WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Deutsche Welle v. DiamondWare Limited

Case No. D 2000-1202

 

1. The Parties

Complainant: Deutsche Welle
Anstalt des offentlichen Rechts
Raderberggürtel 50
50968 KÖLN
Germany

Respondent: DiamondWare Limited
10516 E. Flower Avenue
Mesa
Arizona, 85208
USA

 

2. The Domain Name and Registrar

Domain Name: dw.com

Registrar: Network Solutions Inc.

 

3. Procedural History

The original Complaint was received by WIPO by email on September 12, 2000 and in hardcopy form on September 15, 2000. On October 4, 2000 the Complainant submitted an Amended Complaint ("the Complaint") correcting formal defects in the original Complaint. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that dw.com ("the Domain Name") was registered through Network Solutions Inc. and that DiamondWare Limited ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.

On October 11, 2000, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent, inter alia, that the last day for sending its Response to the Complainant and to WIPO was October 30, 2000. On October 27, 2000, the Response was received by WIPO in email form (October 31, 2000 in hardcopy form). The Response included an allegation against the Complainant of Reverse Domain Name Hijacking. The Respondent elected for a three-member panel.

The Panel was properly constituted. The undersigned Panelists submitted Statements of Acceptance and Declarations of Impartiality and Independence.

No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panelís Decision was January 1, 2001.

On December 18, 2000, the Panel notified WIPO that the Complainant should have an opportunity of responding to the allegation of Reverse Domain Name Hijacking. On December 19, 2000, the Panel issued a direction to that effect giving the Complainant until December 22, 2000 to respond.

On December 22, 2000, the Complainant sent to WIPO its response to the allegation of Reverse Domain Name Hijacking. At the presiding panelistís request, WIPO extended the time for issuance of the Panelís Decision until January 4, 2001.

 

4. Factual Background

The Complainant is a German-based television and radio broadcasting company operating under the acronym "DW". The Complainant is the proprietor of various trade mark registrations for marks comprising or including, as part of a device, the letters "DW". The Complainant has produced trade mark registration certificates evidencing several such registrations in Germany, other European countries and the United States and Canada. The German registrations date back to the early 1980s. None of the others have priority dates earlier than March 21, 1995.

The Respondent is a software development company based in the United States, which has traded under the acronym "DW" since at least as early as 1994. The Respondent registered the Domain Name with the Registrar on December 7, 1994. The Respondent operates an active business website connected to the Domain Name.

On July 13, 2000, the Complainant (in the person of its legal adviser, Thomas Gardemann), wrote to the Respondent in the following terms:-

"It has come to our attention that you are in possession of the domain www.dw.com. As shown in the enclosed certification Deutsche Welle has a registered trade mark concerning "dw".

Therefore you shall transfer this domain name over to us. Nevertheless we would be very grateful for your co-operation in resolving this matter and find an amicable solution.

I look forward to hearing from you soon."

On August 10, 2000, the Respondent (in the person of its president, Keith Weiner) replied as follows:-

"Thank you for your interest in our domain name, dw.com. We are not currently offering this property for sale on the open market, however it has recently been attracting enquiries. Therefore, we would consider an offer above $3,750,000 (three million, seven hundred fifty thousand US Dollars) from an accredited buyer.

I look forward to your reply."

It is convenient to note here that the Respondentís headed notepaper featured the Respondentís website address, www.dw.com.

The Complainant responded by initiating this administrative procedure.

 

5. Partiesí Contentions

A. Complainant

The Complainantís contentions are so short that they can conveniently be reproduced verbatim. Following a recital of the Complainantís trade mark registrations, the Complaint proceeds as follows: -

"The complainant is operating a public television and radio program worldwide under the denomination "DW". The trade marks of the complainant cover goods and services directly related to media, data transfer, and internet services. Furthermore, it has become very common that broadcasting channels offer internet services under their program (which is "DW" in this case).

The respondent has been approached by fax of July 13, 2000 by the complainant. The respondent has answered by fax of August 10, 2000 and was offering the domain "DW" for the offer of US$ 3.750.000. The fact that the respondent is offering the domain for sale shows that the respondent has no personal or other legitimate interest in holding the domain, which is obvious taking into consideration the amount of money they are asking. Furthermore, from the letter of the respondent one can see that the respondent acquired the domain and holds the domain primarily for the purpose of selling it."

B. Respondent

The Respondentís main contentions are as follows:-

- The Complaint fails on every ground of the Policy. The circumstances of the Complaint indicate that Complainant was fully aware of the operative facts set forth in this Response prior to filing the Complaint. As such, it is clear that the Complaint was made in bad faith and with no reasonable basis for the allegations therein.

