WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boquoi Handels-GmbH & Co. KG v. José Santos Alvarez
Case No. D2000-1729
1. The Parties
The Complainant is Boquoi Handels-GmbH & Co. KG, a German company, with its principal place of business at Oelmühle 6, D-48638 Straelen, Germany.
The Respondent is José Santos Alvarez, an individual resident at the address of c/o Burosoft, S.A., Ctra. de La Coruna, km 23,200, Edificio ECU II, Las Rozas, E-28290 Parque Rozas, Madrid, Spain.
2. The Domain Name and Registrar
The domain name at issue is <bofrost.com>, which is registered with Network Solutions, Inc. ("the Registrar"), Herndon, Virginia, United States of America.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization, Arbitration and Mediation Center, on December 12, 2000, and in hardcopy on December 14, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated December 14, 2000.
On December 15, 2000, a Request for Registrar Verification was transmitted to the Registrar requesting it to:
(1) confirm that a copy of the Complaint was sent to the Registrar by the Complainant, as required by the WIPO Supplemental Rules for Uniform Dispute Domain Name Resolution Policy, Paragraph 4(b);
(2) confirm that the domain name at issue is registered with the Registrar;
(3) confirm that the Respondent is the current registrant of the domain name(s);
(4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact;
(5) confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name;
(6) indicate the current status of the domain name.
On December 18, 2000, the Registrar confirmed that a copy of the Complaint was sent to the Registrar by the Complainant, the domain name <bofrost.com> was registered with the Registrar and that the Respondent was the current registrant of the name. The Registrar also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was in "Active" status.
Effective January 1, 2000 the Registrar adopted the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"). There is no evidence that the Respondent ever requested that the domain name at issue be deleted from the domain name database. Accordingly, the Respondent is bound by the provisions of the Policy.
The Panel has determined that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999, (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount.
No formal deficiencies having been recorded, on December 27, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of January 15, 2000, by which the Respondent could file a Response to the Complaint The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in the Registrar’s WHOIS confirmation. In addition, the Complaint was sent by express courier.
On January 15, 2001, the Respondent submitted its Response to the WIPO Center.
On January 19, 2000, the Complainant submitted comments to the Respondent’s Response to the WIPO Center.
On January 31, 2001, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of Mr. Jonas Gulliksson.
The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
The Administrative Panel shall issue its decision based on the Complaint, the Response, the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
The Complainant and its Registered Trademarks
The Complainant is the holder of the IR-trademark "bofrost*", registered with the Organisation Mondiale de la Propriétée Intellectuelle (OMPI) under registration no. 624 219 (see Annex 5 to the Complaint).
5. Parties’ Contentions
The Complaint is based on the following grounds:
The disputed domain name "bofrost.com" is nearly – except the "*" - identical, at least confusingly similar to the trademark bofrost*.
The Respondent has no rights or legitimate interest in respect of the domain name bofrost.com. Further the domain name has to be considered to be registered in bad faith and is still being held in bad faith for the following reasons:
The only purpose of registering the domain name bofrost.com by the Respondent was to achieve a cooperation in whatever way with the Complainant or its affiliates or to sell the domain name to the Complainant or one of its affiliates. This aim was confirmed in a telephone conversation on October 24, 2000 between Mrs. Yvonne Rauh, acting on behalf of the Respondent and Mr. Michael Nellessen, employee of one of the Complainant’s affiliates. In the above mentioned telephone conversation Mrs. Rauh offered to transfer the domain name to the bofrost*-group for an amount of 12,000.00 DM, i. e. approximately 5,500.00 USD (see affirmation in lieu of an oath of November 29, 2000, Annex 6, to the Complaint). This amount by far exceeds the Respondent’s out of pocket expenses directly related to the domain name.
The Respondent is not making any use – neither commercial, nor non-commercial - of the disputed domain name (see printout of December 6, 2000, Annex 7 to the Complaint).
Finally, the Complainant has requested the Administrative Panel to issue a decision by which the contested domain name <bofrost.com> be transferred to the Complainant.
In his response, the Respondent has stated the following:
1. The domain name that is the subject of the Complaint is covered by the Policy:
(a) The statement that I made in my Registration Agreement was complete and accurate.
