WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
August Storck KG v. Origan Firmware
Case No. D2000-0576
1. The Parties
Complainant is August Storck KG, Waldstrasse 27, 13403 Berlin, Germany.
Respondent is Origan Firmware, M414 Puteri Court, Taman Putra, Ampang-Malaysia, MY 68000, Malaysia.
2. The Domain Name and Registrar
The Domain Name at issue is:
« nimm2.com ».
The Registrar of the Domain Name is Network Solutions, Inc. (the « Registrar »), 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the « Center ») received the Complaint of Complainant on June 9, 2000 in hard copy and on June 15, 2000 by e-mail.
On June 13, 2000, Complainant informed the Center that it had been unable to communicate the Complaint to Respondent by fax.
On June 15, 2000, the Center sent to the Registrar a request for verification of registration data. On June 20, 2000, the Registrar confirmed, inter alia, that it is indeed the Registrar of the Domain Name in dispute and that the Domain Name is registered in the name of Respondent.
On June 22, 2000, the Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the «Policy»), the Rules for Uniform Domain Name Dispute Resolution Policy (the «Rules»), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the « Supplemental Rules »). The Panelist agrees with the Center’s assessment that the Complaint complies with the formal requirements.
According to the information provided by the Registrar in reply to the Center’s request for verification, Respondent’s administrative, technical, zone and billing contacts for the Domain Name are all the same : Mr. or Ms. Heegan NG, whose contact details are the same as Respondent’s. On June 22, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent, attention to Heegan NG, by courier, fax and e-mail. The Notification stated that the formal date of the commencement of the Administrative Proceeding was June 22, 2000, and that the last day to submit a Response to the Complaint was July 11, 2000. Moreover, the Center sent the Notification on the same day by courier, fax and e-mail to Respondent’s former billing and technical contacts, who appeared on a print out of May 25, 2000 from the Registrar’s Whois database submitted by Complainant with the Complaint. According to this print out, Respondent’s billing contact was at that time Mr. Andreas Müller of the company Schlund + Partner AG, Germany. Respondent’s technical and zone contact was Ms. Doris Mader, of JRPAMC, Germany. The Panelist considers that by taking the above-mentioned measures, the Center properly notified the Complaint in accordance with paragraph 2(a) of the Rules.
The courier sent to Respondent in Malaysia could not be delivered. The transmission of the Notification by fax was not successful either. The e-mail sent to the address « email@example.com » could not be delivered, but the e-mail sent to the address mentioned in the Registrar’s Whois database as Respondent’s e-mail address, « firstname.lastname@example.org », was transmitted. The couriers sent to Mr. Müller and Ms. Mader were delivered, as well as the e-mail messages. Ms. Mader informed the Center by an e-mail of June 22, 2000 that her company was not involved in the Administrative Proceeding and asked the Center to contact either the Internet provider Schlund + Partner or Origan Firmware in Malaysia.
Respondent did not submit a Response within the deadline of July 11, 2000. On July 12, 2000, the Center issued a Notification of Respondent’s Default, which was communicated to Respondent by courier, fax and e-mail. The Center also sent this Notification to Respondent’s former billing contact, Mr. Müller, by the same means. The Notification of Respondent’s default was moreover sent to Ms. Mader by e-mail. By an e-mail of July 12, 2000 to the Center, Ms. Mader stated again that JRPAMC had nothing to do with the Domain Name any more.
On July 19, 2000, having received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Anne-Virginie Gaide (the « Panelist »), the Center notified the parties of the appointment of a single-member panel consisting of the Panelist. The Panelist is satisfied that the Administrative Panel was properly constituted. The date scheduled for the issuance of the Panelist’s decision was August 1, 2000. The language of the proceeding is English.
4. Factual Background
Complainant represents that it has been engaged in the manufacture, distribution and sale of candy goods for over 80 years. Complainant’s products are sold in all kinds of food retail stores throughout the world. The trademark « nimm 2 » has been used in Germany for decades. It has first been registered in the early sixties. Particularly in Germany and in other German speaking countries, the trademark « nimm 2 » has become well known. According to a market survey carried out by the INRA Institute in 1999, an excerpt of which was submitted with the Complaint, 86% of the German consumers know the trademark « nimm 2 ». Another survey carried out by the Austrian company Spectra, an excerpt of which was also submitted by Complainant, reaches the same result.
