WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alfabet Meta-Modeling AG v. Henrik Rambe
Case No. D2001-1205
1. The Parties
Complainant is Alfabet meta-modeling AG, Berlin a corporation organized and existing under the laws of Germany, represented by White & Case, Feddersen, Berlin, Germany.
Respondent is Henrik Rambe, Malmö, Sweden.
2. The Domain Name and Registrar
The domain name at issue is <alfabet.com>. The registrar is Domaininfo AB, Jonsered, Sweden.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on October 4, 2001. The WIPO Center sent an Acknowledgment of Receipt to the Complainant on the same date and received the hardcopy of the Complaint on October 8, 2001.
On October 8, 2001, a Request for Registrar Verification was transmitted to the Registrar, Domaininfo.com, who confirmed by e-mail that they were in receipt of the Complaint sent to them by the Complainant and that the domain name <alfabet.com> was registered with them, and was on ACTIVE status. The Registrar also forwarded the requested Whois-details and confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect.
A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules").
The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
All formal deficiencies having been cured, on October 15, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent by the required means, setting a deadline of November 4, 2001, by which the Respondent could file a Response to the Complaint.
On November 1, 2001, the WIPO Center received the Response by e-mail with a hardcopy following on November 7. The WIPO Center acknowledged the receipt of the Response on November 2, 2001.
On November 8, 2001, in view of the Complainant’s designation of a single panelist (but without prejudice to any election to be made by the Respondent) the WIPO Center invited Mr. Knud Wallberg to serve as a panelist in the Case, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received on the same day, Mr. Knud Wallberg’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was November 23, 2001.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
On November 14, 2001, the Complainant submitted a Supplemental Filing to the WIPO Center. Neither the Policy nor the Rules contain specific provisions on supplemental filings and it will thus in the sole discretion of the Panel to decide whether to admit such filings or not. In this case the Panel has looked briefly through the Supplemental Filing. Since the Supplemental filing does not address issues that are not already covered by the Complaint and since it does not contain any new facts of importance of the case, the Panel dismisses the Supplemental Filing by the Complainant.
The Administrative Panel shall issue its Decision based on the Complaint, the Response, the Policy, the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
The Complainant is a German stock corporation, which sells software-based modeling technologies for the strategic management of businesses and provides customer service and support. It started its business in 1997 in the legal form of a limited partnership, operating under the firm of, mip GmbH & Co.
mip GmbH & Co applied for registration of the Community trademark alfabet in the form of a combined unregistered and visual mark on April 22, 1998. The trademark was registered by OHIM on June 2, 1999 for data processing instruments and computers, construction of programs for data processing. A copy of the registration certificate was provided as an Annex to the Complaint.
The Complainant obtained the domain name <alfabet.de> on January 6, 1998. A copy of the registration confirmation by the German registrar was provided as Annex to the Complaint.
On September 2000, mip holding Aktiengesellschaft, changed its name to alfabet meta-modeling AG, which is the Complainant in this proceeding.
The Respondent is a Swedish national and a member of the law firm Rambe Legal Consultants based in Stockholm, Sweden. Respondent registered the domain <alfabet.com> with domaininfo.com on January 17, 2000. Apart from the disputed domain <alfabet.com>, the Respondent owns other domains, which he registered with domaininfo.com during the period from January until June of 2000.
5. Parties´ Contentions
Following registration of the <alfabet.com> domain, the Respondent approached the Complainant via email, offering to sell the domain name for USD 50,000. The Complainant refused on the grounds that the price asked was too high and was not worth it to own the domain name.
On November 29, 2000, the Respondent conducted an Internet auction at <afternic.com> for the purpose of selling the domain <alfabet.com>. The Complainant, took part in this auction which expired below the reserve price of USD 50,000. The last bid was placed at USD 10,495. The auction was subsequently closed by the Respondent without accepting any of the bids.