- the Complainant does not claim to have had any rights in the United States when the Domain Name was registered in the United States by a U.S. company in 1994.

- the two conjoined letters "D" and "W" do not by themselves denote a trade or service mark of the Complainant, but are merely an acronym for Complainant's name "Deutsche Welle". The Complainantís registrations are largely for the letters accompanied by graphic design elements.

- numerous companies have registered or applied to register marks incorporating the letters DW with various graphic elements. In the U.S. alone, numerous applications for registration of marks incorporating the initials "DW" have been registered to various different parties.

- for the foregoing reasons, Complainant has failed to establish that the letters "dw", apart from other graphic elements, are distinctive of Complainant, much less that it has exclusive rights in this combination of letters per se.

- the Respondent has legitimate and substantial interests and rights in the Domain Name dw.com, because it has been using the trademarks "DiamondWare" and "DW" to identify the source of its computer software products in international commerce since at least as early as 1994.

- The extent of Respondentís use of the Domain Name in connection with the bona fide commercial offering of its goods and services is obvious on inspection of Respondentís website at www.dw.com. The Respondentís bona fide use of Respondent's "DW" mark, the Domain Name dw.com as a website address, and in connection with email addresses of its principals and employees has been plainly apparent to Complainant before any contact was made with Respondent by the Complainant.

- The Domain Name was registered in 1994 for the purpose of promoting Respondent's business. Since registration of the Domain Name, Respondent has continuously used the dw.com Domain Name as its principal website and email addresses, and has always put "dw.com" references and email addresses on its promotional material, letterhead and business cards.

- Because of the substantial investment and reliance upon the dw.com Domain Name by Respondent, a transfer of the Domain Name would provide Complainant with access to proprietary communications from Respondentís thousands of present customers and potential customers resulting from the promotional materials that Respondent has circulated since 1994. These customers rely on the address dw.com for access to support and sales information for Respondentís products, which have been advertised at dw.com since the earliest years of commerce on the Internet.

- Transfer of the Domain Name to Complainant would effectively provide Complainant with all of Respondentís web traffic, which is due to Respondentís extensive goodwill in the Domain Name dw.com. In July 2000, Respondentís website at www.dw.com generated traffic of approximately 500 unique users per day, and more than 12,000 unique users per month.

- The Respondent, by use of the dw.com Domain Name since 1994, was using the Domain Name in international commerce prior to ANY claimed use of the letters "DW" by Complainant outside of Germany. The earliest priority date cited by Complainant for any of its trademark registrations or applications outside of Germany is March, 1995.

- There is no way to characterize the Complaintís assertion that "Respondent has no personal or other legitimate interest in holding the domain" as anything other than a bold and wilful misrepresentation. The Respondent has been using the Domain Name in connection with Respondentís business for longer than Complainant claims to have used its own name outside of Germany. Loss of the Domain Name would be a serious and substantial injury to Respondent. Respondentís business was valued at $6M (six million US Dollars) on April 19, 2000, based partially on its dw.com Domain Name and may be worth significantly more today. The Complainant is employing this proceeding for no objective other than to harm the Respondentís business and reputation.

- Respondent itself did not even know of the existence of Complainant or Complainantís alleged mark until it received Complainantís letter of July 13, 2000. The Complainant admits that it had not used its stylized trademark outside of Germany before 1995. Hence, it is impossible for the Domain Name to have been registered in bad faith by an American business in 1994.

- The sole fact relied upon by Complainant is Respondentís alleged offer to settle Complainantís claim. Under US law and under German law offers of settlement of a dispute should be excluded from consideration by the tribunal hearing the dispute. Respondentís offer to settle Complainantís claim should be excluded from consideration by the Panel.

- Furthermore, the alleged offer is irrelevant, as the Complainant has not shown that the Domain Name was registered primarily for sale by Respondent to Complainant, as would be required to establish bad faith under Section 4(b)(i) of the Policy. The Complainant has made no effort to show such a thing, because it would be clearly absurd. The Panel is respectfully invited to make even a cursory inspection of the Respondentís web site located at www.dw.com and to consider whether any rational party could possibly conclude that there is no legitimate business being conducted thereunder.

- The Respondent had no intention of selling the Domain Name when it was registered, has no present intention of selling the Domain Name and would have no intention of destroying its own online presence for anything less than what Respondent believes its ongoing and substantial business to be worth.

