WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bauhaus AG, Zweigniederlassung Mannheim v. Robert Desideri
Case No. D2001-1177
1. The Parties
The Complainant is Bauhaus AG, Zweigniederlassung Mannheim, a German branch of the Swiss company Bauhaus AG, the branch office organized and existing under the laws of Germany, located at Gutenbeergstr. 21, D-68167 Mannheim, Germany.
The Respondent is Robert Desideri, with a place of residence in New York, NY, U.S.A.
2. The Domain Name
The domain name at issue is <bauhaus.com>, registered with eNom, Inc., of Redmond, WA, U.S.A., on August 8, 2001, the registration having been transferred from Network Solutions Inc., where the name was initially registered on October 30, 1995.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on September 26, 2001. Its receipt was acknowledged to the Complainant by the WIPO Center on the same day and it was received by the WIPO Center in hardcopy form on October 1, 2001. On September 27, 2001, the WIPO Center requested and the next day received a Registrar Verification issued by eNom Inc. Payment of the administration fee was duly received. After Formal Compliance Review, verifying that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Uniform Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), a Notification of Complaint and Commencement of Administrative Proceeding to the parties and eNom, Inc., was issued on October 2, 2001. On October 16, 2001, Respondent by e-mail requested "a modest time extension" for submitting a response, to which the WIPO Center replied the following day by granting an extension until October 29, 2001. On October 28, 2001, the Respondent submitted its response by e-mail. The WIPO Center received a hardcopy of the response on October 31, 2001.
The Complainant chose to have the dispute decided by a three-member Administrative Panel. The Panel was properly constituted on November 19, 2001, the formal date set for commencement of this administrative proceeding. All Panelists submitted appropriate Statements of Acceptance and Declaration of Impartiality and Independence. A Notification of Appointment of Administrative Panel and Projected Decision Date was properly issued on November 19, 2001, indicating as Presiding Panelist Mr. Gunnar Wilhelm Gösta Karnell, the other Panelists being Mr. Christopher Kuner and Mr. Ira S. Sacks.
On November 19, 2001, WIPO Center forwarded to the Panel by courier mail the relevant documents. Pursuant to Rule 5 (b), in the absence of exceptional circumstances, the Panel is required to forward its decision by December 3, 2001.
On November 27, 2001, the Complainant submitted a request to the WIPO Center requesting that the Panel grant it permission to file a reply to the response. On the same day, this request was refused by the Panel, whose decision was immediately communicated to the Complainant by the WIPO Center.
4. Factual Background
In accordance with Paragraph 3(b)(xiii) of the Rules, the Complainant has agreed to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of its Complaint, to the jurisdiction of the courts where the Respondent is located, as shown by the address given for the domain name holder in the concerned registrarís Whois database at the time of submission of the Complaint to the WIPO Center.
The Registrar Verification states that the Uniform Policy applies to the domain name at issue.
The Respondent has requested that documents and information within its response and annexes thereto be kept confidential within a specified circle. The Administrative Panel rejects this request. However, in summarizing the contentions of the Respondent, the Panel has attempted to avoid including factual details that the Respondent might consider confidential.
Complainant bases its claim on a trademark BAUHAUS (a figurative mark), registered January 18, 1996, upon an application filed in Belgium on October 12, 1995, on behalf of DEMP Holding B.V., Maastricht, No. 646 757 Ė extension under the Paris Convention to Belarus, Croatia, Slovenia, Ukraine and Vietnam Ė based on a Benelux registration No. 570 351 of May 9, 1995, preceded by a registration upon an application filed with WIPO on December 15, 1975, on behalf of Bauhaus AG, Switzerland, No. 420 524, under the Madrid Trademarks Agreement for an extension to Germany, Austria, France and Italy of a Swiss registration No. 246 188 of March 26, 1970.
Complainantís authority to raise a claim based on the trademark as mentioned rests upon its holding an exclusive license for Germany to the trademarks numbered 420 524 and 646 757 here above and a "Power of attorney for assertion of rights (capacity to sue in its own name)", provided by DEMP Holding B.V., "exclusively to assert the rights of DEMP Holding B.V. in the cited marks before the World Intellectual Property Organization (WIPO) through a UDRP proceeding with the goal of achieving the transfer of the domain <bauhaus.com> to BAUHAUS AG Deutschland in its own name".
5. Structure for the following presentation of Partiesí Contentions as well as the investigation and conclusions of the Administrative Panel
The Administrative Panel will, structuring under the letters A, B and C, refer to the criteria mentioned in paragraph 4(a) of the Uniform Policy, under which the Complainant carries the burden of proving:
A. that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
B. that the Respondent has no rights or legitimate interests in respect of the domain name; and
C. that the domain name has been registered and is being used in bad faith.
6. Partiesí Contentions (short summaries; and requests for decisions)
The Administrative Panel notes that both parties have submitted numerous documents in support of their contentions. The Panel has carefully scrutinized all of them. However, in this Decision, no explicit reference will be made to specific documents.