(b) To my knowledge, the registration of the domain name was not infringed upon or otherwise violate the rights of any third party.
(c) I did not register the domain name for an unlawful purpose, and
(d) I did not knowingly use the domain name in violation of any applicable laws or regulations.
2. The domain name was not registered for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, as the alleged owner of the trademark, or to a competitor of Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name:
(i) I am the only titular (registrant) of the domain name <bofrost.com>.
(ii) No one has been authorized to negotiate nor to make any deal on my behalf or in my name using the domain name.
(iii) The first communication I received with respect to this case was a fax from SCHMIDT, von der OSTEN & HUBER dated 30.11.2000 (see annex 1 to the Response).
(iv) The above mentioned fax was answered by me on 05.12.2000 (see annex 2 to the Response) informing that the domain name IS NOT FOR SALE.
3. The domain name was not registered in order to prevent Complainant from reflecting the trademark in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such misconduct:
- I did not have knowledge before this complaint of the existence of bofrost* trademark.
- The complainant affirms that the trademark was registered by it in October 1994 (more than six years ago).
- During this period the complainant had NOT registered nor requested to register the domain name.
- I registered the name on October 11, 2000, (more than three months ago). From this date I intended to create an association of practitioners of ice sports.
4. Complainant and Respondent are not competitors and the domain name was not registered by Respondent primarily to disrupt Complainant’s business:
- I practise all kind of ice sports and the purpose of this domain name is to constitute an association of practitioners and friends of these sports. Bofrost is a name, which make reference (in German language) to this activity.
- Burosoft, S.A.´s activity consists in distribution and selling computers and its components.
- These activities have no relation with goods used by complainant under its trademark.
- I have no intention to compete with Complainant or disrupt Complainant’s business. My actions and demonstrated intent during the three months I have registered the domain name are consistent with this claim.
5. The Respondent is making a legitimate non-commercial use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue:
- Prior to October 11, 2000, (registered date of the name) I had prepared the contents of the web together with some friends and it has the object to combine the ice sports practice with the interchange host world-wide.
- The disputed domain name is used for a legitimate non-commercial, non-profit purposes, it is only for associates, and goes exclusively to practitioners and friends of ice sports (see annex 3 to the Response).
C. Complainant´s response to the Respondent´s response
As already stressed in our complaint the disputed domain name was solely registered for the purpose of selling the domain name to the complainant. There has even been discussions about the transfer of the domain name to bofrost* could be implemented between Mr. Nellessen, acting on behalf of bofrost*, and Mrs. Yvonne Rauh, acting on behalf of the respondent. We refer to Burosoft’s e-mail of October 13, 2000,
in which - in a rough translation - Mrs. Rauh points out as follows:
"I already informed myself concerning the steps necessary to transfer the respective domain. These are as I already explained to you by telephone the following:
The future new interested person can declare a representative or can appear with the respective powers in a notarial act in which the transfer will be realised.
The transfer is not possible in a different way.
I can help you to find a lawyer for your representation for this purpose.
Please be so kind and contact me by telephone to clear up the details.
Burosoft, S. A."
2. It is not convincing at all if the respondent asserts that "no one has been authorised to negotiate nor to make any deal on my behalf or in my name using the domain name". There are several links between the Respondent on the one hand and Burosoft S.A. and Yvonne Rauh on the other hand:
- The disputed domain name was offered by Mrs. Yvonne Rauh for an amount of DEM 12.000,00, a fact, which is not being contested by the respondent.
- There were negotiations between bofrost* and Burosoft S.A. concerning technical details of the transfer of the domain.
- The address under which the domain is registered is the address of Burosoft S.A.
- The respondent is registered as administrative and technical contact for the disputed domain c/o Burosoft S. A.
- According to the networksolutions whois-database the billing contact for bofrost.com is Yvonne Rauh, the person who offered the domain name for 12.000,00 DM and who negotiated the details of the transfer of the domain;
- The response was transmitted with a fax coversheet of Burosoft S.A. (Annex 12).
The panel may decide whether under these circumstances the Respondent’s allegations are convincing.
3. It is not true that bofrost* had not registered nor requested to register the disputed domain name before the registration for the respondent.
