WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp.
Case No. D2001-0936
1. The Parties
The Complainant is Köstritzer Schwarzbierbrauerei, of Heinrich Schütz-Strasse 16, 07586 Bad Köstritz/Thüringen, Germany, represented by Dr. Detmar Schäfer of Boehmert & Boehmert of Bremen, Germany.
The Respondent is Macros-Telekom Corp., of room 340, 24 Lenin Street, Omsk, Siberia 644024, Russia.
2. The Domain Names and Registrar
The disputed domain name is <koestritzer.com>.
The Registrar is Tucows, Inc., of Toronto, Ontario, Canada.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on July 20, 2001, and in hard copy on July 15, 2001. It was acknowledged on July 23, 2001, and on July 27, 2001, registration details were sought from the Registrar. On July 31, 2001, the Registrar stated that it had received a copy of the Complaint from the Complainant; that the disputed domain name is registered with it but that the registrant was Mr. Robert Anweiler. The Registrar also stated that the Policy applies to the disputed domain name as per section 7 of the Registration Agreement and that:
"The domain name is currently on hold within our system. This is to ensure that no changes occur to the ownership or Registrar for the duration of the dispute".
The Registrar informed the Center that the record had been last updated on July 27, 2001.
On August 2, 2001, the Center notified the Complainant of what appeared to be a deficiency in the Complaint in that it nominated a respondent other than the then current registrant. On August 7, 2001, the Complainant filed an amendment to the Complaint which substituted Mr. Anweiler for Macros-Telekom Corp. as Respondent and sought suspension of the proceedings until September 7, 2001, so that it might investigate the position of Mr. Anweiler. On August 8, 2001, the Center notified the parties of the suspension of the proceedings until September 7, 2001.
On August 15, 2001, the Complainantís attorneys noted that the Complaint was filed and a copy was provided to the Registrar before the transfer to Mr. Anweiler. It submitted that the Registrar was obliged to maintain the status quo (Policy paragraph 7).
The Center formally notified Mr. Anweiler of the commencement of this administrative proceeding and on November 5, 2001, notified the parties of the appointment of Alan L. Limbury as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On November 5, 2001, the Center transmitted the case file to the Panel and notified the Complainant and Mr. Anweiler of the projected decision date of November 19, 2001.
The Panel accepted the Complainantís submission that the transfer to Mr. Anweiler should be cancelled, for the reasons given in British Broadcasting Corporation v. Data Art Corporation / Stoneybrook (WIPO Case No. D2000-0683):
"To interpret section 8(a) of the Policy in such a way as to permit transfers of registration after notice of the complaint to the respondent but before official commencement of the proceedings by way of notification from the provider would not do justice to complainants who have initiated complaints in accordance with the Policy and the Rules. Moreover such an interpretation would appear to permit, if not encourage the phenomenon cyberflying, where a registrant of a domain name, when named as the respondent in a domain name dispute case, systematically transfers the domain name to a different registrant to disrupt the proceeding".
Since the Panel has no power to cancel the registration, notwithstanding the purported exercise of such power in Infospace, Inc. v. Siavash Jimmy Behain, et al (WIPO Case No. D2000-1631), the Panel asked the Center to request the Registrar to cancel the transfer to Mr. Anweiler and to invite the Complainant to withdraw its amendment to the Complaint. The panel also extended the projected decision date to allow time for these steps and for Makros-Telekom Corp. formally to receive and to respond to the Complaint.
Meantime, Mr. Anweiler had himself transferred the registration to another person.
On November 20, 2001, the Registrar acceded to the Centerís request and cancelled both transfers, thereby restoring Makros-Telekom Corp. as registrant. On November 23, 2001, the Complainant withdrew its amendment, thereby restoring Makros-Telekom Corp. as the Respondent.
Accordingly the Center on November 26, 2001, formally dispatched copies of the Complaint by post/courier (with enclosures) to the Respondent, Makros-Telekom Corp., at its address as recorded with the Registrar and by email (without attachments). The Center included with that material a letter to the Respondent dated November 26, 2001, containing notification of the commencement of this administrative proceeding, with copies (of the Complaint without attachments) to the Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was December 16, 2001. No Response was filed and on December 17, 2001, the Center notified the parties of the Respondentís default.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; no Response was filed within the time specified in the Rules and the Panel was properly constituted.
The language of the proceedings was English.
4. Factual Background
The Complainant is one of the oldest breweries in Germany, with more than 450 years of tradition. Even in the days of the former Eastern Germany, Complainant exported Köstritzer beer throughout the world. KÖSTRITZER is a highly reputed trademark, extensively used by the Complainant. The mark has also been registered in numerous countries since 1993.
The record of the disputed domain name, registered by Respondent, was created on September 23, 2000.
5. Partiesí Contentions
Complainant requests the Panel to direct that <koestritzer.com> be transferred to the Complainant upon the following legal grounds:
Identity or confusing similarity
The disputed domain name is identical with the Complainants marks in the sense of paragraph 4(a)(i) of the Policy.
If we neglect the top level ".com" (<Microsoft.org>, WIPO Case No. D2000-0053), the disputed domain name exactly matches the alphanumeric characters of the KÖSTRITZER trademarks. The letter "ö" (so called "Umlaut") in the German language is equivalent to "oe". Accordingly all "Umlaute" (ä,ö,ü) which are not within the ASCII standard code are used for online purposes as "oe" ("ö"), "ae" ("ä"), "ue" (ü). This is common practice as demonstrated by e-mail addresses like mailto:email@example.com or the domain name used by the German town of München (Munich) being (muenchen.de).
