WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Buendnis 90 / Die Gruenen v. RJG Engineering Inc.

Case No. D2001-1111

 

1. The Parties

The Complainant is Buendnis 90 / Die Gruenen, of Platz vor dem Neuen Tor 1, Berlin, Germany, represented by Rechtsanwalt Johannes Zindel of Jones, Day, Reavis & Pogue of Frankfurt, Germany.

The Respondent is RJG Engineering Inc., of PO-Box 6426, Lincoln, Nebraska, United States of America, represented by Mr. Gerhard Lauck, President of the Respondent.

 

2. The Domain Name and Registrar

The disputed domain name is <diegruenen.net>.

The Registrar is Signature Domains, Inc., of Miami, Florida, United States of America.

 

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 September 10, 2001, and in hard copy on October 3, 2001. The Complaint was acknowledged on September 13, 2001. On September 17, 2001, registration details were sought from the Registrar. On September 21, 2001, the Registrar confirmed that the disputed domain name is registered in the name of the Respondent at the address mentioned above and that the Policy applies to the disputed domain name. On September 24, 2001, the Center issued a Complaint Deficiency Notification relating to payment of the required fees and lodgment of the required copies of the Complaint.

These deficiencies were remedied by Complainant and on October 3, 2001, the Center satisfied itself that the Complaint complied with all formal requirements (including payment of the prescribed fee) and that day formally dispatched copies of the Complaint by post/courier (with enclosures) to the Respondent at the address as recorded with the Registrar and by facsimile and email (without attachments). The Center included with that material a letter dated October 3, 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 October 23, 2001. On October 5, 2001, the Center received a single page facsimile message from the Respondent dated October 4, 2001, and on October 8, 2001, the Center asked whether Respondent intended to make any further submission. On October 25, 2001, nothing further having been received from the Respondent, the Center notified the parties of the Respondentís default. On October 30, 2001, the Center received a facsimile dated October 29, 2001, from Respondent confirming that its letter of October 4, 2001, was its Response.

On October 31, 2001, the Center received an unsolicited reply from Complainantís counsel to Respondentís letter of October 4, 2001. That reply does not raise evidence not reasonably available to Complainant at the time of its initial submission, nor arguments by Respondent that Complainant could not reasonably have anticipated. For the reasons given in Goldline International, Inc. v. Gold Line (WIPO Case No. D2000-1151), this Panel does not admit the reply and has had no regard to it.

The Complainant elected to have the case decided by a single-member Administrative Panel ("the Panel") and on November 1, 2001, the Center 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. That day the Center transmitted the case file to the Panel and notified the parties of the projected decision date of November 15, 2001.

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; the informal 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

"Die Gruenen" is the name of a political party in Germany, founded in January 1980. This party is a member of the current government of Chancellor Gerhard Schroeder.

According to the Registrar, the disputed domain name was registered with it on August 3, 2001.

 

5. Partiesí Contentions

A. Complainant

DIE GRUENEN is a registered trademark of Complainant and protected for publishing all kinds of print products, namely brochures, stickers, information materials, posters and books.

The disputed domain name has been registered and is being used in bad faith. The disputed domain name has been offered for sale (Complaint Ex. 4). Furthermore the disputed domain name is being used intentionally for creating confusion with Complainant's trademark.

Respondent has no rights to register or use the domain name.

Complainant requests the Panel to direct that <diegruenen.net> be cancelled.

B. The Respondent

DIEGRUENEN is a registered trade name for Respondent in the State of Nebraska.

It is not a registered trademark of Complainant in the United States of America. Even if Complainant has a right to that name in Germany, it does not have an exclusive right to it in the USA.

Complainantís name is "Buendnis 90 / Die Gruenen", not simply "diegruenen".

"Diegruenen" means, literally, "the Greens". "Greens" is a common term in Europe for anybody supporting environmental issues. It is not limited to members of one political party in one country. For example: could be "Communist Party USA" be given exclusive rights to the domain name "thereds" even without a US trademark?

There is already a website with the domain name <diegruenen.com> that does not appear to have any connection to Complainant. I am unaware of any action against that website. Our own website at the disputed domain name promotes Internet ecology and free speech. It does not mention Complainant at all or pretend to have any connection to it.

As a free speech activist and former political prisoner of the German government currently co-ruled by Complainant, I suspect this action is politically motivated. The German government claims jurisdiction over American websites on the basis they are "accessible" in Germany. It has threatened even mainstream US publishers such as Amazon, Barnes & Noble etc.!

 

6. Discussion and Findings

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. This has been a difficult case because the submissions of both parties are sparse, to say the least, as is the evidence that has been provided.

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.

To obtain relief under the Policy it is not necessary to establish that Complainant has trademark rights in the country in which the domain name is registered or in which the registrant resides.

