WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Phenomedia AG v. Meta Verzeichnis Com

Case No. D2001-0374

 

1. The Parties

The Complainant is Phenomedia AG, a public limited company organized under the laws of Germany, with its principal place of business at Josef-Haumann-Strasse 10, 44866 Bochum, Germany.

The Respondent is Meta Verzeichnis Com, a corporation organized under the laws of Austria, with its principal place of business at business entity whose address is Langer Graben 35a/1, Rum, 6063 Tyrol, Austria.

 

2. The Domain Name and Registrar

The domain name at issue is <moor-huhn.com> (the "domain name"). The Registrar is BulkRegister.com, Inc., 7 East Redwood Street, Third Floor, Baltimore, MD 21201, USA.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on March 15, 2001 and by hardcopy on March 19, 2001. The Center acknowledged receipt of the Complaint on March 21, 2001.

Also on March 21, 2001, the Center sent to the Registrar a request for verification of registration data. The Registrar confirmed: 1) that it had received a copy of the Complaint; 2) that Meta Verzeichnis Com is the current registrant of <moor-huhn.com>; 3) that the Registrantís address is Langer Graben 35a/1, Rum, 6063 Tyrol, Austria; 4) that the Administrative and Technical Contact are Meta Verzeichnis, Langer Graben 35a/1, Rum, 6063 Tyrol, Austria, emails: billing@metaverzeichnis.com and dns@metaverzeichnis.com; 5) that the Uniform Domain Name Dispute Resolution Policy applies to the domain name; and 6) that the domain name is currently locked.

[Remark: The file doesnít contain evidence that the Center verified that the Complainant had complied with all formal requirements, including payment of the fee.]

On March 22, 2001, the Center forwarded the Complaint to the Respondent by post/courier, fax and email, with copies to ICANN and to the Registrar. The Center formally notified the Respondent that the Complaint satisfied 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"); that payment of the required sum had been made by the Complainant; and that an administrative proceeding had been commenced against the Respondent. A deadline of April 11, 2001 was fixed for the Response.

No Response was submitted. Accordingly, the Center issued to both parties a Notification of Respondent Default to both parties on April 12, 2001.

On April 23, 2001, the Center notified the Parties that an Administrative Panel composed of a single member, Dr. Kamen Troller, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center. Absent exceptional circumstances, the Panelist was required to forward its decision to the Center in accordance with Paragraph 15 of the Rules by May 7, 2001.

The Panelist examined all notifications of the Center, and the Complaint, and finds that they comply with the formal requirements of the Rules and Supplemental Rules, and that the Administrative Panel was properly constituted.

 

4. Factual Background

A. The Complainant

The Complainant is a German company, specialized in the development of computer games for interactive entertainment.

The Moorhuhn is the main character and the title of a well-known computer game, which has been developed by the Complainant and which is distributed by the Complainant through the Internet. The Moorhuhn character also appears on a great variety of products, such as clothes, watches, games, jewelry, bags, mouse pads, sweets tidbits and stationery (see Complainantís websites at http://moorhuhn.netxshop.de).

The Complainant owns German trademark registrations No. 30005416 (verbal mark "Moorhuhn") and No. 30006595 (figurative mark) (the "Trademark(s)") (Complainantís Exhibits C3 and C4).

The Complainant asserts that it has licensed the Trademarks to other companies for marketing and promotional reasons and that in the year 2000 its Moorhuhn-related had a turnover with the Moorhuhn wasof about 15 Million Euro. (would Complainant mean: with the Moorhuhn products or with the trademark licenses?)

The Complainant operates websites at www.moorhuhn.com and www.moorhuhn.de, where the Moorhuhn games can be downloaded. These websites also contain news about the Moorhuhn character, entertainment services, online-games, Moorhuhn articles, etc. The Complainant asserts that it is also the holder of many other domains domain names that include the word "moorhuhn", but does not bring produce any evidence thereof. The Panel searched on the Internet, and the NSI and Registrars.com WHOIS information databases and found that the domain names <moorhuhn.org>, <moorhuhn.net>, <moorhuhn.nl>, <moorhuhn.ch> and <moorhuhn.at> are owned by the Complainant. The domain name <moorhuhn.tv> is owned by Netrecord-z AG, with Technical Contact: Mr. Stefan Heinemann. The domain names <moorhuhn.cc> and <moorhuhn.biz> are taken, but no information regarding the registrants could be found.

