WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Effems AG v. Weitner AG
Case No. D2000-1433
1. The Parties
Complainant is Effems A.G., Baarermattstrasse 6, 6302 Zug, Switzerland.
Respondent is Weitner A.G., Missionsstrasse 68, 4055 Basel, Switzerland.
2. The Domain Name and Registrar
The Domain Name at issue is <balisto.com>.
The Registrar of the Domain Name is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the «Center») received the Complaint by e-mail on October 20, 2000, and in hard copy on October 23, 2000.
On October 25, 2000, the Center acknowledged receipt of the Complaint.
On October 26, 2000, the Center sent to the Registrar a request for verification of registration data. On October 29, 2000, the Registrar confirmed, inter alia, that it is indeed the Registrar of the Domain Name, that the Domain Name is registered in the name of Respondent, and that the Uniform Domain Name Dispute Resolution Policy applies to the Domain Name.
On November 2, 2000, the Center verified that the Complaint satisfies 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.
Also on November 2, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent by e-mail, fax and post. The Notification indicated that the Response was due on November 21, 2000.
The Respondent did not submit a Response within this deadline. On November 23, 2000, the Center issued a Notification of Respondent’s Default, which was communicated to the parties by e-mail.
On December 1, 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 initial issuance date for the decision was December 14, 2000.
In the course of preparing the decision, the Panelist noticed that a previous case involving a respondent named Weitner A.G. had been decided under the Uniform Domain Name Dispute Resolution Policy on October 30, 2000 (WIPO D2000-1116). The Complainant in this case was Eckes-Granini GmbH & Co KG. The domain name in dispute was <granini.com>. The Administrative Panel ruled that the domain name should be transferred to the complainant. In view of the fact that the address of Weitner A. G. in the <granini> case corresponds exactly to the address of Respondent in the present case, the respondent in the <granini> case appeared, prima facie, to be the same company as Respondent in the present case.
On December 13, 2000, the Panelist issued an Interim Order drawing the parties’ attention to the existence of the above-mentioned <granini> case, and invited them to communicate their position to the Center on the relevance of this case in the present proceeding on or before December 19, 2000.
In the same Interim Order, the Panelist requested Complainant to submit within the same deadline a document evidencing that Respondent registered the domain name <yeniraki.com>, as alleged in the Complaint.
On December 18, 2000, Complainant submitted its observations on the <granini> case to the Center. Complainant also provided the Center with a printout of Network Solutions’ Whois database indicating that Respondent is the registrant of the domain name <yeniraki.com>.
To this day, Respondent has not submitted a Response to the Complaint or to the Panelist’s Interim Order and is therefore in default.
The language of the proceedings is English.
4. Factual Background
Complainant is the owner of the following trademarks:
- Swiss trademark no. 450’428 «BALISTO & Design» of September 11, 1997 (classes 29 and 30);
- Swiss trademark no. 413’113 «BALISTO & Design» of July 7, 1993 (classes 29 and 30);
- Swiss trademark no. 332’816 «BALISTO» of May 15, 1984 (classes 5 and 30);
- Austrian trademark no. 83598 «BALISTO» of September 17, 1976 (class 30).
Complainant is part of the Mars Group. It is the owner of the Domain Name <balisto.ch> and <balisto.de>. It distributes cereal and chocolate bars under the trademark «BALISTO».
The company data submitted by Complainant regarding Waitner A.G. indicates that this company has for activity the operation of restaurants, and in particular of the restaurant <Best-Pizza>. It is assumed that Waitner A. G. is the correct spell of Respondent’s name (their address being identical).
Respondent registered the Domain Name on February 15, 1999.
On April 11, 2000, Complainant sent a letter to Respondent requesting the transfer of the Domain Name to Complainant. A reminder was sent to Respondent on June 14, 2000. Respondent did not react to any of those letters.
The Domain Name does not resolve to a web site or web page and is currently inactive.