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).

Page 2 of Ex. 4 to the Complaint is a copy of a record of the German Patent Office depicting the trademark DIE GRUENEN, Registered No. 1126592 dated 22.08.88. The Panel accepts that Complainant is the proprietor of the registered trademark DIE GRUENEN in Germany.

The Panel finds the disputed domain name is identical to Complainantís registered trademark DIE GRUENEN.

The Complainant has established this element.

Illegitimacy

The Panel infers that the Complainant has not authorized Respondent to use its trademark nor to register the disputed domain name. Respondentís name is RJG Engineering Inc. There is no evidence Respondent is known by the disputed 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 Respondent. The evidentiary burden therefore shifts to 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.

Respondent has not substantiated its asserted registration of DIE GRUENEN as a trade name in Nebraska. In any event, all the circumstances would need to be considered before a conclusion could be drawn that any such registration should be taken into account in finding Respondent has a legitimate interest in the disputed domain name. There is no evidence as to the timing or the circumstances of that asserted registration.

Respondent claims that the name DIE GRUENEN ["The Greens"] is not distinctive of members of a political party in one country. However, descriptive words are capable of registration as trademarks when they have become distinctive through use and Complainant has shown the name has become distinctive of it in Germany.

Respondent asserts that it uses the disputed domain name for a website promoting Internet ecology and free speech. Respondent asserts that the site does not mention Complainant at all or pretend to have any connection to it. However, there is no evidence of the content of that site at the time of this dispute arising.

It may not be appropriate for this Panel independently to visit the site so as to examine Respondentís assertions: see Rule 15(a) and Benefitslink.com, Inc. v. Mike Haynes (National Arbitration Forum Case No. FA0007000095164:

"It is not the role of the Panel to conduct an independent investigation outside the materials submitted in the record".

Leaving aside legal research, including research into decisions under the Policy, which the Panel is clearly authorized to conduct, it could be argued that a reference in the materials submitted in the record to a website incorporates the content of the website into those materials, so that the Panel may visit that website without violating rule 15 (a). Be that as it may, a practical reason in this case why the Panel should refrain from independent investigation of Respondent's website is that the Panel would have no way of knowing whether, as often happens, changes have been made to the site since the commencement of the proceeding.

Respondent has not demonstrated by concrete evidence that it has rights or legitimate interests in the disputed domain name.

Complainant has established this element.

Bad faith registration and use

Complainant relies on Ex. 4 to the Complaint as providing evidence that Respondent has offered the disputed domain name for sale. There are 2 pages in that Exhibit. The first appears to be page 7 of 10 pages from the site <http://www.nazi-lauck-nsdapao.com>. It is entitled "How YOU can use the Internet as a Propaganda Weapon!" and contains material in both German and English suggesting that European webmasters can reduce the risk of political repression by moving their websites to the USA. There is no offer to sell the disputed domain name on the page. The second page of Ex. 4 is the previously mentioned copy of part of the records of the German Patent Office. It provides no evidence of any offer on the part of Respondent to sell the disputed domain name.

Complainant has failed to establish circumstances of bad faith within paragraph 4 (b) (i) of the Policy. Paragraph 4 (b) is not exhaustive however, and it is open to the Panel to make a finding of bad faith registration and use based upon other demonstrated circumstances.

In SportSoft Golf, Inc. v. Hale Irwinís Golfersí Passport (NAF case FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trade mark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (NAF case FA94737); Canada Inc. v. Sandro Ursino (eResolution case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF case FA95037).

Here Respondent, an American company located in Nebraska, chose the German language for its domain name. As a self-described "free speech activist and former political prisoner of the German government currently co-ruled by Complainant", Respondentís President and representative must have been sufficiently aware of politics in Germany to have known of Complainant and its mark DIE GRUENEN before Respondent registered the disputed domain name. The Panel so finds.

The Panel also finds that, knowing of Complainant and its mark, Respondent has created the likelihood, by using the German language for its domain name, that German Internauts would be attracted to the site because the disputed domain name conveys an association with Complainant. This justifies a finding of bad faith registration.

As to use, assuming, as Respondent asserts, that the site <www.diegruenen.net> promotes Internet ecology and free speech and does not mention Complainant, the Panel finds such Internauts are likely to believe that the views expressed on the site are those of Complainant or have Complainantís approval.

Thus on the limited material available it appears to the Panel that both the site and the disputed domain name falsely represent to Internauts, particularly German Internauts, that there is a connection with Complainant. In so doing, Respondent is using the disputed domain name in bad faith.

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.

 

7. Decision

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <diegruenen.net> be cancelled.

 


Alan L. Limbury
Panelist

Dated: November 14, 2001