Following termination of the auction, the Respondent sent Complainant an email, claiming that, apart from the Complainant, other companies had shown an interest in the domain <alfabet.com>. It being a "unique domain name", the Respondent asked Complainant to "consider the value properly in regard to the domain name market" and not to use the result of the auction "as a reference".
In the course of the subsequent email correspondence between the Respondent and Complainant, Complainant expressed their continued interest in the purchase of the disputed domain, but no agreement was reached.
There is not, nor has there ever been, any web-site associated with the <alfabet.com> domain name. In early September of 2001, a link was installed to the web-site <gagatan.com> which is the platform for a shopping guide for the city of Malmö, Sweden. By entering the <alfabet.com> domain name, a user is thereby forwarded to the <gagatan.com> site.
The domain name <alfabet.com> which is the subject of this dispute is identical with the trademark "alfabet" registered with the OHIM on behalf of the Complainant on June 2, 1999. No other trademark rights pertaining to the term "alfabet" have been registered as Community Trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name because he does not make any legitimate use of the domain.
The Respondent neither uses the <alfabet.com> domain as an internet-based platform to offer any goods or services, whether it be for sale or for non-commercial purposes, nor does he use the term "alfabet" in areas unrelated to the Internet. He is in no way known by the domain name, nor do his name, his business or any other characteristics or activities represented or practiced by him invoke an association with the term "alfabet".
Although a link was recently installed to the <gagatan.com> web-site, this does not represent legitimate use of the domain by the Respondent. The only reference made to the term "alfabet" on the <gagatan.com> site is the notice that <gagatan.com> may currently also be reached under <alfabet.com> which would be developed separately. There is no imaginable association a user trying to find information on Malmö’s shopping street "Gagatan" might have to the term "alfabet" that would induce him/her to search for such information under <alfabet.com>.
This suggests that, in light of the Complainant’s efforts to get hold of the disputed domain, the Respondent installed the link to the site of the shopping guide merely in order to pretend that a legitimate use is currently made of the domain.
Finally, the Respondent has registered and used the domain name in bad faith.
According to the Policy, para. 4(b)(i), registration of the domain name primarily for the purpose of selling it to the owner of the trademark for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name is evidence of the registration and use of a domain name in bad faith.
The fact that the Respondent registered the disputed domain and the 46 other domains listed in his <afternic.com> showcase during a relatively short period of time (January until June of 2000), implies that he did not intend to use any of these domains as a platform for offering any goods or services but rather intended to sell them, either by contacting potentially interested parties directly or by listing the domains for an internet auction. The reserve price the Respondent fixed for the auction of the <alfabet.com> domain amounted to USD 50,000 - a sum that exceeded the Respondent’s out-of-pocket costs related to the domain manifold.
Such behavior has generally been referred to as "domain grabbing" and has been considered to be illegal by, among others, German and Austrian courts.
There is evidence that the Respondent knew about the existence of the Complainant, i.e. a company by the name of alfabet meta-modeling AG when he registered the <alfabet.com> domain: The Complainant had already registered the <alfabet.de> domain at that time. When searching for a specific domain under <domaininfo.com>, the potential registrant is informed whether such domain has already been reserved and, if so, which top level domains have been reserved in connection with it.
The Respondent figured that the Complainant, as owner of the "alfabet" trademark, might be interested in obtaining the respective dotcom domain and registered the <alfabet.com> domain for the sole purpose of selling it to the Complainant. This assumption is also supported by the fact that, prior to listing the domain for the Internet auction, the Respondent directly contacted the Complainant and offered to sell the disputed domain.
The behavior of the Respondent as described above constitutes a case of bad faith registration and use as defined in para 4(b) of the Policy.
Additional evidence of the Respondent’s bad faith use of the disputed domain is his refusal to sell it when offered the considerable sum of USD 15,000 by the Complainant. Instead, he made a counter offer for USD 900,000, asking eighteen times the amount of his original offer (USD 50,000). Even in the year 2000, when the New Economy was in a livelier state than at present, this was an unrealistically high price to ask for a domain name. Furthermore, the fact that the Respondent did not turn around and sell the domain to the alleged third party for USD 825,000 indicates that there never existed a corresponding offer from any third party and that the Respondent simply invented such third party, in order to drive up the price.