5. Parties’ Contentions
Complainant contends that the Domain Name is identical to the word element of Complainant’s trademark «BALISTO».
Complainant further contends that it has not licensed or otherwise permitted Respondent to use the word «BALISTO» and that Respondent has consequently no right or legitimate interest to the use of the Domain Name.
Complainant finally contends that the Domain Name was registered and is used in bad faith, as evidenced by the following circumstances:
- Respondent registered a large number of domain names, including protected trademarks, as evidenced by a list, attached to the Complaint, of 50 domain names registered in the name of Respondent.
- Respondent provided false contact details to the Registrar. Complainant points out that there is no company named Weitner AG in Switzerland. According to a search in the database if the Swiss Registry of Commerce, there is a company named Waitner AG at the address indicated on the Registrar’s printout for the Domain Name.
- None of the above mentioned 50 domain names registered by Respondent are active.
- Complainant’s trademark «BALISTO» is a well-known trademark.
- Respondent has not reacted to the letters of Complainant.
- It is not possible to conceive of any plausible actual or contemplated use of the Domain Name by Respondent that would not be illegitimate.
Consequently, Complainant requires the transfer of the Domain Name.
Respondent has not submitted a Response to the Complaint.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a 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.
1. Identity or confusing similarity
Complainant has demonstrated that it is the owner of four trademarks currently in force including the term « BALISTO ». In all four trademarks, « BALISTO » is the only verbal element. Two of the trademarks are word marks.
In view of the fact that the Domain Name consists in a term identical to the sole verbal element of the trademarks of Complainant, the Panelist concludes that the Domain Name is identical to the trademarks in which the Complainant has rights. The first part of the test set forth in paragraph 4(a) of the Policy is thus satisfied.
2. Rights or legitimate interests
According to Complainant, there is no relation between Respondent and Complainant, and Respondent is not a licensee of Complainant, nor has it otherwise obtained an authorization to use Complainant’s mark.
Respondent has not submitted a Response to the Complaint, and has not otherwise alleged any rights or interests in the Domain Name. The Domain Name does not resolve to an active web site or page at the present time, nor is there any indication that it did in the past.
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. Consequently, the second part of the test set forth in paragraph 4(a) is satisfied.
3. Registration and use in bad faith
Paragraph 4(b) of the Policy sets forth four particular circumstances which are evidence of registration and use in bad faith. The list is not exhaustive, and in a given case, other circumstances may be evidence of bad faith.
The circumstances expressly mentioned in paragraph 4(b) of the Policy are the following:
i) Registration for the purpose of selling or otherwise transferring the domain name to the owner of an identical or confusingly similar trademark or to a competitor of such owner for a price in excess of costs directly related to the domain name.
ii) Registration for the purpose of preventing the owner of an identical or confusingly similar trademark from reflecting the mark in a corresponding domain name, provided the respondent has engaged in a pattern of such conduct.
iii) Registration for the purpose of disrupting the business of a competitor.
iv) Use for the purpose of attracting Internet users to the respondent’s web site by creating a likelihood of confusion with the complainant’s mark.
Complainant does not assert any of the above-mentioned grounds. Relying on the non-exhaustive character of this enumeration, and on the argument that passive holding of a domain name can amount to bad faith in particular circumstances (see <telstra> WIPO D2000-0003, followed for example in <fendi> WIPO D2000-1227 and <alitaliacargo> WIPO D2000-1260), Complainant invokes several circumstances which, in its opinion, show that the Domain Name was registered and is being used in bad faith.
In this context, Complainant sees a sign of bad faith in the fact that Respondent registered a large number of domain names consisting of generic expressions, none of which resolves to an active web site or web page. The Panelist wishes to stress here that the registration of domain names consisting in generic terms, be it for the purpose of selling them to third parties, is not prohibited under the Policy. The fact that Respondent registered at least 50 domain names consisting in such generic or descriptive terms (like < biscuitproducts.com>) is therefore irrelevant. In this respect, the Panelist adheres to the opinion of the dissenting Panelist in the <crew> case (WIPO D2000-0054).