Complainant demonstrated that it is the owner of the German trademark registration for the mark « nimm2 (special font) » (reg. no. 396 45 049 of December 19, 1996) and of the international trademark registration for the word mark « nimm 2 » (reg. no. R 291 537 of December 2, 1984). The goods covered by both registrations are candies (class 30).
Complainant has also submitted the copy of a certificate of registration for the German trademark « nimm 2 » (no. 791 071 of July 16, 1964). However, the Panelist is unable to see, from the documents provided, whether this registration was renewed or not. Complainant also invokes an Austrian registration for the trademark « nimm2 (special font) » (no. 68.837 of April 1, 1971). It is not clear for the Panelist whether the submitted document is an official one, or whether it comes from the own portfolio of Complainant, insofar as it does not bear the seal or even the name of a Trademark Office or other authority. The Panelist considers however unnecessary to request complements of information from Complainant regarding these two trademarks. Indeed, their verbal elements are identical to those of the trademarks whose existence and ownership are satisfactorily demonstrated. As a consequence, they could not justify a different outcome for the Panelist’s decision. The Panelist will therefore base its decision only on the German registration for « nimm2 (special font) » (no. 396 45 049) and the International registration for « nimm 2 » (no. R 291 537).
According to the information supplied by the Registrar, the Domain Name was registered on April 13, 1999.
On February 25, 2000, Complainant visited Respondent’s homepage at the address « nimm2.com ». It appears from the print out of the same date submitted with the Complaint that the homepage displayed in a prominent way the notice in German « Zur Zeit keine Angebote », which means « Currently no offers ». Beside this notice, the homepage contained links to three German websites (« Netzmark », « Schnaeppchenjagd » and « Spartips »), as well as a link to « jrpamc.com ». The homepage further displayed a disclaimer, stating that the web site « nimm2.com » had no relation to possibly similar sounding products, businesses or trademarks, and that all resemblance with such products, businesses or trademarks was fortuitous.
Complainant contends that no products or services were ever offered on Respondent’s homepage, and that the notice was posted only to create the impression that use was about to start.
At some point, a conversation took place between a Mr. Jörg Rathmann and Ms. Kalitta-Kremer, PR manager of Complainant. Mr. Rathmann confirmed this conversation in an e-mail (the date of which Panelist could not ascertain) to Ms. Kalitta-Kremer. The text of this message is the following (free translation from German) :
« Dear Ms. Kalitta,
As discussed, I would like to submit the following offer on behalf and in the name of our client Origan Firmware.
Our client expects your firm to pay DM 15'000.- (plus VAT) as consideration for the transfer of the domain « nimm2.com » in order to cover his expenses. This amount includes the expenses of JRPAMC.COM which will be settled with our client internally.
If you accept the above-mentioned conditions, we will take the measures necessary to effect the change of ownership.
JRPAMC GERMANY mail to : email@example.com
JRPAMC MALAYSIA mail to : firstname.lastname@example.org
Complainant refused this offer.
Complainant initiated legal proceedings against the Internet provider Schlund + Partner AG, which provided a server for the site « nimm2.com », with a view to obtain an interim injunction against this company on the ground of trademark infringement. On April 26, 2000, the District Court of Hamburg issued an interim order prohibiting Schlund + Partner AG from providing a server to Origan Firmware for the use of the Domain Name on the Internet. Schlund + Partner AG had already disconnected the Domain Name as of April 4, 2000.
Complainant also filed a claim for an interim order against Ms. Doris Mader, the technical and zone support of the Domain Name. On May 25, 2000, the District Court of Hamburg issued an interim order prohibiting Ms. Mader from assisting Origan Firmware in the use of the Domain Name by acting as technical support for such Domain Name.
5. Parties’ Contentions
Complainant contends that the Domain Name is identical or confusingly similar to trademarks in which it has rights, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that Respondent registered and used the Domain Name in bad faith.
Consequently, Complainant requires the transfer of the Domain Name to Complainant.
Respondent has not submitted a Response to the Complaint.
6. Discussion and Findings
a) Effect of prior legal proceedings
According to paragraph 18(a) of the Rules, in the event of any legal proceedings initiated prior or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding or to proceed to a decision.
