WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Axel Springer Verlag AG v. Andy Fritsche
Case No. D2000-1335
1. The Parties
Complainant in this administrative proceeding is Axel Springer Verlag AG, a corporation under the laws of Germany with its principal place of business in Berlin, Germany ("Complainant"), represented by Dr. Andreas Renck, Lovells Boesebeck Droste, Explanada 2, 3° Dcha., 03002 Alicante, Spain.
Respondent is Andy Fritsche, Reforma Agraria #5, Santo Domingo, D.N. 00000 DO, Dominican Republic ("Respondent").
2. The Domain Name and Registrar
This dispute concerns the domain names "bild-dominicana.com" and "bilddominicana.com" ("Domain Names") registered with CORE - Internet Council of Registrars, World Trade Center II, 29 route de Pre-Bois, CH-1215 Geneva, Switzerland ("Registrar").
3. Procedural History
A complaint ("Complaint") pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on October 4, 2000, by e-mail. The hardcopy was received by the WIPO Center on October 6, 2000.
On October 17, 2000, the Registrar sent a Response to the WIPO Center, confirming that it had received the Complaint, that the disputed Domain Names were registered with CORE, and that Respondent was the current registrant.
The Panel independently determines that the Complaint is in formal compliance with the applicable requirements.
No formal deficiencies having been recorded, a Notification of Complaint and Commencement of Administrative Proceeding was successfully transmitted and delivered to Respondent and to his Technical Contact / Zone Contact on October 23, 2000, by e-mail and courier service. In the Commencement Notification, a deadline until November 11, 2000, was set by which Respondent could file a Response to the Complaint. Respondent failed to comply with such deadline.
On November 20, 2000, a Notification of Respondent Default was sent to Complainant and Respondent by e-mail.
Complainant had requested a single-member panel to be appointed. Since no divergent request was filed by Respondent, the WIPO Center invited Dr. Bernhard F. Meyer-Hauser to serve as panelist in this case and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received Dr. Meyer-Hauser’s Statement of Acceptance and Request for Declaration of Impartiality and Independence on December 5, 2000, the WIPO Center transmitted a Notification of Appointment of Administrative Panel and Projected Decision Date to the parties on December 8, 2000. The decision date was December 22, 2000. The Panel finds that the Administrative Panel has been properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.
4. Factual Background
Complainant is a German publisher. It is inter alia proprietor of the German Trademark Registration 899 441 "BILD" (word/device), the International Registration R 409 774 "BILD" (word/device), the Community Trademark (CTM) Registration 92 072 "BILD" (word/device) and various registrations of "BILD" in 28 countries around the world. Complainant has been using the trademark "BILD" for over 50 years.
The daily newspaper BILD is the most read newspaper in Germany. According to opinion polls conducted in 1998, the brand awareness of BILD in Germany amounts to 95.5 % of the general public. BILD is distributed and sold around the world and has been sold in the Dominican Republic to German tourists for years.
Complainant is also the holder of various domain names in Germany and in other countries, inter alia of "bild.de" and "bild-online.de" and offers an electronic magazine on its web sites. The web site of BILD Online at bild.de or bild-online.de respectively has more than 6'000'000 visits per day and is one of the most visited web sites in Germany.
Respondent registered the Domain Names on April 23, 2000. At the beginning of July 2000, Complainant became aware of the registrations and the use of the Domain Names. Respondent uses the domain names for offering an online newspaper in German to German speaking tourists who visit the Dominican Republic or seek news and information about the Dominican Republic.
5. Parties’ Contentions
Respondent clearly infringes the trademark rights of Complainant. The famous trademark "BILD" is confusingly similar to the Domain Names:
The Community trademark 92 072 "BILD" (word/device) is registered for printed matters and providing information and news online. Complainant is intensively using the trademark for these goods and services. Respondent is using the Domain Names for the same purposes.
The signs to be compared are:
The ending of the domains is only the geographic indication of "La Republica Dominicana". The average consumer seeing the Domain Names in Germany will believe that he/she will find information about the Dominican Republic offered by the well-known Complainant when he/she is not. After entering the web page of Respondent, the consumer will believe it even more when confronted with the "BILD" logo, which is identical to the registered and famous trademark of Complainant.
Apart from the jurisprudence of national courts in trademark cases, the UDRP Panels have repeatedly concluded that a similarity between an elder trademark, especially a famous trademark, and a domain name with an additional descriptive element exists (see WIPO Case No. D2000-0050 – "bbcdelondres.com"; Case No. D2000-0102 – "nokiagirls.com"; Case No. D2000-0047 – "eautolamps.com"). In the case of a geographic indication, the Panel in "attmexico.com and att-latinamerica" (WIPO Case No. D2000-0553) held that when a domain name in dispute comprises a portion identical to a mark in which Complainant has rights, together with a portion comprising a geographic qualifier, such geographic qualifier is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s mark.
Respondent does not have any legitimate interests in the Domain Names:
Respondent has never used the Domain Names for a bona fide offering of services in the sense of Article 4(c)(i) of the Policy. He just added to the well-known trademark "BILD" of Complainant the geographic indication "dominicana" in order to indicate that he offers news and information about the Dominican Republic and at the same time copied the registered logo of Complainant in order to use it on his web page. Such use is not a bona fide use of a domain name. The Panels have held in cases "bbcdelondres.com" (cited above) and "worldcup2002.com" (WIPO Case No. D2000-0034) that the use of the registered trademark of a complainant on the web page for offering online information services does not constitute a bona fide use of the domain names according to Article 4(c)(i) of the Policy. The same preposition must apply in the case at hand.
