WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ProMarkt Holding GmbH & Co. KG and ProMarkt Elektrohandel GmbH v.
Marco Spoerrle Consulting & Investment Inc.
Case No. D2000-1755
1. The Parties
First Complainant is ProMarkt Holding GmbH & Co. KG, with a place of business at Kolonnenstrasse 30f, 10829 Berlin, Germany; second Complainant is ProMarkt Elektrohandel GmbH, with a place of business at Hans-Thoma-Str 25 68163, Mannheim, Germany.
Respondent is Marco Spoerrle Consulting & Investment, Inc., of 1223 Wilshire Blvd., Suite 263, Santa Monica, California 90403, U.S.A.
2. The Domain Name and Registrar
The domain name in dispute is promarkt.com. The Registrar is Network Solutions, Inc.
3. Procedural History
3.1 The Center received Complainants’ Complaint by e-mail and by hard copy on December 18, 2000. After receipt of the Complaint, in accordance with paragraph 4(a) of the Rules for the Uniform Domain Name Dispute Resolution Policy (the "Rules") and paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center stated it had verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules and the Supplemental Rules, and further that the payment in the required amount to the Center had been made by Complainant, and that the formal date of the commencement of this Administrative Proceeding is December 29, 2000.
3.2 On December 29, 2000, Notification of Complaint and Commencement of Administrative Proceeding was forwarded to Respondent by post/courier with enclosures, and to its administrative billing and technical contacts by facsimile and e-mail without attachments, at the addresses given on the Registrar’s listing of the domain name. It was also sent to the name provided by Complainants as the author of an unsolicited offer to sell the domain name. A copy was forwarded to Complainants’ representative at the e-mail address provided in the Complaint.
3.3 The Notification of Complaint and Commencement of Administrative Proceeding stated that the last day for Respondent to send its Response to Complainants and to the Center was January 17, 2001, and that in the event of its failure to file such a Response by the due date, it would be considered in default. In the event of such a default, an Administrative Panel would still be appointed which would have the discretion but not the obligation to consider a late filed Response.
3.4 No response was received by the Center.
3.5 On January 18, 2001, by Notification of Respondent Default, the Center notified Respondent and its administrative, billing and technical contact and Complainants’ authorized representative, at the respective addresses as above indicated, that Respondent had failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding for the submission of its Response and proceeded to appoint the Administrative Panel.
3.6 On January 29, 2001 the Center forwarded to Complainants and to Respondent Notification of Appointment of Administrative Panel and projected decision date. The Panel consisted of a single member, Joan Clark. The Panelist had previously submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Arbitration and Mediation Center .
4. Factual Background and Parties’ Contentions
The Complaint states that ProMarkt Elektrohandel GmbH (the Second Complainant) is the owner of registered trademarks including PROMARKT registered in 1989, PRO MARKT registered in 1976 and PROMARKT registered in 1999, all registered in Germany and in respect of, inter alia, electrical apparatus. The Complaint further states that the Second Complainant is a wholly-owned subsidiary of the First Complainant ProMarkt Holding GmbH & Co. KG.
The Complaint provides considerable information regarding the extensive sales by Complainants in Germany under the PROMARKT trademark and asserts that the Complainants are currently Germany’s third leading electrical retailer.
The Complaint also states that Complainants have a web site at www.promarkt.net. Copies of extracts from printouts of this web site show use of the trademark PROMARKT. The domain name promarkt.net and promarkt.de were registered on April 13, 1999 and on October 5, 1999 respectively, both in the name of FOTO-RADIO-WEGERT GmbH.KG which the Complaint states is a wholly-owned subsidiary of the First Complainant.
The Complaint states that Respondent registered the disputed domain name on January 8, 1999, that from the whois search Respondent appears to be a U.S. based company, and that the person behind the registration is one Marco Spoerrle.
The Complaint further asserts that Mr. Spoerrle has strong links with Germany, that his contact telephone numbers in the whois search are German, and that he runs an Internet search engine company called verica.com which has a German address.
In addition, the Complaint asserts that Respondent has registered a considerable number of domain names, seventeen of which Complainants have listed, which Complainants state comprise or include famous marks or names of German companies. It is also stated in the Complaint that a number of the domain names have already been transferred to the owners of the trademarks to which the domain names relate, and that some of the domain name registrations appear to have expired.
The Complaint reports that Complainants became aware of Respondent’s registration of the disputed domain name on June 8, 1999, when a letter from Marco Spoerrle dated June 7, 1999 was received in which he invited the First Complainant to make an offer for the domain name within two weeks, failing which he would offer it to someone else.
On June 22, 1999, a firm of solicitors for Complainants replied to Mr. Spoerrle, advising that the First Complainant was owner of the German trademark PROMARKT and that it was not interested in the domain name promarkt.com as it was already the owner of promarkt.de, as well as the owner of the trademark rights in the name.
[According to the Complaint, the trademark PROMARKT is registered in the name of the Second Complainant and the domain name promarkt.de is registered in the name of FOTO-RADIO-WEGERT GmbH.KG, and both registrants are subsidiaries of the First Complainant.]
Complainants were also made aware in September 1999 that the disputed domain name had been listed on the GreatDomains.com site, which Complainants state is a well-known domain name auction site.