B. The Respondent

The Respondent is alleged to be Meta Verzeichnis Com, with an address at Langer Graben 35a/1, Rum, 6063 Tyrol, Austria. The WHOIS information for the domain name lists Meta Verzeichnis Com as the Registrant, and as the Administrative and Technical Contact, with email: billing@metaverzeichnis.com and dns@metaverzeichnis.com.

The domain name <moor-huhn.com> was registered on May 3, 2000. The domain name resolves to a website that states:

"Information: Diese Seite ist in Vorbereitung. Wir arbeiten am Aufbau von Plattformen unter ausgewählten Internet-Adressen. Für Anfragen und Vorschläge stehen wir Ihnen gerne zur Verfügung."

Free translation:

"Information: This web site is under preparation. We are working on the construction of platforms from amongfor selected Internet addresses. We are at your disposal for any requests and suggestions."

The Respondent has not filed a Response.

C. The Complainantís warning letter

The Complainant contends states that it has sent a written warning to the Respondent on

February 6, 2001, and that Respondent did not react to this letter. A copy of the warning letter was submitted to the Panel (Complainantís Exhibit C7).

 

5. Partiesí Contentions

A. The Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the disputed domain name. More precisely, the Complainant submits that:

the domain name <moor-huhn.com> is "very similar" to the Complainantís Trademark; [actually, the Complainant doesnít mention the domain name here]

(1) the domain name <moor-huhn.com> is identical or confusingly similar to the Complainantís Trademark;

(2) the Respondent has no rights or legitimate interests in the domain name. The Complainant contends that "the Respondent has no link to the Complainant or the Moorhuhn" and that "the use of the disputed domain name by the Respondent has never been licensed by the Complainant"; and

(3) (3) the domain name was registered and is being used in bad faith. The Complainant asserts that the Respondent tries to participate in the Complainantís success with the Moorhuhn and its good reputation and tries to benefit from typical typing mistakes ("www.moor-huhn.com" instead of "www.moorhuhn.com") from the Internet users who wants to get information and news about the Moorhuhn. The Complainant alleges that, by choosing the domain name <moor-huhn.com>, the Respondent intentionally attempts to attract Internet users for financial gain, and therefore creates confusion with the Complainantís Trademark. In addition, the Complainant submits that the Respondent is in breach of the Registrarís Registration Agreement, because it provided inaccurate and incomplete information. Referring to number paragraph 4.1 of the Registration Agreement, the Complainant states that the Respondent is committed to providing the Registrar with certain information, including (i) the registrantís full name, postal address, e-mail address, voice telephone number, and fax number if available, and (ii) the name of an authorized person for contact purposes in the case of a registrant that is an organization, association, or corporation. The Complainant alleges that "Despite this obligation, the Respondent didnít announce the name of any authorized person. ĎMeta Verzeichnis Comí is no adequate information for the Whois database."

The Complainant requests the Administrative Panel to issue a decision that the domain name be transferred to the Complainant.

B. The Respondent

No response has been submitted.

 

6. Discussion and Findings

Referring to paragraph 14 of the Rules, in the absence of a response to the Complainantís allegations by the Respondent, the Panel may consider those claims in light of the unchallenged evidence submitted by the Complainant. While the Panel cannot decide in the Complainantís favor solely given the Respondentís default but is entitled to draw, and in this case does draw, such inferences as it deems appropriate and just in the circumstances from the Respondentís failure to respond.

Pursuant to paragraph 4(a), the Complainant must prove that each of the following

three elements are present:

(i) the Respondentís domain name 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 has been registered and is being used in bad faith.