Neither is the use of the Domain Names "bild-dominicana.com" and "bilddominicana.com" by Respondent a legitimate non-commercial use according to Article 4(c)(iii) of the Policy, as the domain names are used with an intent for commercial gain to misleadingly divert consumers. The web page contains numerous commercial advertisements and links. Such kind of use is by no means a non-commercial use, as it is well known that undertakings pay considerable amounts of money to make advertisements on web pages.
Both Domain Names were registered and are currently used in bad faith:
By using the Domain Names to provide news and information to German tourists relating to the Dominican Republic using the logo of Complainant on its web page, Respondent clearly has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with Complainant’s mark as to the source of the services rendered. As such the behavior falls under Article 4(b)(iv) of the Policy. In a very similar case to the case at hand a Panel has once deemed the requirements of Article 4(b)(iv) of the Policy to be fulfilled (see WIPO Case No. D2000-0015 – "thetimesofindia.com"). Moreover, the use of a mark on the web page which is identical to a registered trade mark of Complainant has repeatedly been held a clear indication of a bad faith use of the domain names under attack (see WIPO Case No. D2000-0034 – "worldcup2002.com"; WIPO Case No. D2000-0050 – "bbcdelondres.com").
Summarizing the aforesaid, Complainant has shown in the case at hand that the requirements set out in Article 4(a) of the Policy are fulfilled.
Respondent has not reacted to Complaint within the time period set by the WIPO Center and consequently is in default. Under these circumstances, all allegations contained in the Complaint are deemed to be correct to the extent not contradicted by any evidence or documents on file.
6. Discussion and Findings
According to Article 4(a) of the Policy, Complainant must prove the following:
(i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
(ii) that Respondent has no legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and used in bad faith.
Identical or Confusingly Similar Domain Name
The Domain Names are composed of Complainant's trademark "BILD" and the ending "dominicana" which is a geographic indication referring to the Dominican Republic. The fact that one Domain Name - contrary to the other - includes a hyphen between "bild" and "dominicana" does not have any significance, so that the findings below will refer to both Domain Names at issue. This Panel adopts the view in similar cases (WIPO Case No. D2000-0050 - "bbcdelondres.com"; WIPO Case No. D2000-0477 - "walmartpuertorico.com"; WIPO Case No. D2000-0553 - "attmexico.com" and "att-latinamerica.com"; WIPO Case No. D2000-1114 - "mtvkorea.com") that the addition of a geographical indication ("dominicana") does not sufficiently distinguish the Domain Names from the product of Complainant (BILD newspaper) in the mind of consumers. Considering the brand awareness of the BILD newspaper and the fact that BILD is sold to German tourists in the Dominican Republic, a German tourist would most probably assume a connection with Complainant when seeking information on a web site with the domain name "bilddominicana.com" or "bild-dominicana.com". Accordingly, this Panel finds that the Domain Names are - within the meaning of Article 4(a)(i) of the Policy- confusingly similar with the numerous trade- and service mark registrations of the word "BILD" held by Complainant.
Respondent’s Rights or Legitimate Interests in the Domain Name
Respondent has not provided evidence of circumstances of the type specified in Article 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks and has not permitted to apply for or use any domain name incorporating those marks.
Further, there is no evidence on file proving that Respondent uses the Domain Names in connection with a bone fide offering of goods or services within the meaning of Art. 4(c)(i) of the Policy. The mark "BILD" is not one that a web site operator would legitimately choose in the context of provision of news, information and entertainment services unless seeking to create an impression of an association with Complainant (cf. WIPO Case No. 0050 - "bbcdelondres.com"). Respondent's bad faith offering of services is additionally demonstrated by his copying of Complainant's logo for use on his web site (see below).
Complainant's logo used by Respondent
CTM registration 92 072
Consequently, this Administrative Panel finds that Respondent is not using the Domain Names in connection with a bone fide offering of services.
Neither does the use of the Domain Names constitute a legitimate non-commercial use in the sense of Article 4(c)(iii) of the Policy. Respondent's web site contains numerous commercial advertisements and links. It is well known that companies pay considerable amounts of money to advertise on web pages. Accordingly, Respondent's use of the Domain Names cannot be regarded as non-commercial.
Considering the above, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain names within the meaning of Article 4(a)(ii) of the Policy.
Domain Name Registered and Used in Bad Faith
Respondent's use of Complainant's trademark and a similar logo to attract German tourists seeking information on Santo Domingo to his web site is clear evidence of bad faith registration and use under Article 4(b)(iv) of the Policy. By such behavior, Respondent has "intentionally attempted to attract, for commercial gain, Internet users to [his] web site, by creating a likelihood of confusion with Complainant’s mark as to the source [...] of a product or service on [his] web site or location."
In the light of the above, the Panel finds that bad faith by Respondent within the meaning of paragraph 4(a)(iii) of the Policy is also established.
For these reasons, the Panel decides that the Domain Name registered by Respondent is identical or confusingly similar to the mark in which Complainant has rights, that Respondent has no right or legitimate interests in respect of the Domain Name, and that the Domain Name was registered and used in bad faith by Respondent. Accordingly, pursuant to Article 4(i) of the Policy, the Panel orders that the registration of the domain names "bilddominicana.com" and "bild-dominicana.com" shall be transferred to Complainant.
Bernhard F. Meyer-Hauser
Dated: January 8, 2001