In the present case, legal proceedings were initiated in Germany prior to this administrative proceeding against the Internet provider for the Domain Name, Schlund + Partner AG, and against Respondent’s former technical contact for the Domain Name, Ms. Doris Mader. Generally, interim orders must be confirmed in ordinary proceedings, and lapse if such proceedings are not initiated. Complainant does not indicate whether the two interim orders of the Hamburg District Court are still in force, and whether ordinary proceedings have been initiated. In any event, the Panelist does not consider that the existence of the interim orders or of ordinary proceedings initiated to obtain the confirmation of such orders would justify a suspension or termination of the administrative proceeding. Indeed, Respondent was not a party to the provisional proceedings initiated by Complainant, and the object of such proceedings was not the status (cancellation or transfer) of the domain name, but only its support by third parties. Therefore, the Panelist shall proceed to a decision on the administrative proceeding regardless of the outcome of the proceedings against Schlund + Partner AG and Ms. Mader.
b) Consequences of Respondent’s default
Respondent did not submit any response, whether timely or late, to the Complaint, and is consequently in default.
According to paragraph 14 (b) of the Rules, if a party does not comply with any provision or requirement under the Rules, the Panel shall draw such inferences therefrom as it considers appropriate. The Center’s Notification of Commencement of Administrative Proceeding also warn the parties that the Panel may draw from respondent’s default the inferences that it considers appropriate.
It appears from the file communicated by the Center that the courier containing the Notification of Commencement of Administrative Proceeding and the Complaint sent to Respondent in Malaysia could not be delivered and that the fax enclosing such documents was not transmitted. The e-mail enclosing such documents sent to « email@example.com » was not transmitted either. Transmission was successful only for the e-mail sent to « firstname.lastname@example.org », the address mentioned in the Registrar’s contact details for Respondent. Respondent’s former technical and billing contacts (Ms. Mader at JRPAMC and Mr. Müller at Schlund + Partner AG) received the Notification and Complaint at least by courier. However, there is no evidence that they communicated these documents to Respondent.
In view of the fact that « email@example.com » could be a general mailbox, and that Respondent did not acknowledge receipt of the e-mail sent to this address, it may be asked whether Respondent has in fact had actual notice of the Complaint. In the Panelist’s view, it must be assumed that Respondent took adequate measures to ensure that messages sent to this address would be brought to its knowledge. Indeed, the importance of supplying the Registrar with contact details sufficient for communication purposes was brought to Respondent’s attention in the Registrar’s Service Agreement. This Agreement, which binds Respondent and which was submitted as an attachment to the Complaint, states in its article 5, entitled « Accurate information » :
« As further consideration for the Network Solutions service(s), you agree to : 1) provide certain current, complete and accurate information about you as required by the application process ; and 2) maintain and update this information as needed to keep it current, complete and accurate. We rely on this information to send you important information and notices regarding your account and our services [...] ».
In view of this explicit obligation, the Panelist assumes that Respondent took appropriate measures to receive the messages sent to the e-mail address given to the Registrar, and that Respondent has thus actually received the e-mail including the Notification of Commencement of Administrative Proceeding and the Complaint. Consequently, the Panelist considers that Respondent has voluntarily elected not to respond to the Complaint. The Panelist will draw from such omission the inferences which she considers appropriate.
c) Merits of the Complaint
According to paragraph 4(a) of the Policy, the complainant must assert and prove each of the following:
i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
ii) the respondent has no rights or legitimate interests in respect of the domain name; and
iii) the domain name registered by the respondent has been registered and is being used in bad faith.
i) Identity or confusing similarity
Complainant has demonstrated that it is the owner of a German registration for the trademark « nimm2 (special font) » and of an international registration for the trademark « nimm 2 ».
The Domain Name consists in exactly the same verbal elements as Complainant’s trademarks. The Panelist is therefore satisfied that the Domain Name is identical to Complainant’s trademarks. The fact that the German trademark is written in a special font does not lead to another conclusion in respect of this trademark, insofar as such special font cannot be reproduced in a domain name.
ii) Rights or legitimate interests
Respondent, who did not respond to the Complaint, has not explicitly asserted any rights or legitimate interests in the Domain Name.
The only documents originating with Respondent that are available are the copy of the e-mail sent by Respondent to Complainant and the print out of Respondent’s homepage of February 25, 2000.
In this e-mail, the text of which is set out above, Mr. Röthmann does not purport that Origan Firmware would have any rights or interests to the Domain Name. In particular, this mail contains no explanation as to the reasons of the choice of the Domain Name, or the kind of use that Respondent intended to make of it. The Panelist cannot infer from this mail that Respondent had rights or interests in respect of the Domain Name.
