WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nürmont GmbH v. PCC Heilbronn GbR Eberhard Düttra

Case No. D2001-0954

 

1. The Parties

The Complainant is Nürmont GmbH, represented by its Managing Director, Manfred Kreuzer, Am Keuper 14, D-90475 Nuremberg, Germany.

The Representatives are Rödl & Partner GbR, Äußere Sulzbacher Straße 100, D-90491 Nuremberg, Germany.

The Respondent is PCC Heilbronn GbR, Postfach 2821, D-74018 Heilbronn or Beethovenstr. 55, D-74074 Heilbronn, Germany.

 

2. The Domain Name and Registrar

The Domain Name is <nuermont.com>.

The Registrar is Network Solutions, Inc.

 

3. Procedural history

The Complaint was received by WIPO in hardcopy on July 25, 2001, and by e-mail on July 30, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph 2 (a). The Registrar has confirmed that the Domain Name was registered through Network Solutions, Inc., and that the Respondent is the current Registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name as the registration agreement in its version 5.0 is in force between the Respondent and the Registrar.

On July 31, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent, inter alia, that the last day for sending its response to WIPO was August 20, 2001. Although the transmission of some of the e-mail addresses indicated in the Complaint failed, transmission to the e-mail addresses of the Respondent oesterle@neckar.net , pcc@heilbronn-franken.de appear to have worked, as there is no transmission deficiency notice on the file. However, transmission of the Complaint to the given mail address of the Respondent and to the fax number of the Respondent failed as well, as Ė in the case of mail delivery Ė delivery at the attempted premises failed as they were closed or the recipient was not home. There is an error report as to the fax transmission on file. However, the Panel is satisfied that the Respondent had the opportunity to respond to the Complaint, as transmission to the e-mail addresses indicated above took place. However, no response was received.

On August 21, 2001, WIPO issued a Notification of Respondent Default.

Thereafter the Panel was properly constituted. The undersigned Panellist submitted a Statement of Acceptance and a Declaration of Impartiality and Independence.

No further submissions having been received by WIPO, the date scheduled for the issuance of the Panel decision was September 11, 2001.

 

4. Factual Background

The Complainant is a company active in the area of installation of new machinery and systems as well as in the production relocation business. Its annual turnover in the year 2000, was DM 76.4 million. The Complainant is listed in the commercial register of the local court of Nuremberg since May 13, 1985, originally under the name Nürmont-Montage GmbH, which name was later changed to Nürmont GmbH on July 24, 1990. Since November 28, 2000, its full name appears to be Nürmont GmbH Maschinen- und Anlagenbau. The Complainant is also owner of the registered German trade mark "Nürmont" with a priority of February 24, 2000, under the registration number 3014201.

The Respondent is the internet service provider and web host of the Complainant. In July 1998, the Complainant approached the company Neckarnet International Ltd. and the Respondent to develop and host a website. Consequently, the Respondent registered according to the excerpt of the Whois data base of the Registrar on July 3, 1998, the Domain Name. However the Respondent registered the Domain Name in its own name. On July 27, 1998, the parties entered into a contract, by which the Respondent was obliged to offer internet web space for the web site of the Complainant. Thereafter, the Complainant started to use the Domain Name for its regular company web site. The Domain Name still resolves into the web site of the Complainant. The Complainant requested at various times, both orally and in writing, to have the Domain Name transferred to it and to have the ownership details of the Domain Name changed in the Whois data base. The Respondent did not react to that. Since July 2000, the Complainant has faced difficulties with the accessibility of its web site and therefor considered to change its internet service provider. However, the Respondent did not comply with the Complainantís wish to have the Domain Name transferred to it, to the present day. As long as the Respondent does not comply with the Complainantís wish to change the ownership, the Domain Name is in the hands, and now the control of the Respondent, and the Complainant can do nothing about transferring its web site to a different web host using the Domain Name.

The Respondent has not reacted to the various transfer requests of the Complainant by email of November 6, 2000, November 8, 2000, November 29, 2000, April 10, 2001 and April 20, 2001.

 

5. Partiesí contentions

A. Complainant

The Complainant contents that the Complaint should succeed for the following reasons:

- the Domain Name is identical to the Complainantís company name and registered trade mark, "Nürmont", under which it has traded since 1985;

- the Respondent has not rights or legitimate interests in the respect of the Domain Name. It is the Complainantís name. The Respondent has never materially contested the Complainantís legitimate right to own the Domain Name but merely refused the transfer requests; and,

- the Domain Name was registered and is being used in bad faith. The Respondent had wrongfully registered the Domain Name in its own name irrespective of the Complainantís right to be the registered owner of the Domain Name. The Respondent withholds the transfer only to prevent the Complainant from effectively changing its internet service provider.

B. Respondent

The Respondent has not responded at all. The Panel has to make the decision without the benefit of the Respondentís comments, and in doing so has to assume that the contentions of the Complainant are true.

 

6. Discussion and Findings

In general

According to paragraph 4 (a) of the Policy, the Complainant must prove that

(i) the Domain Name is identical or confusingly similar to a trade mark 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.