- The facts recited above in Respondentís favor have been plainly apparent to Complainant prior to the filing of this dispute. The Complainant knows full well that Respondentís registration and use of the Domain Name pre-dates any of Complainantís claimed international priority dates, as this fact is apparent from the Complaint. The Complainant knows full well that Respondent is not based in Germany, which is apparent in the Complaint. The Complainant knows full well that Respondent operates a substantial software business at the address dw.com, as is apparent from the web site at that address. The Complainant knows full well that Respondent was doing business online for several years prior to Complainantís recent desire to develop an online presence, as is also apparent from the web site at www.dw.com.

- Paragraph 12 of the Complaint explains why Complainant covets the dw.com Domain Name. "Furthermore, it has become very common that broadcasting channels offer Internet services under their program (which is "DW" in this case)." This new-found interest of the Complainant does not defeat the Respondent's interest in a business which has operated at dw.com for years.

- Additionally, the Complainant has admitted that it does not have a legitimate basis for bringing this dispute, and has characterized this dispute as nothing more that a game. In an article in a German online magazine (Annex 11: Article in "Telepolis" - accessible on the web at http://www.heise.de/newsticker/data/chr-30.09.00-000/ at the time of this Response), Guido Baumhauser, the head of Internet operations for Complainant, characterizes the present dispute as "sportiv" (literally, "sporting" in English). The Complainant considers using the Policy to threaten the existence of a legitimate multi-million dollar business to be a "sport". The Policy is intended to address the serious issue of cybersquatting. The cynical use of the Policy as a "sport" or game by the Complainant merits the forceful condemnation of this Panel.

- There can be no doubt that the Complaint, in this case, qualifies as a bad faith invocation of the Policy under each of the three principles cited above: Complainant (1) knows that it fails to meet its burden of proof under Section 4(b)(i), or has made insufficient factual inquiry (2) has an interest in acquiring dw.com, yet did not acknowledge Respondentís clearly obvious and senior rights in the name as readily apparent from the date of registration for the Domain Name, and (3) filed without any evidence to show bad faith registration of the name, and recited a single inadmissible and irrelevant allegation to support its facially absurd and willfully false claim of bad faith use.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.

If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely: -

"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."

Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."

It will be noted that the Respondent has objected to the Panel taking into account the price for the Domain Name quoted to the Complainant by the Respondent. The Respondent categorises the quote as an offer to settle the dispute which should be treated as a "without prejudice" communication. The Panel does not see the quote in that light. In any event, Paragraph 4(b)(i) of the Policy expressly contemplates that, in certain circumstances, offers to sell domain names can be evidence of bad faith registration and use and, in this case, the quote forms the core of the Complainantís case. Accordingly, the Panel has considered the Respondentís preparedness to sell the Domain Name and the price quoted.

Identical or confusing similarity

The Complainant is the proprietor of German trade mark registration number 1014042 dated June 4, 1980 for the letters "DW" (simpliciter).

The Domain Name comprises two elements, namely the letter combination "dw", which is an acronym used by the Complainant and which is a registered trade mark of the Complainant, and Ď.comí, which is generic. For the purposes of paragraph 4(a)(i) of the Policy, the ".com" element may be ignored. In the result, the Domain Name is identical to the Complainantís trade mark.

To the extent that the Response asserts that the Complaint should fail because the Complainantís rights are limited geographically and/or are non-exclusive, it is misconceived. Paragraph 4(a)(i) of the Policy simply requires the Complainant to prove trade mark rights and it has done so.

The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.

Rights or legitimate interest of the Respondent

The Policy cites some examples of rights and legitimate interests. Paragraph 4(c)(i) provides a defence to a Respondent who supplies evidence that "before any notice to [him] of the dispute, [he was using or making] demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;"

Respondent has provided evidence of its bona fide offering of goods and services over the past few years and well before the ComplainantĎs first protest. The Domain Name corresponds to the initials of the Respondentís trade name and the Panel finds that this is a reasonable and legitimate interest. Was there notice prior to such use? The Panel finds that there was not. The registration of the Domain Name precedes the date of any relevant trade mark registration of the Complainant outside Germany and the Panel accepts the Respondentís assertion that prior to receipt of the Complainantís letter in July 2000, it was not aware of the existence of the Complainant, let alone the possibility that the Complainant might have the basis for a complaint.

Accordingly, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name.