Already in 1997 the domain "bofrost.com" was registered by XTEND GmbH, Hans-Guenther-Sohl Str. 1, 44235 Düsseldorf on behalf of bofrost* (see Annex 9). Due to administrative problems it was not possible to transfer the domain directly from XTEND GmbH to bofrost*. Later on the domain was obviously cancelled by XTEND GmbH and was then registered by the respondent.
4. It is not true that "bofrost*" is "a name which makes reference (in German language) to this activity", i. e. "all kind of ice sports". There is no link between bofrost* and any kind of sports in German language at all.
The word "bofrost*" has no specific meaning in the German language at all. It is a mark, which is composed of the name of the founder of bofrost* "Boquoi" and the word "Frost" which in the German language has the same meaning as the English term "frost".
5. We would also like to draw the panel’s attention to the fact - already mentioned in the complaint - that still on December 6, 2000 the respondent was not making any use of the disputed domain name (see print out of December 6, 2000, Annex 7).
It seems quite obvious that this complaint is the only reason for the respondent to pretend that he is making a legitimate use of the disputed domain name. We refer to the print out of January 18, 2000 (Annex 10), according to which the content of bofrost*.com was last modified exactly on January 15, 2001, the date of the respondent’s response.
In addition the domain name "bofrost.com" is obviously not being used for e-mail-services. Any mail of January 18, 2001 to "firstname.lastname@example.org", "email@example.com" and "firstname.lastname@example.org" was undeliverable (see Annex 11).
We thus request the panel to issue a decision that the contested domain name should be transferred to the complainant.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that 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
(2) that the Respondent has no legitimate interests in respects of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
The Complainant is the owner of the figurative trademark BOFROST*.
In the Panelist´s opinion the domain name <bofrost.com> is identical to the trademark BOFROST* except for the "*"and the addition .com.
Accordingly, the Panelist finds that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Respondent has stated that the domain name was registered by him to create an association of practitioners of ice sports which would be non-commercial. As on the date of the filing of the Complaint in this matter, the Respondent’s website was inactive. The Panel does not attach importance to the fact that the Respondent has activated his website now since the activation was made after the notice to the Respondent of the dispute. Consequently, the Respondent has not proven that he has any prior rights or legitimate interests in the domain name.
The prerequisites in the Policy, Paragraph 4 (a) (i) and (ii) are therefore fulfilled.
Paragraph 4 (a) (iii) of the Policy further provides registration and use in bad faith.
Paragraph 4 (b) regulates which kind of evidence that is required, namely
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have required the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The domain name at issue was registered on October 11, 2000, by the Respondent. The Complainant alleges that on October 24, 2000, an employee of Burosoft, S.A., Mrs. Yvonne Rauh, on behalf of the Respondent offered to transfer the domain name to the Complainant for an amount of 12 000 DM. The Complainant further alleges that Mrs. Yvonne Rauh stated that the only purpose of registering the domain name was to achieve a co-operation with the bofrost* group in Spain or of selling the domain name to the Complainant. Further, the Complainant has submitted an e-mail of October 30, 2000, in which Mrs. Yvonne Rauh informs about the technical details regarding transfer of the domain name.
The Respondent has stated that he has not authorized any person to negotiate or make any deal on his behalf regarding the domain name but he has not contested the allegation that Mrs. Yvonne Rauh has offered to transfer the domain name.
According to the Registrar´s WHOIS database the Respondent has the same address as Burosoft, S.A. Further, the Respondent has in his response stated the address of Burosoft, S.A. as c/o address. Lastly, Mrs. Yvonne Rauh is the billing contact of the domain name. With regard to these facts the Panel is of the opinion that the Respondent´s version of the course of events is not probable.
In the light of these circumstances, the Panel concludes that the domain name was registered and is being used in bad faith.
Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4 (i) of the Policy are fulfilled.
The Complainant has requested transfer of the domain name.
In view of the above circumstances and facts the Panel decides, that the domain name registered by Respondent is identical or confusingly similar to the trademark and service mark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent’s domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel requires that the registration of the domain name <bofrost.com> be transferred to the Complainant.
Dated: February 13, 2001