I. Complainantís Contentions
Complainant is the German branch of a European chain of Do It Yourself (DIY) stores. Complainant is registered in the commercial register of Mannheim municipal court as a branch of Bauhaus AG, Zug, Switzerland, since November 1974, (earlier registered as "Kommanditgesellschaft" since March 1963). All DIY stores use the BAUHAUS brand in various contexts to support recognition of the products and services of the stores. The trademark is internationally known in Europe as evidenced by various market research studies showing high degrees of recognition.
A. Respondentís domain name is identical or confusingly similar to Complainantís mark. The similarity between BAUHAUS and <bauhaus.com> is clear, the only difference being the top-level domain <.com>. Hence, the identity or risk-of-confusion criterion is satisfied.
B. The Respondent has no rights or legitimate interests in respect of the domain name. The Complainant concedes that the Respondent has applied for "bauhaus" as a service mark in the U.S.A. on December 15, 1999, but it has not been registered. The Respondent has not used the BAUHAUS brand in any other context than as part of the domain name <bauhaus.com>. Since 1996, the Complainant has, at intervals, checked on the use of the URL <bauhaus.com>. In 1996 and 1997, the page only carried the logo "bauhaus", the contact e-mail addresses email@example.com and firstname.lastname@example.org and a copyright notice "1995 RDCL", and no additional information. RDCL refers to Robert Desideri Consultants Limited for which another page was located at "www.24x7.com" with information about the objects of that company and, in 1996, a list of Internet services. Some time between 1996 and 2000, the www.24x7.com page was changed so that it only showed an announcement according to which something was in preparation at this URL in "stealth mode". Some time between 1997 and 2000, a redirect was established from "www.bauhaus.com" to "www.24x7.com". The URL "www.bauhaus.com" was not used by Respondent before mid-October 2000, even in a rudimentary way. Between October 10, 2000, and November 27, 2000, the "www.bauhaus.com"-page was modified, adding to the page title, in big letters, "Bow2Stern", and the sentences "In stealth-mode as we prepare for launch." and "To submit your resume please send it in plain-text to log@Bow2Stern.com Thanks." The lower part showed in small letters: "©, 1999,2000 Bow2Stern™. All rights reserved" and the text: "Bow2Stern™ is a trademark of BowLight Corporation in the United States and /or other countries. Other product and company names mentioned herein may be the trademarks or service marks of other companies." There was no reference to the "Bauhaus" service mark. The same content was shown on November 30, 2000, except that the Bow2Stern had in all places but the page title been replaced by Bauhaus. Overall, no business activities of the Respondent relate to the service mark "Bauhaus". There is no indication how activities of the Respondent with respect to "bauhaus" are intended to establish a functioning company. The absence of real activity means that the "bauhaus" service mark cannot be regarded as establishing any rights for the Respondent. Because there are no other rights or interests of the Respondent in the domain <bauhaus.com>, the Respondent cannot assert any rights in it.
C. The domain name has been registered and is being used in bad faith: The Respondent has a large number of word marks Ė 26 have been found Ė most of them "live", of which six have been found related to web sites. None of the web sites, all showing only one page, reveal any genuine activity. A list of 26 domain names, all of which, with minimal modifications, contain just the web page title, an indication of so-called stealth-mode or a request "please stay tunedÖ" and a statement "To submit your resume please send in plain-text to <e-mail address>; ending with a reference to (alleged) copyright. Three domains contain more graphically elaborate web pages but only fragmentary information about any purpose of the site, such as just an e-mail address and a hyperlink, but no indication of underlying services. A small number of the domains held by the Respondent relate to names used by others and there have been identified cases of possibly confusing similarities between domain names belonging to the Respondent and those of others, making it "impossible to dismiss out of hand the suspicion that the domain Ö was registered with intent to divert customers of another name owner to its own services". "The current rudimentary use by the Respondent makes no sense at all." The only commercial purpose of the brands appears to be to serve as an asset in connection with the associated domains, making the brand along with the domain an end in itself. It is justified to accuse the Respondent of "name grabbing". Although the Respondent has not "as yet" approached anyone with any offer "everything indicates that there is such an intention."
The filing of Respondentís service mark and the Respondentís awareness of other owners of Bauhaus marks satisfies the condition of registration and use in bad faith to attract for financial gain Internet users to the registrantís web site, e.g., by creating confusion with the Complainantís mark or by implying its support for or connection with the site of the domain owner. The Complainant asserts that there are a number of facts that support the contention of bad faith. Despite the appearance of pretended commercial use, the meager content of the page under "www.bauhaus.com" has been such as to attract only persons wishing to reach some other supplier of goods or services. Thus, the Respondentís intention Ė if not just to obstruct the system Ė would be to divert clients from such other suppliers, making use of competitorsí marks for its own commercial purposes.