It appears from the print out of Respondent’s homepage, and from the notice « currently no offers » posted on it, that at least on the date indicated on such print out Respondent did not offer goods or services. Nothing indicates whether Respondent did or intended to offer goods manufactured by Complainant. The links available on Respondent’s homepage do not offer any information in this respect.
According to Complainant, Respondent never offered goods or services on its homepage. The notice would have been displayed in order to misleadingly give the impression that such offer was about to start, when actually Respondent never planned to commercially use the Domain Name. Complainant did not submit evidence regarding this last affirmation, but as Respondent did not contest it, the Panelist considers it as true.
In view of the fact that the file contains no elements that would command to admit the existence of rights or legitimate interests of Respondent, and that Respondent did not assert such rights or interests, the Panelist infers from Respondent’s default that such rights or legitimate interests in fact do not exist.
iii) Registration and use in bad faith
It is relevant, when examining the bad faith of Respondent, to note that the trademark « nimm 2 » is well known in Germany and in other German speaking countries. Although Respondent is based in Malaysia, it seems to have very strong links with Germany. Indeed, its e-mail address corresponds to a German website («kundenserver.de »). Its homepage was entirely in German language and the links in this homepage led to web sites in German language. Moreover, the company JRPAMC, with which Respondent seems to have a close relation since the offer to sell the Domain Name was made by a person of this company, is active in Germany and Malaysia according to the indications at the bottom of the e-mail sent to Complainant. Finally, the Internet service provider Schlund + Partner AG, which provided a server for the Domain Name, is a German company. In such circumstances, the Panelist can assume that Respondent knew, at the time of registration of the domain name, that « nimm 2 » was a well known trademark in Germany for candy goods. Therefore, the choice of those terms could not have been fortuitous, regardless of what Respondent stated in the disclaimer posted on its homepage.
According to paragraph 4(b)(i) of the Policy, circumstances indicating that a respondent registered a domain name primarily for the purpose of selling it to the complainant or to a competitor of the complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name shall be evidence of registration and use of a domain name in bad faith.
In the present case, the offer set forth in Mr. Jörg Rathmann’s e-mail to Complainant is a circumstance indicating that Respondent registered the Domain Name primarily for the purpose of selling it to Complainant for a consideration in excess of its out-of-pocket expenses. In this e-mail, Mr. Rathmann wrote that Respondent would be willing to transfer the Domain Name to Complainant for the price of DM 15'000.-, an amount supposed to cover Respondent’s expenses. Mr. Rathmann stated that this amount would « include the expenses of JRPAMC.COM » but did not give any other precision.
It is common knowledge that the cost of registering a Domain Name with Network Solutions is very modest. Obviously, the costs of designing the homepage cannot be included in Respondent’s out-of-pocket expenses directly related to the domain name, because such costs would have been incurred regardless of the domain name chosen by Respondent, and because the transfer of the domain name to Complainant would not prevent Respondent from using the web site under another address after suppression of the terms « nimm2 ». The only out-of-pocket expenses caused by the transfer would concern the modification of Respondent’s homepage (the terms « nimm2 » were displayed at the top of the page). Such a modification could not conceivably cost DM 15'000.-. Therefore, the consideration asked for by Respondent exceeded its out-of-pocket expenses directly related to the Domain Name.
That Respondent registered the Domain Name primarily to sell it to Respondent is corroborated by the fact that Respondent did not use the Domain Name in connection with a bona fide offering of goods or services nor did it make of it a non commercial fair use, and by the fact that Respondent most certainly knew that « nimm2 » was a registered trademark.
Arguably, since the e-mail confirms a telephone conversation, it is possible that Complainant initiated negotiations over the sale of the Domain Name, and that Respondent only counter-offered an offer made by Complainant, even though it did not originally intend to sell the Domain Name. However, it was Respondent’s responsibility to dispute Complainant’s contention in this respect or to present any fact commanding another interpretation of the e-mail at issue.
Since Respondent elected not to respond to the Complaint, the Panelist infers that it indeed registered the Domain Name for the purpose of eventually selling it to Respondent, and that consequently the Domain Name was registered and used in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Name registered by Respondent is identical to the trademarks of Complainant, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that Respondent’s Domain Name has been registered and used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Administrative Panel requires that the registration of the Domain Name at issue be transferred to Complainant. The Domain Name is : « nimm2.com »
Dated: August 1, 2000