(a) Identical or confusingly similar

The only differences between the domain name and the Trademark are that: (1) a dash appears in the middle of the domain name is separated by a dash; and (2) the domain name has ".com" at the end. The differences between Complainantís Trademark and Respondentís domain name are minor and the inclusion of the dash and the suffix ".com" do nothing to distinguish the mark from the domain name. (Footnote 1)

In former previous cases, domain names have generally been found to be identical to names that enjoy trademark protection, regardless of whether the domain name is expressed as one word or separated by a dash. (Footnote 2). In the case Axel Springer Verlag AG v. Andy Fritsche (Footnote 3), the administrative panel found that the fact that one domain name Ė contrary to the other Ė included a hyphen did not have any significance. The panel in the case Just Jeans Group, Ltd. v. Domain Trade (Footnote 4) held that the addition of the hyphen is an immaterial difference.

In Gateway, Inc. v. Pixelera.com, Inc. (Footnote 5) the domain name <gate-way.com> was found to be confusingly similar but not identical to the trademark "gateway.com".

This Panel contends views the conclusion in Gateway as too narrow.that that assertion is erroneous. In the opinion of this Panel, the addition of the dash ("-") fails to alleviate the confusing similarity and, accordingly. The Panel finds that, the domain name <moor-huhn.com> is quasi-identical with the trademark "Moorhuhn".

The Panel is also of the opinion that an Internet user seeking Complainantís website, but unfamiliar with the precise spelling of Complainantís mark, is likely to enter inadvertently the misspelled domain name as <moor-huhn.com>.

The Panel concludes that the Complainant satisfies the requirements of paragraph 4(a)(i) of the Policy.

(b) Rights or legitimate interests

Paragraph 4(c) of the Policy defines the circumstances required for the Respondent to demonstrate "rights to and a legitimate interest in the domain name". The Respondent is only required to demonstrate any one of the following circumstances (in particular and without limitation) to prove its rights to or legitimate interest in the domain name:

(i) before any notice to you of the dispute, your use of, or 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant asserts that it has not licensed or otherwise permitted the Respondent to use the Trademark or to apply for or use any domain name incorporating that mark.

There is no evidence in the record to support any finding of a legitimate right or interest in the domain name on behalf of the Respondent. The Respondent has offeredoffers no evidence of the applicability of any of the criteria in paragraph 4(c) of the Policy.

In addition, "Moorhuhn" appears to be an invented word. The (the Panel has checked dictionaries as well as the Duden (German lexicon/dictionary) and none of them contains this term)has been unable to find the term Moorhuhn. The Panel is of the opinion that no and is as such not one traders would legitimately choose the name Moorhuhn unless seeking to create an impression of an association with the Complainant, or to take advantage of the Complainantís reputation.

In these circumstances, and taking into account the Respondentís failure to at least try toto justify the use of the term "Moor-huhn" for its websitein its domain name, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

(c) Bad faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove use in bad faith as well as registration in bad faith.

Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances which shall be evidence that the registration and use of a domain name is in bad faith:

(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 registered 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 website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

The Complainant seems to rely on the forth element, alleging that the domain name was registered and used in bad faith because "the Respondent intentionally attempts to attract [Internet users] for financial gain" and "tries to participate in the Complainantís success with the MOORHUHN and its good reputation". The Complainant asserts that the Respondentís website has a commercial content because it the site indicates that it is in preparation for the implementation and selling of Internet-portal-services. The Complainant also contends that "the Respondent tries to benefit from the typical typing mistakes ("www.moor-huhn.com" instead of "www.moorhuhn.com") of the Internet user, who wants to get information and news about the MOORHUHN".

By not submitting a response, the Respondent has failed to address these allegations.

The Panel does not agree with the Complainantís contention that the Respondentís current website has containsa commercial content. The Panel finds that at this point in time, the Respondent has not (yet) been using the domain name "for commercial gain" and therefore has not engaged in activities meeting the criteria under paragraph 4(b)(iv) of the Policy for bad faith.