Bad Faith

The Complainant cites Respondentís offer to sell the domain name as evidence of bad faith use of the domain. The Panel does not interpret the Policy to mean that a mere offer for sale of a domain name for a large sum of money is, of itself, proof of cybersquatting. It may, in certain circumstances, provide some evidence, but it is not conclusive evidence. Indeed, some of the largest sums of money paid for domain names have been for generic names and it is clear to anyone who follows reports of domain name sales that two-letter .com registrations are extremely prized. In any event, in this case the Respondent, with a substantial underlying business interest in the Domain Name, had every reason to demand a substantial sum of money for transfer of the Domain Name.

The Panel finds that the Complainant has not met the burden of proving bad faith.

Reverse Domain Name Hijacking

The allegation of reverse domain name hijacking has been clearly articulated by the Respondent. When the Complainant filed the Complaint in this administrative proceeding it knew that the Respondent was using the Domain Name connected to an active website and in relation to a bona fide offering of goods and services. It also knew that the date of registration of the Domain Name preceded the dates of all its trade mark registrations outside Germany. In the result, the Complainant must have known all along that the Respondent was not a cybersquatter. Nonetheless, the Complainant proceeded with the Complaint and alleged bad faith against the Respondent.

The Complainant was given an opportunity to respond to the allegation and did so by its lawyerís letter of December 21, 2000. The letter, supported by a statement of a director of the Complainant, claims that some of the Complainantís trade mark registrations date back to a date prior to the formation of the Respondentís business; it claims that it has been broadcasting worldwide under the denomination "DW" since 1960; it disputes the Respondentís valuation of the Respondentís business; it claims that the Respondent has not proved that it has used the abbreviation "DW" other than by its use of the Domain Name; it disputes the Respondentís interpretation of the article quoting Mr Baumhauer; finally, it appears to be arguing (the English is not clear) that an offer to sell a domain name can constitute use in bad faith if the price quoted cannot be justified. In short, its response is to the effect that the Complaint was properly made.

The Panel has been unable to agree in relation to this aspect of the case, save that the Panel unanimously takes the view that it should ignore the interview with Mr Baumhauer. The views of the Panelists are as follows:-

Tony Willoughby and Diane Cabell find that this is a clear case of reverse domain name hijacking. The Policy is only designed to deal with a very narrow category of case, namely cybersquatting. It was never intended to be a substitute for trade mark infringement litigation. Manifestly, in their view, this was never a case of cybersquatting. The Policy is clear. To succeed in the Complaint, the Complainant has to prove, at the very least, that the Domain Name was registered in bad faith. When the Complainant conducted its Whois search and found that the Domain Name registration dated back nearly 6 years, it was alerted to the fact that registration of the Domain Name was most unlikely to have been undertaken "primarily" for any bad faith purpose directed at the Complainant. The Complainant has not produced one shred of evidence to suggest why the Respondent, a company in the United States, should have been aware of the existence of the Complainant, a German broadcasting service, back in 1994 when it registered the Domain Name. When the Complainant visited the Respondentís website (its letter of July 13, 2000 makes it clear that it was aware of the website) any doubts it may have had were removed. The Domain Name connects to an active website through which the Respondent conducts a bona fide business and in relation to which the acronym "DW" is apt. In such circumstances, the price the Respondent put on the Domain Name in the year 2000 was completely irrelevant to its motives when registering the Domain Name in 1994. None of this is addressed in the Complainantís response. In the view of Tony Willoughby and Diane Cabell, the Complainantís behaviour, which has wrongfully resulted in the Respondent having to incur what must be substantial legal fees, should be condemned as an abuse of the administrative procedure.

The dissenting member of the Panel on this issue, Torsten Bettinger, agrees that the Complaint was misconceived and should not have been filed. He observes that the Complainant has not even made a minimal effort to establish plausible grounds for bringing the Complaint under the Policy. However, he points out that if, when responding to the Complainantís opening letter, the Respondent had made an effort to explain to the Complainant the bona fide nature of its use of the Domain Name and the basis for the price it was quoting for the Domain Name, the Complaint would probably never have been launched. The dissenting Panelist takes the view that, under these circumstances, it would be unduly harsh to characterize the Complaint as reverse domain name hijacking.

In the result, the majority view is that the allegation of reverse domain name hijacking is made out and that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

7. Decision

In light of the findings set out above, namely that, notwithstanding that the Domain Name is identical to a trade mark in which the Complainant has rights, the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name and has also failed to prove that the Domain Name was registered and is being used in bad faith, the Complaint fails and is dismissed.

Further, the Panel, by a majority, declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 


 

Tony Willoughby
Presiding Panelist

Torsten Bettinger
Panelist

Diane Cabell
Panelist

Dated: January 2, 2001