WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Quelle Aktiengesellschaft v. Amit Mendelsohn

Case No. D2001-1036

 

1. The Parties

The Complainant is Quelle Aktiengesellschaft, Nürnberger Str. 91 - 95, 90762 Fürth, Germany. The Complainant is represented by Mrs. H. Lindner of Matschkur Lindner Blaumeier, Dr.-Kurt-Schumacherstr. 23, 90402, Nürnberg, Germany.

The Respondent is Amit Mendelsohn, 41 Hebron, Jerusalem, Rd. 93546, Israel.

 

2. The Domain Name and Registrar

The domain name in dispute is <quelle.net>. The Registrar is Core Internet Council of Registrars, Internet Council of Registrars, World Trade Center II, 29, Route de Pre-Bois, CH-1215 Geneva, Switzerland.

 

3. Procedural History

The Complaint submitted by Quelle Aktiengesellschaft, was received by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO") on August 16, 2001, (electronic version) and August 24, 2001, (hard copy).

The Complainant forwarded the Complaint to the Respondent (electronic version) on August 16, 2001. On receipt of the electronic version of the Complaint the Respondent e-mailed counsel for the Complainant advising that the Complaint could not be opened. Counsel for the Complainant forwarded the e-mail from the Respondent to WIPO. On August 17, 2001, the Respondent e-mailed counsel for the Respondent advising that the Respondent did not have a Complaint which the Respondent could read. Counsel for the Complainant forwarded the e-mail from the Respondent to WIPO. Later in the day on August 17 the Respondent e-mailed counsel for the Complainant advising that the Respondent had opened the Complaint file. The Respondent stated that the Respondent owns the domain name in dispute and 4 other domain names. The Respondent submitted that the Complainant did not bother to register the domain name <quelle.net> and when the Respondent registered the domain name for his own project the Complainant commenced a UDRP proceeding. The Respondent stated that he never traded in domain names and has no intention of doing so now. Respondent further stated that <quelle.net> was registered for a specific project and has nothing to do with the Complainantís activities and/or customers as Respondentís companies are digital video experts and solutions providers. Respondent advised that the domain name <quelle.net> will not be activated until the development of the project is completed. Lastly the Respondent stated that the domain name suits Respondentís project perfectly and the domain name has a meaning in French such that the domain name cannot be a world wide trademark. Counsel for the Complainant forwarded the Respondentís e-mail to WIPO. On August 20, 2001, the Respondent forwarded an e-mail to WIPO stating that there is no dispute with respect to the domain name which the Respondent registered for one of his video projects.

On August 20, 2001, WIPO acknowledged receipt of the Complaint and assigned the Case Number D2001-1036. Also on August 20, 2001, a request for Registrar verification was transmitted by WIPO to the Registrar, Core Internet Council of Registrars.

On August 27, 2001, the Registrar Core Internet Council of Registrars e-mailed the Respondent advising that the Registrar (Joker/CSL/CORE) had received an announcement that a complaint has been filed at WIPO and as a result the Registrar will "freeze" the status of the domain name. The Respondent e-mailed the Registrar within an hour advising that if the domain name registration was frozen the Respondent will file a law suit. Referring to the four earlier e-mails to the solicitors for the Complainant or WIPO the Respondent advised that he had answered the Complaint four times already. The Respondent repeated the arguments which have been reviewed above in describing the content of Respondentís second letter of August 17, 2001 to WIPO.

Having verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), WIPO on August 28, 2001, transmitted by post-courier and by email a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN. The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.

In reply to WIPOís Notification of Complaint and Commencement of Administrative Proceeding the Respondent e-mailed WIPO on August 28, 2001 stating:

(1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights: This domain name was registered for a special project only and (Respondent) has no intention to sell anything.

(2) The Respondent has no rights or legitimate interests in respect of the domain name: Respondent queries: Who said so? What makes you think our project has no relation to the word Quelle? Nothing about this project was released to the public so how come you decide so?.

(3) The domain name was registered and is being used in bad faith. In response to this heading the Respondent stated: No way, our company is an owner of 4 other websites, we never traded in domain names and have no intention to start doing so. The Respondent again submitted that the Complainant could have registered the domain name <quelle.net> a long time ago for $35.