The Respondent prevents Complainant from obtaining the domain. Complainant points to the coincidence in timing of Respondentís service mark application and domain name registration. (The Panel notes that such an assertion appears factually to be incorrect.) Respondent filed the service mark application to hinder legitimate trademark owners by "attempting to justify its own (alleged) rights with the registration of the mark". Even if Respondent maintains its own web site on the domain, it is not fully operational but merely an announcement that more information will be presented soon. It is commercially objectionable to register a mark for a specific service and then not only fail to refer in the web site to any business conducted under the mark but instead just refer users to another site over a long period of time. If there is a lack of circumstances materially justifying the registration of the domain, then the nature of use also indicates registration in bad faith.
Complainantís request (paragraph 4. i. of the Uniform Policy)
The Complainant has requested that the Administrative Panel transfer the domain name <bauhaus.com> to the Complainant.
II. Respondentís Contentions
Since 1970, the Respondent has worked both with computer technology and in the financial services industry. Until now, no legal proceedings have related to any of its domain names. Respondent denies any awareness of Complainantís existence and mark when registering the domain name and thereafter until the Complaint.
A. Respondentís domain name is not identical or confusingly similar to Complainantís mark. Complainantís trademark appears to be in stylized design comprising reverse-blocked typeface using uppercase typeface, whereas Respondentís "bauhaus" in <bauhaus.com> is in lower case lettering.
The businesses of Complainant and Respondent are quite different.
Respondent denies allegations regarding intent to imply relationship with Complainant. Complainantís business operations are of lesser scope than alleged, limited to only some geographic areas. Complainant does no business in the U.S.A.
Bauhaus is a generic term, referring to a particular architectural style which traces back to a school founded in the early 20th century by architect Walter Gropius. There are numerous businesses that use "bauhaus" as a trademark, service mark or corporate name. Complainant has not taken any action to challenge any of those uses. Indeed, Complainant waited from 1995 until 2001, to challenge Respondentís registration of the domain name.
B. Respondent has a legitimate interest in the domain name <bauhaus.com>: It was registered for Respondentís software business. The name <bauhaus.com>, assumed for the business of Robert Desideri Consultants, Ltd., was registered with the State of New York, Department of State on July 1, 1996. <bauhaus.com> is a mark to which the Respondent has acquired common law rights in its field of business. It has registered, used and uses the domain name in good faith. When registering the domain name in 1995, the decision was driven solely by Respondentís appreciation for the "function and form" doctrine to which the word "bauhaus" refers worldwide. Thus, "bauhaus" is an appropriate name for the innovative software architecture business on which Respondent was embarking.
Complainant has not been prevented from using its trademark internationally as a domain name. Complainant already uses a variety of domain names, such as <bauhaus.at>, <bauhaus-ag.de> etc. Regarding <bauhaus.com>, Respondent was first to register and with legitimate purpose.
Respondent has used the domain name and brand on the web site, including the public default page and pages in sub directories (both http and ftp protocols) and for email (SMTP protocol). In addition to a variety of public www pages, since 1995, the web site provides business prospects and venture capital investors with private logons and directories containing private web pages where Respondent demonstrates software and provides documentation. The site has always comprised public and non-public directories and web pages. Non-public pages are not linked to public pages to prevent competitive piracy. A sister company brands <bauhaus.com> software as its own private label products and markets such products. Respondent also markets <bauhaus.com> software to other firms as private label products to sell under their own brand. Activities have reached into venture investment and management services, broadening the scope of <bauhaus.com>.
C. Bad faith is denied. The domain name was not registered in bad faith and is not being used in bad faith. No cybersquatting or brand grabbing has taken place and actual and ongoing use is for multiple bona fide purposes. Trademark applications were filed for legitimate purposes varying over time. Respondent has not intended to divert or confuse any Internet user away from business by any other right holder to any "bauhaus" mark or domain. The Respondent was unaware of Bauhaus AG and DEMP Holding and did not register its domain name to obstruct Complainant or to resell, rent or otherwise transfer the domain to Complainant for profit. Complainant admits that Respondent has not approached it in any such manner. There has been no information on the <bauhaus.com> default web page that would confuse or mislead anyone into believing that Respondent operates DIY shops or that a web surfer would have reached the web site of the Complainant. Nor would any user be linked to any competitor of the Complainant. Redirection to another default public web page is not for any bad faith purpose but for practical (e.g. project on hold), administrative (e.g. labor) and server capacity reasons.