The Respondent contends that the term "alfabet" is a "completely and utterly generic word" and that, therefore, dealing with the disputed domain constitutes normal trade with a valuable domain name rather than an illegitimate incident of cybersquatting.
By arguing in this manner, the Respondent fails to take into account the fact that the Complainant is the holder of the "alfabet" trademark. Whether a term is generic and thus eligible for trademark protection is one of the issues to be examined in detail by the OHIM prior to granting trademark protection to any applicant. However, once the trademark is registered, the generic nature of the term becomes irrelevant. In Paragraph 4(a)(i), the Policy merely requires the Complainant to prove that it has rights in a certain trademark, which is identical or confusingly similar to the Respondent’s domain. It is not an issue under the Policy, whether a domain name reflects a specific company name or a generic term.
Neither does the Policy differentiate between different kinds of trademarks: it is equally applicable to unregistered trademarks and to combined unregistered and visual marks such as the "alfabet" trademark, in which case the trademark protection refers to the term in combination with a specific graphic design or image.
Any trademark holder will thus have a claim to the corresponding domain, whether it be generic or not, if the domain holder has no legitimate interest in the domain and has been using it in bad faith.
In the case at hand, the Complainant is the holder of the "alfabet" trademark while the Respondent - as has been shown - has no rights or legitimate interests in the <alfabet.com> domain and has registered and used the disputed domain in bad faith. The Complainant may, therefore, demand transfer of the domain registration to itself.
In claiming disloyal or bad faith use of a domain name, one must first closely scrutinise which prioritised rights exist that may extend to include it. On examining this, the scope of any such right must be established. The extent of existing trademark protection, as well as other legitimate rights and interests, becomes a key issue. If a trademark, or other right, then in a specific case may be said to encompass the characteristics of the domain name under scrutiny, then the use of it may become relevant. Such use need then be deemed disloyal, in order for any action to be performed against it.
In the present case, the Complainant is claiming that the domain name <alfabet.com>, which is in my possession, is identical to the Complainant’s trademark(s). The Complainant then also claims that I have no right or legitimate interest in respect of it, as well as it is being used in bad faith.
In effect this means that the Complainant considers itself to have the sole and unreserved right to the word "alfabet" in all its uses on a worldwide basis, as the internet and the dotcom names indeed are international in nature.
To any Scandinavian (Swedish, Danish, Norwegian) the word "alfabet", with that spelling, carries the same meaning in Swedish, Danish and Norwegian as the word "alphabet" in German and English. Being so generic, in every sense of the word, any trademark protection in connection to it must then be limited in scope. It would place a bridle on the public sphere in favour of a private single entity, which would and could not be acceptable.
On scrutinising the trademark rights of the Claimant, this general IP principle also shows true in the concrete case. At the time of interest, when the domain name was being offered for sale at the <afternic.com> auction site, as well as at the time of registration, in January the same year, the only existing trademark concerning the word "alfabet" was a figurative/visual mark for the Alfabet Meta–Modeling AG logotype containing the words "alfabet communicate your knowledge" in connection with the offering of goods and services within the classes for "Electrical and Scientific Apparatus" and "Construction of Programs for Data Processing". With this limited – and fully understandable scope of protection, trademark rights had been given on a Community level. The trademark had (and has) not acquired distinctiveness. In it, there is nothing to suggest that the Claimant's right should extend to the claimed degree.