On the same afternoon of August 28, 2001, the Case Manager e-mailed the Respondent stating: "In case you would like to respond in the proper manner, we recommend you to read the notification sent to you earlier today closely and look at the following webpage http://www.wipo.int/amc/en/domains/respondent/index.html. If not, your e-mail (August 28, 2001) with its deficiencies will be regarded as your response."

On August 30, 2001, the Respondent forwarded yet another e-mail to WIPO stating: I am not going to respond anymore and certainly not directly to Quelle (the Complainant). The Respondent then repeated the submissions stated in its earlier e-mails of August 17 and August 28, 2001.

By email dated August 30, 2001, the Registrar advised WIPO as follows:

- It had received a copy of the Complaint from the Complainant.

- It is the Registrar of the domain name registration <quelle.net>.

- The Respondent is shown as the "current registrant" of the domain name.

- The current status of the domain name in dispute is "production".

The Complainant elected to have its Complaint resolved by a single Panelist; it has duly paid the amount required of it to WIPO.

On September 9, 2001, the Complainant filed a Supplemental Filing consisting of statements in response to the Respondentís e-mails of August 16 to 30, 2001. The Complainant attached a copy of Israeli Trademark Registration No. 136 783 (also found in Annex Q-e to the original Complaint) for the mark QUELLE registered in international class 09 in relation to computers and videos and other hardware and software.

No response was received by WIPO from the Respondent within the prescribed time for Response. A Notice of Respondent Default was issued on September 19, 2001. WIPO invited Mr. Ross Carson to be the Panelist in the case. It transmitted to Mr. Carson a statement of acceptance and requested a declaration of impartiality and independence. Mr. Carson forwarded to WIPO an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant and its associated companies own numerous trademark registrations which include the word "Quelle". A list of approximately 500 worldwide trademark registrations including the word "Quelle" is attached as Annex C. Copies of the following trademark registrations with protection in all or nearly all classes are attached as Annexes D to G9:

- Reg.no. 746 555 Registration under Madrid Agreement with application date of 31 March 2000 registered in all classes - Annex D.

- Reg.no. 680 822 Registration under Madrid agreement with application date of December 6, 1996 registered in all classes except classes 35, 38, 41 - Annex E.

- Reg.no. R 274 306 Registration under Madrid agreement with application date of September 25, 1963 registered in all classes except classes 35 Ė 42 - Annex F.

- Reg.no. 136 781 national trademark in Israel in class 6 - Annex G1.

- Reg.no. 136 782 national trademark in Israel in class 7 - Annex G2.

- Reg.no. 136 783 national trademark in Israel in class 9 - Annex G3.

- Reg.no. 136 784 national trademark in Israel in class 14 - Annex G4.

- Reg.no. 136 785 national trademark in Israel in class 15 - Annex G5.

- Reg.no. 136 786 national trademark in Israel in class 16 - Annex G6.

- Reg.no. 136 787 national trademark in Israel in class 21 - Annex G7.

- Reg.no. 136 788 national trademark in Israel in class 25 - Annex G8.

- Applín no. 136 789 national trademark application in Israel in class 28-Annex G9.

The Complainant has made extensive use of the tradename Quelle since 1927 and of the trademark "Quelle" since at least as early as 1936.

 

5. Partiesí Contentions

A. Complainant

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Complainant submits that it is the largest mail-order house in Europe with thousands of Quelle-agencies in Germany and Europe and over 100 Quelle-department stores. Complainant submits that the Complainantís business is widely referred to as "Quelle". The Complainant owns numerous registered trademarks throughout the world which include the word "Quelle". The Complainant has provided lists of its trademarks and copies of several of its registrations.

Complainant is an international mail-order house selling and buying all manner of goods and offering all kinds of services to customers world-wide under the tradename and trademark QUELLE. Complainant advises that its main catalogue has a worldwide circulation twice a year of between 10 and 15 million copies. Complainant has attached as Annex H its main catalogue for autumn/winter 2001/2002. Complainant advises that it distributes several smaller catalogues for specialized products such as multimedia products, health goods, lighting apparatus, kitchens, furniture, each showing the tradename and trademark QUELLE.

