WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ahead Software AG v. its friday B.V.
Case No. D2001-0883
1. The Parties
The complainant in this administrative proceeding is Ahead Software AG ("Complainant"), Richard Lesser, President & CEO, Im Stoeckmaedle 18, D-76307 Karlsbad, Germany, represented by Lynn M. Broderick, Esq., Weinberg Cummerford Legal Group, 2390 East Camelback Road, Suite 250, Phoenix, Arizona 85016, USA.
The respondent is a company named its friday B.V. ("Respondent"), Hendrik Meenderman, Meerkoet 103, Diemen 1111 vz, The Netherlands.
2. The Domain Name and Registrar
The domain name in dispute is <neromix.com> ("Domain Name"), registered with Melbourne IT, Ltd. ("Registrar"), Level 2, 120 King Street, Melbourne, VIC 3000, Australia.
3. Procedural History
A complaint ("Complaint") was submitted to the WIPO Arbitration and Mediation Center on July 12, 2001.
As the Complaint was not submitted in electronic format as required by the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), Complainant received a Complaint Deficiency Notification by the WIPO Case Manager on July 26, 2001. After Complainant cured the deficiency on July 27, 2001, the Complaint satisfied the formal requirements of the Rules; the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") and the Uniform Domain Name Dispute Resolution Policy ("the Policy"). Complainant transmitted a complete copy of the Complaint by DHL Express to all contacts listed in Registrar's WHOIS database.
On July 31, 2001, the Formal Requirements Compliance Checklist was completed and the Notification of Complaint and Commencement of Administrative Proceeding (the Commencement Notification) was transmitted to Respondent, including the Complaint without attachments, setting a deadline as of August 20, 2001, by which Respondent could file a response to the Complaint. The Commencement Notification was also forwarded to Complainant.
On August 20, 2001, the WIPO Center received a response ("Response") from Respondent by e-mail. The Respondent confirmed to have sent to the WIPO Center a hard copy of the Response including four copies. Acknowledgement of the receipt of Response took place on August 21, 2001.
On August 28, 2001, the WIPO Center invited the undersigned Panelist to serve on a single-member Panel in this case.
On September 3, 2001, the undersigned Panelist sent his Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Center by telefax.
On September 4, 2001, the parties had been notified of the panel appointment and the projected decision date of September 18, 2001.
The case file was received by the undersigned Panelist on September 6, 2001.
On request of the Panelist on September 19, 2001, the projected decision date was reset to October 1, 2001.
4. Factual Background
The following facts and statements appear from the Complaint and its annexed documents, which have not been contested by Respondent:
- Complainant is a company organized and existing under the laws of Germany and owns a registered trademark NERO in Europe and in the United States [Complaint, Annex C], under which it develops and sells compact discs (CD) recording software;
- Complainant promotes a (CD) creation software product bearing the non-registered tradename NEROMIX. NEROMIX allows a computer user to record and copy compact discs. According to a letter of Complainant dated November 10, 2000, and titled as "News Release", NEROMIX was to be introduced at Comdex, a computer exposition show in Las Vegas on November 13 to 17, 2000 [Complaint, Annex D]; as a further evidence for Complainant's use of the name NEROMIX, two excerpts of brochures have been submitted to the WIPO Center [Complaint, Annex D];
- the disputed Domain Name <neromix.com> was registered by Respondent on November 26, 2000 [Complaint, Annex F];
- on May 9, 2001, Respondent received correspondence from Complainant indicating its interest in the Domain Name. Respondent was requested to immediately assign to Ahead Software AG the Domain Name [Complaint, Annex I].
The following fact appears from the Response and its annexed documents:
- On July 11, 2001, Complainant applied for the trademark NEROMIX in Europe [Response, Annex 5].
5. Parties’ Contentions
A. Complainant's contentions
- Complainant's new software product bearing the 'trademark' NEROMIX was introduced in November 2000. After the introduction, over twenty thousand brochures and press releases about NEROMIX were distributed and its new product was also promoted on the website www.nero.com;
- Respondent's website is under construction, which means, that the Domain Name has never been and currently is still not being used in connection with a bona fide sale of goods or services. A failure to use the domain name in any manner demonstrates bad faith (with reference to the WIPO decisions D2000-0336 and D2000-0003);
- Respondent may have obtained a press release announcing Complainant's new NEROMIX CD creation software. Moreover, Respondent had been a customer of Complainant from 1997 until 1999. Complainant claims, that it terminated this business relationship due to an invoice Respondent failed to pay and therefore still owes Complainant a balance of USD 2'320. --. Obviously, Respondent was aware - both of the Complainants product NEROMIX and of the existence of Ahead Software AG - when it registered the disputed Domain Name, which is an other indication of Respondent's bad faith. In addition, Complainant claims that Respondent's Registration of the Domain Name has to be interpreted as a retaliatory action resulting from the above mentioned payment dispute;
- Domain Name <neromix.com> is identical and confusingly similar to Complainant's mark NEROMIX;
- Respondent has no legitimate interests in the name NEROMIX. Respondent has no priority rights in the name either and is not affiliated with Complainant or otherwise authorized to use Complainant's mark;
- Respondent never answered the letter of Complainant dated May 9, 2001, in which it claimed its rights to the Domain Name. This failure to respond Complainant's effort to make contact provides strong support for a determination of bad faith registration and use (with reference to the WIPO Case D2000-0330);
B. Respondent's contentions