Complainant further asserts that Respondent has actively provided the Registrar with false contact details, since the correct name of the company appears to be Waitner A.G. and not Weitner A. G. Complainant cites here the <telstra> case, in which the Administrative Panel held that to take steps to conceal one’s true identity was a circumstance of bad faith. The Panelist is however not convinced that Respondent intentionally provided the Registrar with false contact information. Indeed, the wrong spelling of Respondent’s name in the Registrar’s database could be the result of an inadvertent mistake, especially if a third party took care of the registration on behalf of Respondent. The error, once entered into a computer database, could have been repeated automatically at each registration. It must be noted here that in German, the pronunciation of <Weitner> and <Waitner> is identical. Finally, the other contact details of Respondent (address, fax and e-mail) appear to be correct as the communications made by the Center were not returned. Therefore, the Panelist does not infer from the misspelling of Respondent’s name a circumstance of bad faith.
Complainant also sees a circumstance of bad faith in the fact that the Domain Name has not been put to an active use for more than 18 months. The Panelist considers in this respect that the absence of use of a domain name does not automatically amount to passive holding in bad faith. Although such non use could indicate a lack of interests in the domain name on the part of a respondent, special circumstances should exist for bad faith to be found. Thus, the sole fact that the domain name is inactive and that the respondent elects not to respond to the complaint are not sufficient. To hold otherwise would simply mean to suppress the use requirement expressly set forth in the Policy, a liberty that Administrative Panels are not competent to take (see in this respect <buyvuarnetsunglasses> WIPO D2000-265). Moreover, it should be kept in mind that the silence of a respondent might be caused by a lack of understanding of the proceeding against him, which in turn may be due to a lack of knowledge of the language of the proceeding or of a lack of familiarity with legal issues.
It is not necessary to decide whether, in the present case, other circumstances (such as the fact that the trademark « BALISTO » is well-known in Switzerland and that it is difficult to conceive of a legitimate use of the Domain Name) command to find that the passive holding of the Domain Name by Respondent amounts to use in bad faith. Indeed, the Panelist considers that the conditions of paragraph 4(b)ii of the Policy are met here. According to this provision, registration for the purpose of preventing the owner of an identical or confusingly similar trademark from reflecting the mark in a corresponding domain name, provided the respondent has engaged in a pattern of such conduct shall be evidence of the registration and use of a domain name in bad faith.
The Panelist agrees, based on her general experience, that the trademark « BALISTO » is well-known in Switzerland for cereal and chocolate bars. This trademark is an invented word and has no special meaning. It is thus likely that Respondent did not choose this word by coincidence, but rather intentionally registered a domain name identical to Complainant’s trademark.
Moreover, it results from a previous decision that Weitner A. G. also registered in the past the domain name <granini.com>. In view of the fact that the name and address (postal and e-mail) of the respondent in this case are identical to those of Respondent, and that Respondent, when asked to comment on this previous case, did not submit any arguments against its relevance, the Panelist considers that Respondent in the present case and respondent in the <granini> case are the same company, and that Respondent therefore registered <granini.com> in the past. The fact that «GRANINI » is a trademark for fruit juice is notorious in Switzerland and at least in some European countries.
Finally, Complainant demonstrated that Respondent registered the domain name <yeniraki.com>, and submitted evidence that « YENI RAKI » is a protected trademark of a third party registered in relation to alcoholic beverages.
In view of the above, the Panelist finds that Respondent registered at least three domain names identical to protected trademarks of third parties. The Panelist considers that this number is sufficient to find that Respondent engaged into a pattern of preventing trademark owners from reflecting their mark into a corresponding domain name. Therefore, since such conduct is in itself evidence of registration and use in bad faith, the Panelist considers that the third part of the test set forth in paragraph 4(a) of the Policy is satisfied.
Consequently, the domain name must be transferred.
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.
Dated: December 22, 2000