Complainantís arguments about Bow2Stern are baseless. Respondentís use of one web page as a template to create another and then replacing the html <title> tag was the result of Respondentís "search and replace" procedure to replace an accidentally overwritten or erased <bauhaus.com> default web page. Respondent admits to an incomplete procedure, caused by error and technical problems, but denies any intent to mislead or confuse the public.
Respondent showed significant use of its various registered domains since 1995.
Similarities between Respondentís other domain names and other entitiesí names or domain names are not such as to cause confusion or to substantiate allegations of cybersquatting. In the sole case where a domain name registered by Respondent, other than <bauhaus.com>, contained, as alleged by the Complainant, the trademark of another U.S. enterprise, this mark referred to vastly different services than those of the Respondent, who was unaware of the trademark in question.
Respondent denies that its pages indicating stealth-mode attest to non-use. Respondent explains that stealth mode refers to use only by persons with authorized access. Respondentís business develops a portfolio of software properties and does not engage in fancy web site constructions.
Respondent has never registered a domain name with the intent to sell it.
The Respondent has requested the Administrative Panel deny Complainantís request for domain name transfer. It has also requested "that the Administrative Panel find Complainant brought this proceeding to reverse highjack the domain name", understood by the Panel to mean a request related to paragraph 15(e) in fine of the Rules that the Panel shall in its decision declare that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
7. Discussion and Findings
Under paragraph 15(a) of the Rules the Administrative Panel shall "decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
The Administrative Panel finds as follows:
A. The domain name <bauhaus.com> is identical to a trademark to which Complainant has rights, notwithstanding the added gTLD.com. It is not confusingly similar because of the different geographic areas in which the parties do business and their totally different businesses.
Complainantís BAUHAUS mark, as registered, is a figurative mark and not a word mark. This fact has not been mentioned or invoked by any Party as of any importance for the handling of the case by the Administrative Panel. Respondent only made an analysis of the mark without drawing any conclusions thereof. It may be that, because of reasons of language and insufficient translation, the issue of the character of the mark has been shrouded. The figurative character of the mark comes forward in only few documents and then in French and German. The Panel chooses to disregard the issue, because it finds that the Complainant has sufficiently proven to the Panel that "bauhaus" has, as a mark, become generally known in the appropriate business and consumer circles in certain geographic areas as a symbol specific to the goods and services of the Complainantís DIY stores.
B. Respondent has a legitimate interest in the domain name <bauhaus.com>. Respondent has set forth evidence indicating that, before notice of the dispute, he has been using the domain name <bauhaus.com> in connection with a bona fide offering of goods and services showing legitimate interests in respect of the domain name (see Uniform Policy 4(c)(i)), even if it is true that the Respondentís use was not of a kind visible to the Complainant.
Bauhaus is word of worldwide use. It is commonly used in trade for names and trademarks as well as in domain names having no known connection to either the Complainant or the Respondent. Whether there be a legitimate interest in using "bauhaus" for a certain business depends upon the similarity in goods and services to other users of the word within a narrow commercial setting. There is no similarity between Complainantís goods or services and those of the Respondent, current or planned.
C. The contentions and documentary evidence brought to the case by the Parties have not produced convincing evidence that the domain name <bauhaus.com> has been registered or is being used in bad faith by the Respondent. There is no evidence to prove any circumstances of the kind indicated under Uniform Policy 4(b). There is no evidence that Respondent has tried to sell or profit from the registration. See Uniform Policy 4(b)(i). There is no evidence that Respondent registered the domain name to prevent Complainant from doing so. See Uniform Policy 4(b)(ii). There is no evidence that Respondent has engaged in a pattern of registering blocking domain names. Id. Indeed, the domain names registered by Respondent do not seem to be related to famous marks or otherwise suspicious. Complainant's reference to the Army's Smartdarts or to the funnybone website seem off the mark. There is no evidence that Respondent's registration of the domain name had the intent of disrupting Complainantís business. Uniform Policy 4(b)(iii). Nor is there likelihood of confusion. See Uniform Policy 4(b)(iv). Respondentís services are dissimilar when compared to Complainant's goods. Moreover, Bauhaus is a common word used to refer to certain architectural theory worldwide. Bauhaus is also used widely in the United States and worldwide as a corporate name and a trademark, having nothing to do with either Complainant or Respondent.
The Administrative Panel does not find, however, that the Complainant brought its Complaint to reverse highjack the domain name. On the information presented to the Panel in the Complaint and attached documents, the Complainant had a reasonable basis to raise a claim against Respondent, despite the fact that it did not prevail in its claim. Consequently, the Administrative Panel has not found that the Complaint was brought in bad faith.
It is the unanimous decision of the Administrative Panel that the <bauhaus.com> domain name should not be transferred to the Complainant.
Kuner Ira S. Sacks
Dated: December 3, 2001