WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

REWE-Zentral AG v. Fahmi Banafa

Case No. D2001-0605

 

1. The Parties

The Complainant is REWE-Zentral AG, a company organized under the laws of Germany, with its principal place of business at Domstraße 20, 50668 Cologne, Germany.

The Respondent is Mr. Fahmi Banafa, an individual acting under the name banafaco, with address at 2125 S. Espina Street, Apartment 20, Las Cruces, New Mexico 88001, USA.

 

2. The Domain Name and Registrar

The domain name at issue is <rewe.com> (the "domain name"). The Registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, USA ("NSI").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by hardcopy on April 27, 2001 and by email on May 4, 2001. The Center acknowledged that it had received the Complaint on April 30, 2001.

On May 1, 2001, the Center sent to the Registrar a request for verification of registration data. On May 4, 2001, the Registrar confirmed: 1) that <rewe.com> was registered with the Registrar; 2) that the current registrant of <rewe.com> is Bonafaco, 2125 S. Espina ST.#20, Las Cruces, NM 88001, USA; 3) that the Administrative and Billing Contact are: Banafa, Fahmi (FB3072), banafaco, 2125 S. Espina Apt #20, Las Cruces, NM 88001, USA, email: banafa@hotmail.com, [telephone number:] [+1] 505 521 2669; and that the Technical Contact is: Support, Technical, Affinity Internet, Inc., 101 Continental Boulevard, 3rd Floor, El Segundo, CA 90245, USA, email: contact@ahnet.net, [telephone number:] [+1] 310 524 3000, [fax number:] [+1] 310 388 1335; 4) that the NSI Service Agreement Version 5 is in effect; and 5) that the domain name is currently active.

On May 8, 2001, the Center printed out the homepage of Respondentís website at <rewe.com>.

The Center forwarded the Complaint to the Respondent with copies to ICANN and to the Registrar by email, by fax and by post/courier on May 8, 2001. 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 May 27, 2001 was fixed for the Response.

No Response was submitted. Accordingly, the Center issued a Notification of Respondent Default to both parties on May 28, 2001.

On June 13, 2001, the Center informed the Parties that due to a scheduling conflict with respect to WIPO arbitrationsarbitration, the Panelist appointed on June 7, 2001 would have to reject the appointment, and that the Center would appoint a new Panelist.

On June 20, 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 July 3, 2001.

The Panel 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, REWE-Zentral AG, is a leading European retail company with its registered office in Germany. The Complainant has more than eleven thousand stores and supermarkets throughout Europe. The Complainant is in particular present in Germany, Spain, Italy, France, Hungary, the Czech Republic, Poland and Austria. In addition to REWE stores, Complainantís retail group owns HL markets, MINIMAL markets, BILLA markets (in Austria), TOOM markets (Do-It-Yourself stores), PROMARKT (home entertainment stores), IDEA and SCONTI markets (drugstores), as well as PENNYMARKT and MONDO markets (discount stores). Further, the Complainant is active in the travel industry under the trademarks ATLAS-Reisen and ITS. In the year 2000, the Complainant employed about 179,000 people throughout Europe and achieved a turnover of more than 73 billion DM (see Complainantís website at www.rewe.de).

Complainant owns the following registrations for the trademark "REWE" (Complainantís Exhibits 3-6) (the "Trademark(s)"):

The Complainant also states that it has international protection for the Trademark under registration Nos. 557354 and 557355, but did not provide evidence thereof.

The Complainant operates websites at www.rewe.de and www.rewe.net.

B. The Respondent

The Respondent has registered the domain name <rewe.com> on September 17, 1999. Currently, when accessing the website under the domain name, the Internet user is informed that the site is under construction. No contents are available.

Respondent has also registered numerous other domain names: <1-800number.org>, <1-800number.net>, <azzawiah.com>, <dakryon.com>, <fly-aa.com>, <flyea.com>, <fly-ea.com>, <go-ebusinessman.com>, <goelf.net>, <go-elf.com>, <go-etravel.com>, <go-klm.com>, <golufthansa.com>, <go-lufthansa.com>, <kooltravel.com, <own-domain.com>, <own-domains.com>, <sabena.net>, <tele-business.com>, <teletickets.com>, <tesa-bandfix.com> and <we-domain.com> (Complainantís Exhibit 7).

C. Prior correspondence between the parties

On September 4, 2000, the Complainant contacted the Respondent by email and asked him whether he was willing to transfer the domain name. On September 6, 2000, the Respondent answered to the Complainant:

"(Ö) I am willing to sell REWE.com for best offer. I got emails from Germany and France offering to purchase this domain but I turned them off. If you are really interested please let me know how much you are willing to buy for."

On September 7, 2000, the Complainant asked how much Respondent expected to be paid. On September 11, 2000, Respondent answered:

"(Ö) I am looking for US $ 20,000. If you are interested pls let me know. Thanks."