Subsequent to Mr. Spoerrle’s June 7, 1999 letter, according to the Complaint, the Respondent through a Mr. Michail Ivancich contacted Complainants, holding himself out as a representative of verica.com. On February 16, 2000, Mr. Ivancich wrote to a person in the legal department of Kingfisher PLC which the Complaint explains is the parent company of Complainants. In his letter, Mr. Ivancich claimed he was working for verica.com, a "family-friendly search engine" and offered "to sell the disputed domain name in consideration of the Complainant buying banner advertisements on the verica.com site" for a "200,000 banner-view packet" for 2,500 euros. The offer was rejected by Complainants’ parent company Kingfisher PLC.
The Complaint further states that, in August 2000, Complainants instructed their English solicitors to make enquiries as to whether Mr. Spoerrle were still willing to sell the disputed domain name.Complainant’s solicitor wrote to Mr. Spoerrle to this effect. Mr. Spoerrle replied by e-mail on August 2, 2000, requesting the solicitor to make his bid, whereupon the solicitor replied offering $1,500. The response of Mr. Spoerrle on August 3, 2000 was that the offer was too low. When in his reply the solicitor indicated his surprise as Complainants had already been contacted by someone claiming to be from Mr. Spoerrle’s organization offering the disputed domain name for $1,500, Mr. Spoerrle requested details of the offer and the persons involved, and was informed by the solicitor that it was Mr. Ivancich. The final communication by Mr. Spoerrle was that the offer to sell was no longer valid.
The Complaint emphazises that the disputed domain name is identical to the Second Complainant’s registered trademark, that the Complainants own substantial goodwill in the PROMARKT trademark in Germany, that Respondent is not authorized to use in any way whatsoever Complainants’ trademarks, and that Respondent has no rights or legitimate interests in the domain name or the PROMARKT mark.
The Complaint asserts that Respondent has registered and subsequently used the disputed domain name in bad faith, emphasizes Respondent’s strong ties to Germany and concludes that Respondent must have been aware of Complainants’ famous PROMARKT trademark prior to registration of the disputed domain name.
The Complaint concludes by requesting that the disputed domain name be transferred to the Complainants.
5. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainants must prove each of the following in order that Respondent be required to submit to a mandatory administrative proceeding:
(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainants have rights, and
(ii) 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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of the registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances, without limitation, each of which, if proven, shall demonstrate Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.
(a) Identity or confusing similarity of the domain name to a trademark or service mark in which Complainants have rights
The Second Complainant is the owner of two trademark registrations for PROMARKT and one for PRO MARKT.
The domain name in issue is: promarkt.com.
In the opinion of the Panel, the suffix ".com" should not be taken into consideration when considering the identity or confusing similarity of a domain name to a trademark or service mark.
The Panel finds that the disputed domain name is identical to two of the registered trademarks of the Second Complainant, and is confusingly similar to a third trademark of the Second Complainant, differing only by the separation between the first and second syllables in the trademark.
The criterion of paragraph 4(a)(i) has therefore been met.
(b) Rights or legitimate interests of Respondent in the domain name
Respondent has no rights or legitimate interests in respect of the domain name.
There is no indication that Respondent has used the domain name, or made any demonstrable preparation to use it, in connection with the bona fide offering of goods or services. In fact, Respondent’s purpose in registering the domain name appears clearly to have been to sell it, either to the Complainants, or to someone else.
The communications by or on behalf of Respondent with Complainants or their parent company, described under paragraph 4 above, are evidence of efforts by or on behalf of Respondent to dispose of the domain name for a substantial consideration in varying amounts.
The Panel concludes that Respondent has not made any use of the disputed domain name in connection with the bona fide offering of goods or services; all that has been offered by Respondent or on Respondent’s behalf is the domain name itself.
Nor is there any evidence that Respondent has been commonly known by the domain name or any evidence that Respondent was making a legitimate non-commercial or fair use of the domain name.
Accordingly, there is no evidence that Respondent has any rights or legitimate interests in the domain name, and the conditions for the second criterion have been fulfilled.
(c) Registration and use of the domain name in bad faith
As stated in the preceding paragraphs, it is apparent from the evidence that Respondent acquired the domain name primarily for the purpose of selling it to Complainants or to a third party for valuable consideration in excess of the cost of registration of the domain name, and to commercially capitalize on Complainants’ PROMARKT trademark. It is of interest that, as reported by Complainants, Respondent has registered a considerable number of domain names, which comprise or include famous marks or names of German companies, and that a number of these domain names have been transferred to the owners of the trademarks to which the domain names relate.
In view of the above and the provisions of paragraph 4(b)(i) of the Policy, the Panel has concluded that the domain name in issue has been registered and is being used in bad faith.
The conditions for the third criterion have therefore been fulfilled.
The Panel decides, in accordance with the Uniform Domain Name Dispute Resolution Policy, paragraph 4:
- that the domain name promarkt.com. is identical to the trademark PROMARKT and confusingly similar to the trademark PRO MARKT of the Second Complainant;
- that Respondent has no rights or legitimate interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
The Panel accordingly requires that the domain name promarkt.com be transferred forthwith to the Second Complainant ProMarkt Elektrohandel GmbH.
Dated: February 12, 2001