The Respondent is not identified by the name Koestritzer. He does not operate any business known as Koestritzer nor offer goods or services under the KOESTRITZER trademark. Furthermore he has not acquired trademark or service mark rights for Koestritzer. The Respondent is not making any legitimate noncommercial or fair use of the domain name.
On the website connected with <koestritzer.com> the disputed domain name is offered to the broad public for sale or for temporary use. The following is stated:
This domain name is for sale
Are you interested in this name?
Don't think that it's too expensive! Quote your best price,
it is quite possible for us to come to an agreement.
We offer you to get www.KOESTRITZER.com either into full ownership or for temporary use.
We can also redirect the traffic from this site to your web-site.
If you want to see the rest of our domain names for sale click here."
Respondent has registered the disputed domain name for the purpose of selling and renting the domain name registrations to the Complainant or to a competitor of the Complainant for a considerable value in excess of the Respondentís documented out-of-pocket costs directly related to the domain name (paragraph 4 (b)(i) Policy). He has put the domain name on sale. It is the clear practice of all Panels, to consider bad faith in cases in which a coined term is offered for sale to the broad public on web pages or via reseller and internet auctions (<easyjet.net>, WIPO Case No. D2000-0024; <emi1897.com>, WIPO Case No. D2000-0712; <sizesunlimited.com>, WIPO Case No. D2000-0013; <eresolution.com>, WIPO Case No. D2000-0110; <louisvuiton.com>, WIPO Case No. D2000-1115). <koestritzer.com> is a unique domain name with a quite unusual combination of consonants (...stritz...), which is difficult to spell and to pronounce. Moreover KÖSTRITZER not only is coined but a well known trademark for beer specialities, namely for Schwarzbier. So it is obvious that Respondent has registered this specific domain name to sell it for a considerable amount of money.
A further indication of Respondents bad faith is that he has registered a vast number of several hundred domain names, which are not only generic terms but also distinctive designations, like ayno.com, pexs.com, sicco.com etc. The respective page of all offered domain names is accessible by a hyperlink which is also placed on the <koestritzer.com> site. A person who registers a multitude of designations which are protected for third parties acts in bad faith (<klm.org>, WIPO Case No. D2000-0963). Internet is for communication, not for speculation. Internet flourished with solidarity, not with parasitism. Domain names are technical resources necessary for Internet functioning, assigned to the users on the basis of clear rules and by means of contractual relationship (<jornalnacional.com>, WIPO Case No. D2000-0245).
The Respondent has registered the disputed domain name in order to prevent the Complainant from using its mark as domain name unless the Complainant purchases or rents the domain name from the Respondent. The Respondent is diverting consumers away from the official site of the Complainant and making it difficult for the Complainant's customers and the general public to locate the Complainant's official web site.
Finally the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Web site or other on-line locations (paragraph 4 (b)(iv) Policy) by directly linking users to his "List of domain names". By using the disputed domain name to link Internet users with his domain name offers the Respondent has created a likelihood of confusion with the Complainantís KÖSTRITZER trademark as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site, products and services.
B. The Respondent
No Response was filed.
6. Discussion and Findings
Failure to file a Response
Numerous cases under the Policy have adopted and applied the principle that a respondentís failure to dispute the allegations of the complainant permits the inferences that the complainantís allegations are true and that the respondent knows its website is misleading. See, for example, Hewlett-Packard Company v. Full System (Case FA 0094637); David G. Cook v. This Domain is For Sale (Case FA0094957) and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge (Case FA0094925).
A somewhat broader statement of principle is contained in Reuters Limited v. Global Net 2000, Inc. (Case D2000-0441):
"The Panel draws two inferences where the Respondent has failed to submit a response: (a)"the Respondent does not deny the facts which the Complainant asserts" and (b) "the Respondent does not deny the conclusions which the Complainant asserts can be drawn from those facts"."
Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed 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 disputed domain name has been registered and is being used in bad faith.
Identity or confusing similarity
Essential or virtual identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802); Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102) and Blue Sky Software Corp. v. Digital Sierra Inc. (WIPO Case No. D2000-0165).
The Panel finds the disputed domain name is identical to Complainantís trademark KÖSTRITZER.
The Complainant has established this element.
Complainant has not authorized Respondent to use its well-known trademark nor to register the disputed domain name. Respondent is not known by the disputed domain name. Complainant asserts Respondent does not operate any business known as Koestritzer; does not offer goods or services under the KOESTRITZER trademark; has not acquired trademark or service mark rights for Koestritzer and is not making any legitimate noncommercial or fair use of the domain name.
These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The evidentiary burden, therefore, shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited.
In the absence of a Response, the Panel finds the Complainant has established this element. The Respondent has no rights or legitimate interest in the disputed domain name.
Bad faith registration and use
The only use to which the disputed domain name has been put, according to the material before the Panel, is to connect it to a website where the disputed domain name is offered for sale. In the absence of a Response, the Panel infers that sale to the Complainant at a profit was the primary purpose for which the disputed domain name was registered. Under paragraph 4(b)(i) of the Policy, this is evidence of both bad faith registration and bad faith use.
Further, the transfer to Mr. Anweiler after having received a copy of the Complaint is itself evidence of bad faith on the part of the Respondent: A.H. Belo Corporation v. King TV and 5 kings, (WIPO Case No. D2000-1336).
The Panel finds that the Respondent has acted in bad faith both in registration and use of the disputed domain name.
The Complainant has established this element.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <koestritzer.com> be transferred to the Complainant.
Alan L. Limbury
Dated: December 18, 2001