Complainant submits that Quelle is a famous tradename and trademark for many countries worldwide. Complainant attached as Annex J a summary of an opinion poll conducted in Germany in 1991 where 91% of people polled, who were not customers of Complainant, were aware of the companyís name and trademark.

Complainant submits that Complainantís clients searching on the worldwide web will find the inactive site registered to the Respondent which leads to confusion and detracts from the Complainantís trademarks and goodwill.

The Complainant submits that its business development is being hindered because it is unable to utilise the "quelle.net" domain name and customers of the Complainantís business are misled by the Respondentís registration of the domain name.

(ii) The Respondent has no rights or legitimate interests in respect of the domain name.

Complainant submits that the Respondent has no right or legitimate interest with respect to the domain name "quelle.net" and that Respondent does not appear to be known as "Quelle".

(iii) The domain name has been registered and is being used in bad faith.

Complainant submits that the registration and continued holding of the domain names in dispute by the Respondent amounts to the Respondent acting in bad faith for the following basic reasons:

The domain name was registered subsequent to the registration of the Complainantís trademarks and tradename worldwide.

The Respondent does not appear to be using the domain name in connection with a bona fide offering of goods or services. The Respondent has shown no legitimate business interest in any product or service that uses the name "Quelle".

The Respondent can have no bona fide reason for its registration of the domain name; the assumption is that if the name is not being used for trading then it must have been registered with the intention of selling it at a later date.

Complainant submits that evidence of bad faith includes actual or constructive knowledge of commonly known marks at the time of registration. By registering the domain name, the Respondent represented that to its knowledge "the registration of the domain name will not infringe upon or otherwise violate the rights of any third party" (ICANN Policy 2(b)).

Complainant submits that the domain name was registered by the Respondent knowing that he was infringing the Complainantís superior rights and that the registration was likely to cause confusion.

Complainant has provided the history of how the domain name came to be registered in the name of the Respondent and the actions taken by Complainant to recover same, which can be summarized as follows:

- January 1998 - Complainant noticed that the domain name "quelle.com" was registered in the name of TeleConsult GmbH, a company which offers multimedia products and services and identical products and services as the Complainant.

- January 1998 Ė TeleConsult refused to transfer the domain to Complainant. TeleConsult instructed its provider Touchnet to transfer the domain to Allora International Inc. (See Annex K).

- January-February 1998 Ė Complainant applied for a provisional injunction against TeleConsult which was issued on 17 February 1998 (See Annex J). The domain name <quelle.com> was transferred to the Complainant.

- April 2001 Ė Complainant noticed that the domain name <quelle.net> was registered by TeleConsult. Complainant sent a warning letter on April 23, 2001. TeleConsult refused to transfer the domain name. (See Annex L and M).

- May 2001 Ė Complainant was preparing a court trial. Shortly before filing the complaint TeleConsult transferred the domain name to Amit Mendelsohn on May 29, 2001. (See Annex N).

- Complainant advises that the Technical and Administrative Contact is still Sebastian Herrmann who worked for TeleConsult and the domain server is still the same.

Complainantís Supplementary Filing

Complainant submitted a Supplementary Filing on September 7, 2001, in response to e-mails received from the Respondent. Complainant enclosed a copy of Complainantís Israeli Trademark Registration No. 136 783 for QUELLE which is registered in international class 09 in association with computers, videos and other hard- and software. Complainant submits in its Supplementary Filing that the domain name owner Mr. Mendelsohn operates websites at www.pcvidmag.com and www.Video2b.com offering video and computer equipment which is identical to the Complainantís goods. Complainant submits that Respondent presents the domain "Quelle.net" as his domain with a capital Q, which is the same format as that used by the Complainant in its trademark. Complainant submits that Respondent is violating Complainantís trademark rights in Israel and that Mr. Mendelsohn is not allowed to register a domain which is identical with a registered tradename. Complainant advises that in his e-mail of August 28, 2001, the Respondent agreed that the domain name is identical and confusingly similar. Respondent had stated that nobody at Quelle purchased the domain. Complainant submits that it tried to acquire the domain name a long time ago and also tried to acquire it from the former holder which is now the provider of the present holder of the domain name. Complainant submits that the submissions of the Respondent do not confirm his right to hold the domain name.