On September 11, 2000, the Complainant informed the Respondent that he was not willing to pay this amount (Complainantís Exhibit 9).

 

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:

5.1 the domain name <rewe.com> is identical to the Complainantís company name and the Trademarks. The Complainant contends that its Trademarks have to be regarded as well-known marks, taking into account the Complainantís prominence in Europe. The Complainant also states that it enjoys rights in the name "REWE" through use of this term as a company name;

5.2 the Respondent has no rights or legitimate interests in the domain name, because:

- the Respondent does not use the term "REWE" in any respect that would justify the registration of the domain name. There is no product or service offered on Respondent's homepage under this name;

- Respondent's company/family name (banafaco/banafa) has nothing to do with the term "REWE";

- "REWE" is not a common word in the English language that would make any sense if used as a domain name. "REWE" is not a descriptive or generic term that can be freely used by anybody and the registration of which can be explained by the Respondent. The Respondent has not been commonly known by the domain name (or simply the name "REWE"), nor is he making a legitimate non-commercial or fair use of the domain name;

5.3 the domain name was registered and is being used in bad faith, because the Respondent has acquired the domain name primarily for the purpose of selling or otherwise transferring the domain name registration to the Complainant for a valuable consideration in excess of the out-of-pocket costs he might have had directly related to the domain name. The Complainant argues that the Respondent has a history of cybersquatting; that from the domain registrations owned by him, it becomes obvious that he has registered numerous domain names that contain the names of well-known companies; that the Respondent obviously has registered these domain names in the expectation of being able to sell the domain names to the rightful owners at a certain point in time in the future; and that in that respect, the domain name <rewe.com> fits well into the picture. The Complainant also states that the e-mail correspondence between the Parties and the fact that no contents can be reached on the Respondentís website show that the only reason Respondent had when registering the domain name was to solicit a substantial payment from the rightful owner. The Complainant refers to the e-mail correspondence, in which the Respondent informs the Complainant that he is expecting an amount of US $ 20,000.

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 Complainantsí allegations, the Panel may consider those claims in light of the unchallenged evidence submitted by the Complainant. While the Panel cannot decide in the Complainantsí favor based solely on the Respondentís default, it is entitled to draw, and in this case does draw, such inferences as it deems appropriate and just under the circumstances based on the Respondentís failure to respond.

Pursuant to Paragraph 4(a) of the Policy, 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 to a trademark

The only difference between the domain name and the Trademark is that the domain name has ".com" at the end. The addition of the designation ".com" is non-distinctive because it is a gTLD required for registration of a domain name. 1

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.

There is no evidence in the record to support a finding of a legitimate right or interest in the domain name on behalf of the Respondent. The Respondent does not appear to have established a website connected to the domain name, does not appear to have made demonstrable preparations to use the website, does not appear to be making a bona fide offering of goods or services or a legitimate non-commercial use of the domain name, and does not appear to be commonly known by the name "REWE". There is no evidence in the record of the applicability of any of the criteria in paragraph 4(c) of the Policy.

Under these circumstances, and taking into account the Respondentís failure to respond and to justify the use of the term "REWE" in his 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 relies on the first element, asserting that the Respondent acted in bad faith, because the Respondent has acquired the domain name primarily for the purpose of selling or otherwise transferring the domain name registration to Complainant for a valuable consideration in excess of the out-of-pocket costs he might have had directly related to the domain name.

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

The Panel finds that there is no doubt that the Respondent has registered the domain name for the purpose of selling the registration to the Complainant, for valuable consideration in excess of his out-of-pocket costs directly related to the domain name. This is demonstrated by the Respondentís correspondence to the Complainant (emails of September 6, 2000 and September 11, 2001, Complainantís Exhibit 9). In addition, the Panel has searched on the Internet and found that the domain name is being offered for sale at GreatDomains.com for the price of US$ 10,000.

The Panel finds that this is a clear case of cybersquatting. The Respondent has registered a large number of other domain names featuring famous company names or trademarks (Complainantís Exhibit 7). The Panel has found that none of these domain names leads to a website, and that nearly all of them are being offered for sale at GreatDomains.com for a price varying between US$ 50 and US$ 50,000. These circumstances demonstrate that the Respondent is a cybersquatter, and has engaged in abusive domain name registration.

The Panel concludes that the Complainant has satisfied the burden of proof with respect to bad faith registration and use of the domain name.

 

7. Decision

The Panel decides that:

1) the disputed domain name is identical to the trademark "REWE" in which the Complainant has rights;

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, Network Solutions, Inc., transfer the domain name <rewe.com> to the Complainant.

 


Kamen Troller
Sole Panelist

Dated: July 3, 2001


Footnotes:

1. See: Gateway, Inc. v. James Cadieux (D2000-0198); The Journal Newspapers, Inc. v. DomainForSale 980dollars (FA95395) and Konkinklijke Philips Electronics NV v. Ramazan Goktas (D2000-1638).