However, the Panel notes that the criteria for finding bad faith set forth in paragraph 4(b) of the Policy are not exclusive (Footnote 6). In this matter, several facts lead to the conclusion that the Respondent is acting in bad faith:

(a) The Complainantís Trademark has a strong reputation and is widely known, as evidenced by its substantial use in Germany and in other countries. The Respondent must have been aware of these trademark rights when it registered and first used the domain name. Subsequently, Complainant gave the Respondent actual notice of Complainantís ownership of, and exclusive rights to the Trademark. The Respondent has nonetheless continued to use the mark in the domain name and to use the domain name to access Respondentís website

(b) By choosing a domain name thatwhich, except the added dash added, is identical to the Complainantís Trademark, the Respondent is intending to take advantage of inadvertent misspellings of web users. Consumers who are searching for Complainantís home page or one of Complainantís other websites may misspell and enter <moor-huhn.com>. Consumers who encounter "moor-huhn" on the web will recognize the Moorhuhn name and will be enticed by the name to access Respondentís website. All cConsumers are likely to be confused as to the source, sponsorship, affiliation, or endorsement of Respondentís website.

(c) The Respondentís website announces: "Wir arbeiten am Aufbau von Plattformen unter ausgewählten Internet-Adressen. Für Anfragen und Vorschläge stehen wir Ihnen gerne zur Verfügung" (translation: "We are working on the construction of platforms from amongfor selected Internet addresses. We are at your disposal for any requests and suggestions"). This leads one to suspect that the Respondent is willing to sell or otherwise transfer the domain name, . Heand thus fulfills the conditions of paragraph 4(b)(i) of the Policy.

(d) The Respondent has failed to respond to the Complaint and to demonstrate any good faith use. (Footnote 7)

(e) The Respondentís contact details in the Registrarís registry are incomplete. Article 4.1 of the Registration Agreement obliges the Registrant to provide, amongst other information, "the name of an authorized person for contact purposes in the case of a registrant that is an organization, association, or corporation". The Respondent failed to fulfil this obligation, making it difficult for third parties to contact the Respondent. (Footnote 8)

(f) The Panel cannot conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not not be a passing of,constitute an infringement of the Complainantís trademark rights, or would otherwise be legitimateillegitimate.

Based on the above, the Panel finds that the Complainant has satisfied itsthe burden of proof provingon bad faith registration and use of the domain name.

 

7. Decision

The Panel decides that:

1) the domain name <moor-huhn.com> is identical with and confusingly similar to the trademark "Moorhuhn";

2) the Respondent has no rights or legitimate interest in respect of the domain name; and

3) the domain name has been registered and is being used in bad faith by the Respondent.

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requires that the Registrar, BulkRegister.com, Inc., transfer the name <moor-huhn.com> to the Complainant.

 


 

Kamen Troller
Sole Panelist

Dated: May 27, 2001

 


 

Footnotes:

  1. See: Gateway, Inc. v. James Cadieux (D2000-0198); Ian Anderson Group of Companies, Ltd v. Denny Hammerton and I Schembs (D2000-0475) and The Journal Newspapers, Inc. v. DomainForSale 980dollars (FA95395).
  2. See, e.g.: Ian Anderson Group of Companies, Ltd v. Denny Hammerton and I Schembs (D2000-0475), where the domain names at issue were <jethrotull.com> and <jethro-tull.com>; DeRisk IT, Ltd. v. DeRisk IT, Inc. (D2000-1288), where the domain names at issue were <derisk-it.com>, <derisk-it.net> and <derisk-it.org>; and Just Jeans Group, Ltd. v. Domain Trade (D2000-1821), where the domain name <just-jeans.com> was found to be identical with the trademark "Just Jeans".
  3. Axel Springer Verlag AG v. Andy Fritsche (D2000-1335).
  4. Just Jeans Group, Ltd. v. Domain Trade (D2000-1821).
  5. Gateway, Inc. v. Pixelera.com, Inc. (D2000-0109).
  6. See, e.g.: Süd-Chemie AG v. tonsil.com (D2000-0376), at p.8; Pharmacia & Upjohn AB v. Dario H. Romero (D2000-1273), at p.6; and Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club (D2000-1532), at p.6.
  7. See: Pharmacia & Upjohn AB v. Dario H. Romero (D2000-1273), at p.6; Telstra Corporation Ltd. v. Nuclear Marshmallows (D2000-0003), at p.8
  8. See: Süd-Chemi AG v. tonsil.com (D2000-0376), at p.8.