B. Respondent

No Response was submitted by the Respondent.

In an e-mail to WIPO dated August 28, 2001, the Respondent made the following submissions:

On August 17, 2001, the Respondent e-mailed counsel for the Complainant advising that the Respondent had opened the Complaint file. The Respondent stated that the Respondent owns the domain name in dispute and 4 other domain names. The Respondent submitted that the Complainant did not bother to register the domain name <quelle.net> and when the Respondent registered the domain name for his own project the Complainant commenced a UDRP proceeding. The Respondent stated that he never traded in domain names and has no intention of doing so now. Respondent further stated that <quelle.net> was registered for a specific project and has nothing to do with the Complainantís activities and/or customers as Respondentís companies are digital video experts and solutions providers. Respondent advised that the domain name <quelle.net> will not be activated until the development of the project is completed. The Respondent further submitted that the domain name was available for many years and the Complainant did not bother to register the domain name <quelle.net>. Lastly the Respondent stated that the domain name suits Respondentís project perfectly and the domain name has a meaning in French such that the domain name cannot be a world wide trademark. On August 20, 2001, the Respondent forwarded a further e-mail to the Complainant stating that there is no dispute with respect to the domain name which the Respondent registered for one of his video projects.

On August 27, 2001, the Registrar Core Internet Council of Registrars e-mailed the Respondent advising that the Registrar (Joker/CSL/CORE) had received an announcement that a complaint has been filed at WIPO and as a result the Registrar will "freeze" the status of the domain name. The Respondent e-mailed the Registrar within an hour advising that if the domain name registration was frozen the Respondent will file a law suit. Referring to the earlier e-mails to the solicitors for the Complainant and WIPO the Respondent advised that he had answered the Complaint four times already. The Respondent repeated the arguments which have been reviewed above in describing the content of Respondentís second letter of August 17, 2001, to WIPO.

In reply to WIPOís Notification of Complaint and Commencement of Administrative Proceeding the Respondent e-mailed WIPO on August 28, 2001, stating:

(1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights: This domain name was registered for a special project only and (Respondent) has no intention to sell anything.

(2) The Respondent has no rights or legitimate interests in respect of the domain name: Respondent queries: Who said so? What makes you think our project has no relation to the word Quelle? Nothing about this project was released to the public so how come you decide so?.

(3) The domain name was registered and is being used in bad faith. In response to this heading the Respondent stated: No way, our company is an owner of 4 other websites, we never traded in domain names and have no intention to start doing so. The Respondent again submitted that the Complainant could have registered the domain name <quelle.net> a long time ago for $35.

On the same afternoon of August 28, 2001, the Case Manager e-mailed the Respondent stating: "In case you would like to respond in the proper manner, we recommend you to read the notification sent to you earlier today closely and look at the following webpage http://www.wipo.int/amc/en/domains/respondent/index.html. If not, your e-mail (August 28, 2001) with its deficiencies will be regarded as your response."

On August 30, 2001, the Respondent forwarded another e-mail to WIPO: I am not going to respond anymore and certainly not directly to Quelle (the Complainant). The Respondent then repeated the submissions stated in its earlier e-mails of August 17 and August 28, 2001.

 

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements:

(i) That the Complainant has rights in a trademark or service mark with which the Respondentís Domain Name is identical or confusingly similar; and

(ii) That the Respondent has no rights or legitimate interests in the Domain Name; and

(iii) That the Domain Name has been registered and is being used in bad faith.

(i) Identical or confusingly similar

It is clear that the Complainant has substantial trademark rights in the mark QUELLE and trade name QUELLE AKTIENGESELLSCHAFT, and that the domain name in dispute is confusingly similar to the Complainantís marks. The domain name in dispute, <quelle.net> is comprised of the Complainantís trademark QUELLE followed by the word <.net> which identifies a generic top level domain name. The domain name in dispute <quelle.net> is confusingly similar to the Complainantís well-known trademarks QUELLE and trade name QUELLE AKTIENGESELLSCHAFT.

(ii) No legitimate rights or interests

The Respondent does not have the consent of the Complainant to register or to use the domain name <quelle.net>.

