jr.; Laff, Whitesel & Saret, Ltd.; 401 N. Michigan Avenue, Suite 1700; Chicago, Illinois 60611; U.S.A.
According to the registrar's whois database, Respondent is Tony Mohamed, RR#2 Petersburg, Ontario, Canada NOB 2HO.
2. The Domain Name and Registrar
The domain name at issue is <werthersoriginal.com> ("Domain Name"). The registrar is Network Solutions, Inc. ("NSI").
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on March 22, 2000. An Acknowledgment of Receipt was sent on March 24, 2000, by the WIPO Center to Complainant.
On March 24, 2000, a Request for Registrar Verification was transmitted to NSI. NSI confirmed by reply e-mail on March 28, 2000, that the Domain Name is registered with NSI, that Respondent, Tony Mohamed, was the current registrant of the name and that NSI's 4.0 Service Agreement was in effect. The reply also contained contact information for Respondent.
No formal deficiencies having been recorded, the WIPO Center transmitted a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") to Respondent on March 29, 2000, setting a deadline of April 17, 2000, to file a Response to the Complaint. The Commencement Notification was transmitted to email@example.com (registrant), firstname.lastname@example.org (administrative/billing contact) and email@example.com (technical contact/zone contact). In addition, the Complaint was sent by facsimile to the listed fax numbers and by EMS courier service to all available postal addresses of Respondent.
Having reviewed the communications' records in the case file, the Panelist finds that the WIPO Center has discharged its responsibility under par. 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") to "employ reasonably available means calculated to achieve actual notice to Respondent."
On April 18, 2000, having received no Response from Respondent, the WIPO Center transmitted a Notification of Respondent Default to Complainant's representative and to Respondent by e-mail (firstname.lastname@example.org and email@example.com) and courier service.
On April 20, 2000, having received Dr. Bernhard F. Meyer-Hauser's Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date of May 3, 2000. The Sole Panelist finds that the Panel was properly constituted and appointed in accordance with the Rules and WIPO Supplemental Rules.
4. Factual Background
The following facts and statements appear from the Complaint and the documents annexed to the Complaint and have not been contested:
Complainant states that it has been engaged in the manufacture, distribution and sale of candy for over 80 years, that it is one of the leading distributors of packaged hard candy in the United States and throughout the world and that the trademark WERTHER'S ORIGINAL which is used to identify a line of candy has been registered in many countries throughout the world and has been in continuous use since approximately 1978.
Complainant's trademark has been registered in Canada on September 30, 1994, (Reg. No. 433,881; filing date: March 16, 1992) and in the U.S.A. on March 25, 1997 (Reg. No. 2,046,862; filing date: April 23, 1992).
Complainant states further that: (1) its goods are distributed and sold through food and drug mass merchandisers throughout the world, including supermarkets and grocery chains such as K-Mart, Wal-Mart, Jewel, Osco, Walgreen's and Dominick's in the United States; (2) it has advertised and promoted WERTHER'S ORIGINAL candy in local, network and cable television commercials, nationally circulated trade publications, newspapers, point-of-sale materials, and displayed the candy in trade shows throughout the world. Complainant asserts that, as a result of its substantial and extensive advertising and sales, it has acquired valuable goodwill in its mark and the mark has become widely and favorably known throughout the United States and elsewhere throughout the world.
5. Parties’ Contentions
Complainant contends that Respondent has registered a domain name which is identical to a trademark registered by Complainant, that Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
In particular, Complainant contends that Respondent has not used or made demonstrable preparations to use the Domain Name, that Respondent, on information and belief, is not commonly known by the disputed domain name and has not acquired any trademark or service mark rights in the disputed Domain Name, and that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.
Complainant further contends that Respondent has registered the Domain Name in order to prevent Complainant from reflecting the mark in a corresponding domain name or with the intent of selling, renting, or otherwise transferring the Domain Name registration to Complainant or a competitor of Complainant for valuable consideration in excess of Respondent's out-of-pocket costs related to the domain name, and that Respondent's registration of multiple domain names corresponding to the famous trademarks of others (including the domain name werthersoriginal.com) is further evidence of Respondent's bad faith registration and use of the Domain Name werthersoriginal.com.
As mentioned above, Respondent has been notified in accordance with par. 2(a) of the Rules, but failed to submit a Response. Thus, Complainant's allegations are deemed to be non contested.
6. Discussion and Findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") provides that a complainant must prove each of the following: (i) that the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no legitimate rights or interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith.
Identity with trademark (par. 4(a)(i)): The Domain Name at issue, werthersoriginal.com, is identical to Complainant's registered trademark, WERTHER'S ORIGINAL, except for the fact that domain names cannot include spaces or apostrophes.
Legitimate interest (par. 4(a)(ii)): Respondent has not provided evidence of legitimate rights or interests in respect of the Domain Name by any circumstances of the type specified in par. 4(c) of the Policy, or of any other circumstances giving rise to a right or to a legitimate interest in the Domain Name. To the contrary, in an e-mail of May 20, 1999, presented by Complainant to the Panelist, Respondent stated to Complainant's representative that he "had never and would never use [sic] this name for goods and services."
Bad faith registration and use (par. 4(a)(iii)): Complainant alleges a registration of multiple domain names corresponding to the famous trademarks of others, including one in the candy field, as evidence of Respondent's pattern of conduct according to 4(b)(ii) and bad faith under par. 4(a)(iii) of the Policy. As an example, Complainant points out the domain name russellfrank.com registered by Respondent and alleges correspondence to a trademark "Russell Frank". According to NSI's whois database, Respondent has registered the following other second level domains: national-funds, marketvest, motiondetector, transporttrucks, nationalbonds, national-trade, hdtvreceiver, hdtvconverter, fcoj [remark: abbreviation for frozen concentrated orange juice], investersgroup, investergroup, ice-tea, irishcreme. In spite of the above, it is not clearly established to the Panelist's satisfaction that the above domain names, due to their general nature, relate to registered trademarks, and that Frank Russell Corporation has registered a trademark "RUSSELL FRANK". Neither does the Panelist see a clear relation to the "candy field".
Nevertheless, in WIPO D2000-0003, at page 10, as well as in other WIPO decisions, it was held that passive holding of a domain name may be sufficient to constitute bad faith use, taking into consideration the overall context of Respondent's behavior. In the present case, the following circumstances seem relevant in this respect: Complainant's trademark is well known and has a strong reputation; Respondent has provided no evidence of any good faith use of the Domain Name; Respondent has registered one other domain name which is similar to the corporate name of a well known investment company; Respondent further admitted in an e-mail of May 20, 1999, to Complainant's representative that he would never use the Domain Name for goods and services; in the same e-mail, Respondent stated that he had "[...] not made up [his] mind 100% yet [...]" whether to transfer the Domain Name to Complainant or not.
Taking into account all of the above, the Panelist concludes that Respondent's passive holding of the Domain Name constitutes bad faith use under par. 4(a)(iii) of the Policy.
For all of the foregoing reasons, the Panelist decides that the Domain Name registered by Respondent is identical to the trademark in which the Complainant has rights, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent's Domain Name has been registered and is being used in bad faith.
Accordingly, and pursuant to Paragraph 4(i) of the Policy, the Panelist requires that the registration of the Domain Name werthersoriginal.com be transferred to Complainant.
Bernhard F. Meyer-Hauser
Date: May 3, 2000