- Complainant has not registered NEROMIX as a domain name until today. As a trade mark, NEROMIX has only been applied for by Complainant on July 11, 2001 - and even for class 9 only, which contains electrical and scientific apparatus. In addition, if Complainant's interest in the trademark and domain name(s) NEROMIX had been of utmost importance, it would have been first priority to register trademark and domain name(s) before introduction of its NEROMIX products. Furthermore, Complainant's website www.nero.com does not contain any information about its software NEROMIX;
- as far as Complainant's registered trademark NERO is concerned, it is a very common name and not only used by Complainant. Respondent verified that it is registered as a United States Trademark at least four times [Response, Annex 2]. In addition, there is no confusing similarity between NERO and NEROMIX;
- Respondent was not aware of the introduction of Complainant's NEROMIX software products. It did not attend the mentioned Comdex Computer Exposition and did not receive or view any press releases containing information about Ahead Software AG or their software products. There was no prior knowledge of Complainant's use of the name NEROMIX;
- Respondent is a company involved in the clothing and textiles industry. The Domain Name was legitimately obtained for non-commercial and fair use without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark (with reference to Paragraph 4(c)(iii) of the Policy). Respondent has been and is currently working on a non-commercial project to use the domain name <neromix.com>. There's no bad faith present;
- a former business relationship or knowledge of Complainant did not exist before receipt of the letter dated May 9, 2001;
- the said letter of May 9, 2001, had not been responded because there was no misinterpretation or bad faith use of the Domain Name.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
"(i) that the domain name registered by the Respondent is identical of confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no right or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith."
Identical or confusingly similar Domain Name: Policy 4(a)(i)
In this case, the Panel needs to inquire whether Complainant has established rights to the trademark NEROMIX. Complainant applied for but presently still lacks an official trademark registration for this mark. Without a registration, there is no presumption of validity to Complainant's claim of exclusive rights in the mark. Nevertheless, Complainant may have established common law rights to NEROMIX recognized by US-law. As to the requirements for a common law trademark other WIPO decisions maintain that a long, extensive and continuous use of the name and certain publicity through extensive international advertisement has to be demonstrated (WIPO Case D2000-1234).
Complainant introduced NEROMIX as a product on November 13 to 17, 2000, during the Comdex Computer Show in Las Vegas. The use of the term NEROMIX has been evidenced by Complainant through excerpts of two brochures submitted to the WIPO Center. Complainant's homepage www.nero.com shows a link to its NEROMIX product, but only in its German version. The extent of Complainant's use of the name NEROMIX is not clear.
Of main importance is the fact, that Respondent registered the Domain Name only some eleven days after Complainant had introduced his new CD-Creation NEROMIX. Under these circumstances it can be excluded that the prerequisites for establishing a common law trademark NEROMIX in the USA had been present already after this short period of time.
Despite NEROMIX itself is not a registered or common law trademark, the domain name <neromix.com> might be confusing similar to Complainant's registered trademark NERO. A confusing similarity between the Domain Name and the trademark can be caused by several factors such as the following:
Nevertheless, in the present case, there is no similarity between NEROMIX and NERO in their sound;
Due to the different numbers of syllables, NEROMIX is also clearly distinctive from NERO in its appearance and rhythm.
In conclusion, there is no confusing similarity between NERO and NEROMIX either.
Domain Name Registered and Used in Bad Faith: Policy 4(a)(iii)
In addition to the fact that there is no identity or confusing similarity between the Domain Name and a Complainant's trademark, Complainant has not submitted sufficient evidence to prove Respondent's bad faith:
Respondent's knowledge of Complainant using the name NEROMIX at the time of registration would be an element for bad faith. Complainant contends that there has been a business relationship between the parties from 1997 until 1999. The only piece of evidence for the Respondent's knowledge of Ahead Software AG consists in a copy of an invoice [Complaint; Annex H]. However, this invoice is addressed to 'Dazy Direct B.V., Schiphol Boulevard 243, NL-118 BH Schiphol Airport, The Netherlands'. Obviously, the destination of the invoice does not correspond with Respondent's address.
For the Complainant's allegations that Respondent may have obtained a press release announcing Complainant's new NEROMIX CD creation, no evidence has been submitted to the WIPO Center.
Further elements of a bad faith registration such as for example registration of the domain name:
- primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of its documented out-of-pocket costs (Paragraph 4(b)(i) of the Policy); or
- for disrupting Complainant's business (Paragraph 4(b)(iii) of the Policy); or
- in order to attract internet users to its website by creating a likelihood of confusion with Complainant's mark (Paragraph 4(b)(iv))
are not present in this case.
Respondent's Rights or Legitimate Interests in the Domain Name: Policy 4(a)(ii)
In view of the fact, that Paragraph 4(a)(i) and (iii) of the Policy have not been proven by Complainant, the question if the Respondent has any rights or legitimate interest in respect of the domain name <neromix.com> does not need to be dealt with.
For the reasons mentioned above, the Panel decides that Complainant has failed to establish rights in the trademark NEROMIX for the purposes of satisfying Paragraph 4(a)(i) of the Policy. The Panel therefore denies the Complainant's request that the domain name <neromix.com> shall be transferred from Respondent to Complainant.
Bernhard F. Meyer-Hauser
Dated: October 1, 2001