The evidence of the Complainant is that the Respondent has never used "QUELLE" alone or as part of a trademark, trade name or other trade symbol, or in a descriptive or informative manner to describe the Respondentís goods or services. The Respondent never made any preparations to use the domain name, <quelle.net>, in connection with a bona fide offering of goods or services before notice of the dispute. The Respondent is not known by the designation "Quelle". The Respondent did not file any evidence to demonstrate any rights or legitimate interest in the domain name in dispute as the Respondent is entitled to do pursuant to Paragraph 4.c of the UDRP. Complainant submits that if Respondent felt it had any legitimate rights or interests in the domain names it would have put forward an explanation of its rights to use these names.

The domain name <quelle.net> was transferred to the Respondent by Teleconsult GmbH on May 29, 2001. The Registrarís report to WIPO of August 30, 2001 discloses that Sebastian Herrmann TeleConsult Dienstleistungs GmbH is the technical person as well as the administrator of the domain name <quelle.net>. In the e-mail of August 28, 2001, the Respondent states "Mr. Sebastian Herrmann from TeleConsult is our rep in Germany (www.video2b.com/reps.html) and was asked by me to handle this registration." In 1998 the Complainant found that the top level domain name <quelle.com> was registered in the name of TeleConsult GmbH. TeleConsult offered multimedia products and services identical to the products and services of the Complainant (Complaint para. 1, page 8). TeleConsult attempted to transfer the domain name to a U.S. company Allora International Inc. (Annex K). The Complainant immediately applied for a provisional injunction at the Supreme Court Nürnberg-Fürth, Germany. The Supreme Court granted an interim injunction prohibiting TeleConsult Dienstleistungs GmbH from using in business dealings the Internet domain name <quelle.com>. (Annex J).

In April 2001, the Complainant checked further domain names and discovered that TeleConsult had registered the domain name in dispute <quelle.net>. The Complainant forwarded a warning letter to TeleConsult on April 23, 2001. TeleConsult refused to cancel or transfer the domain name (Annex L & M). The Complainant was preparing a court proceeding and shortly before filing the proceeding TeleConsult transferred the domain name to Amit Mendelsohn, the Respondent, on May 29, 2001 (See Annex N). As mentioned above the Technical and Administrative Contact is still Sebastian Herrmann of Teleconsult. The domain server is also the same as prior to the transfer. I find that the Respondent acquired the domain name in dispute from TeleConsult with knowledge of the Quelle trademarks and tradename and conclude that the Respondent has no rights or legitimate interest in respect of the domain name.

(iii) Registered and used in bad faith

The Complainantís trademarks are inherently distinctive being created trademarks not used by anyone other than the Complainant. The Complainantís trademarks and trade name are well known and the balance of probabilities is that the Respondent knew of the Complainantís trademarks and trade name at the date of registration.

The domain name <quelle.net> was transferred to the Respondent by TeleConsult who had previously been enjoined from using the domain name <quelle.com>. In the e-mail of the Respondent of August 28, 2001, the Respondent states that "Mr. Sebastian Herrmann from TeleConsult is our rep in Germany and was asked by me to handle this registration". The Technical and Administrative Contact of <quelle.net> remains Sebastian Herrmann. I find that the purpose of the transfer of the domain name from TeleConsult to the Respondent was to avoid proceedings in court similar to those relating to "quelle.com". The Respondent in an e-mail to WIPO of August 17, 2001, stated that <quelle.net> was registered for a specific project the Respondent is working on and has nothing to do with either the Complainantís activities and/or customers.

The Respondent is a passive holder of the domain name in dispute. The Administrative Panel in Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 stated at Paragraph 7.9 "... the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case it can be said that the Respondent is acting in bad faith."

I find on the balance of probabilities that the Respondent had at the date of registration a close connection with TeleConsult and in particular with Sebastian Herrmann and was aware that the domain name <quelle.net> was being transferred to the Respondent to avoid court proceedings. Following the Telstra decision I find that the passive holding of the domain name in dispute is in bad faith.

 

7. Decision

Pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel grants the Complainantís request for transfer to it of the domain name <quelle.net>.

 


 

Ross Carson
Sole Panelist

Dated: October 16, 2001