Identity or confusing similarity

Nürmont is the distinctive part of the company name of the Complainant. Its priority dates back to 1985. It has actively been dealing under that name since that time. Under German trade mark law, as well as the trade mark law of many other countries, the use of a company name confers to its owner similar rights as those resulting from a registered trade mark. Thus, the Complainant has trade mark rights in its own name. The Panel is satisfied that there is confusing similarity between the Domain Name and the Complainantís company name. The Panel agrees with the Complainant that the only small difference (ue instead of ü) is immaterial as it is due to the non existence of the German Umlaut in the English language. The letter "ü" is technically not registerable in the context of a Domain Name and thus always transcribed as "ue". Therefore, the Panel holds that the Domain Name is identical to a trade mark in which the Complainant has rights.

Rights or legitimate interests of the respondent

The Domain Name bears no relation at all to any apparent name rights the Respondent may have. Neither has the Respondent ever claimed to have any rights or legitimate interest in the Domain Name. Even though the Complainant asked the Respondent expressly to register the Domain Name, it did not ask the Respondent to register the Domain Name on behalf of the Respondent.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name.

Bad faith

It had to be looked at in more detail, whether the Domain Name has been registered and is being used in bad faith. In particular, it is not apparent that any of the circumstances on how to demonstrate evidence of registration in bad faith under paragraph 4 (b) of the Policy is applicable, namely circumstances indicating that the Respondent has registered the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name registration to the Complainant, that the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, or that the Respondent has registered the Domain Name primarily for the purpose of disrupting business of a competitor or that by using the Domain Name the Respondent has intentionally attempted to attract, for commercial gain, internet users to his own web site or other online locations. The Domain Name registered in the name of the Respondent at all times resolved to the web site of the Complainant, from its registration onwards. However, the circumstances described under paragraph 4 (b) of the Policy do not limit the Panel to find evidence for registration in bad faith in other circumstances.

In this case, the Complainant asked the Respondent to be its internet service provider and to host a web site for him, and, as a prerequisite for this, to register the Domain Name for the Complainant. It is technically not possible for most companies to register domain names themselves, internet service providers have a technical quasi monopoly for that. Therefore, companies have to ask internet service providers to be their agents when registering a domain name comprising their company name. They are, as a rule, mere representatives of the company, on behalf of which they register a domain name. Therefore it generally goes without saying in such cases, that the internet service provider registers the Domain Name in the name of the company instructing it to do so. The name of the internet service provider who effectively registered the Domain Name and hosts it generally appears only when it comes to naming the technical and zone contact of a domain. Thus, even if the Complainant did not give to the Respondent any explicit instructions as to which name to put in the place of the Domain Name owner for the purposes of the Whois data base, the order to register the Domain Name for it implied that the Domain Name was to be registered in the name of the Complainant. Naturally the Complainant assumed that Domain Name as well as web site were to be under its control. All of this must have been obvious to the Respondent as this was its daily business and concurred with the regular course of affairs in this area. In deliberately acting against these implicit instructions, the Respondent acted like an untrue agent who registers a trade mark of its principal, which by the standards of the German trade mark law and the trade mark law of other countries constitutes a bad faith trade mark application, which may be subject to cancellation.

It is obvious that the Respondent registered the Domain Name in its own name for exactly the purpose for which it is now using it, i.e. in order to prevent the Complainant from changing his internet service provider.

In the absence of any Response contesting the Complainantís version of events, the Panel finds that these circumstances constitute the registration of a Domain Name in bad faith. In finding this a bad faith registration of the Domain Name, the Panel follows the ruling of the learned Panel in WIPO Case No. D2001-0647, Roy Harper v. The Reprahduce Company.

Even though the Domain Name held by the Respondent still resolves to the Complainantís web site, the Respondentís refusal to transfer the web site to the Complainant constitutes a bad faith use of the Domain Name. The Complainant intends to change its internet service provider for hosting the web site because it is dissatisfied with the services of the Respondent. However, transferring a web site to a different service provider using the same Domain Name as used before, is contingent upon the co-operation of the owner of the Domain Name as entered into the Whois-data base of the Registrar. In this respect the Respondent as registered owner is able to prevent such transfer. The rectification of details in the Whois-data base, like technical and zone contact, is contingent upon consent or respective action of the registered Domain Name holder vis-à-vis the Domain Name Registrar. The apparent reason for non-cooperation of the Respondent is to prevent the Complainant from effectively changing its internet service provider and thus losing business, which is not a justified reason for preventing the Complainantís justified wish to have the Domain Name registered under its own name and under its control. Thus, the refusal to co-operate regarding the Domain Name transfer constitutes a bad faith use of the Domain Name.

As a result of the foregoing, the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith.

 

7. Decision

In light of the foregoing findings, namely that the Domain Name is identical to a trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interest in the respect of the Domain Name and that the Domain Name was registered in bad faith and is being used in bad faith, the request of the Complainant is justified.

Pursuant to paragraph 4 (i) of the Policy and paragraph 15 of the Rules, the Panel directs that the Domain Name <nuermont.com> be transferred to the Complainant.

 


 

Dr. Andrea Jaeger-Lenz
Sole Panelist

Dated: September 11, 2001