If at all applicable here, even the trademarks granted later (September 2001), as presented in the Annexes to the Response show these clear limitations. In accordance with basic trademark principles, the additional trademarks granted this year in September – now also containing a "word-trademark", only give the Complainant protection for the use of "alfabet" within closely defined areas. In regard to the word "alfabet", the use for the rest of us, should however, as before, be free and equal – only now with those few, limited and understandable exceptions for the protection of the Claimant's legitimate business interests. The word being so utterly generic in the Scandinavian context, naturally no prioritised right for the Claimant can be said to exist beyond the limitations of the Claimant's trademark(s). For anyone outside the Alfabet Meta-Modeling AG – context, the use of the word "alfabet" must then be as free as for any other common word.
In this, the offer of sale to a wider public of equally legitimate and interested parties, that has nothing to do with the Claimant's business, is no act of bad faith and could not constitute trademark intrusion. The right of a holder of such a dotcom domain name then rests on the single principle "first to register", which is the standard rule for all the gTLDs. Any interested party may then take or leave the conditions offered, if at all offered, as there is no obligation for a holder to sell. A specific price, be it "outrageous" or not, is for the interested buyer to accept at will. The option is free. To question the legitimacy of a Swede using the word "alfabet" in his or her own context, encased in a domain name or not, is then far-fetched.
From the Respondent's company’s point-of-view (Auxit KB), which presently is developing a cultural and literary site in connection to the <alfabet.com> domain name and the established portal site of <gagatan.com> (which both are Swedish and have nothing in common with the Claimant’s products, services or company), the buying and selling of generic or non-trademark protected domain names in connection with well-prepared business plans is nothing to be frowned upon. There is a multitude of developers and venture capital firms that constantly are on the lookout for new ideas and projects to get involved in. Naturally, this must be distinguished from that which the Claimant wishes to make this into. Nothing is gained by bluntly classing everything that has to do with the domain name market as "hi-jacking" or "cyber-squatting", since serious business is performed out of equally legitimate interests in that market as in so many others. It is only where rights truly are intruded upon that action should be taken, or the rights’ system eventually will be diluted.
To further support the fact that the Claimant is not the only legitimate rights-owner, one may simply look at the other existing alfabet-domain names under different TLD’s. As the Annexes to the Response show, there are a number of alfabet-domain names registered, and that do not belong to the Claimant. Why the Claimant should have a prioritised right to particularly the dotcom-domain, where many others, including existing sites with equally legitimate interests, as well as a broad population of Scandinavia with potential internet plans, could claim the same thing, is then beyond logic.
In addition, if the Respondent’s use need even be mentioned, a few things may be noted. The domain name was registered in January 2000, and put on auction in November the same year. Just the time-factor alone then indicates that the purpose of registering the domain name hardly could have been to offer it specifically to the Claimant for a high price. Also, when put on auction, e-mails were sent out in great numbers to all potentially interested parties, of which naturally the Claimant was one, in order to promote the auction - the process being one such promotional step, which is suggested on several auction sites. At the same time, the auction really being a side issue, development plans and business discussions continued for the <alfabet.com> domain, as well as for several other domain names; the idea of the auction being not to bar any possibilities, whether they be strictly pecuniary in character or more mixed. In this context the figurative trademark of the Claimant (if even known of at the time), was of absolutely no concern, it not having anything to do with the business in question.
Further, to support the case, after failure to agree on a price last year, no contact has been made with the Claimant. This should normally indicate that the interest of selling the domain name at a high price specifically to the Claimant, perhaps, was not so great or crucial to the scheming of the Claimant’s proposed adversaries, as had been imagined. However, when the domain name was connected to the existing site of <gagatan.com>, instead of seeing it as just another parallel alfabet site, and without any knowledge of the reasons or its purpose, the Claimant jumps to the conclusion that the only possible reason for connecting the site can be provocation from a bad faith perspective. And so, almost a year later after one specific auction event, understood as if completely taken out of context, the claimant wishes to make credible that the use of Respondent’s domain name should be unlawful and illegitimate. In view of what has been said and shown, it ought to support the opposite.
In light of the above, misconceptions of the scope of trademark protection, unawareness of Scandinavian languages and the existence of a legitimate domain name market, among other things, seem to have brought the Claimant to a somewhat clouded conclusion. The by the Claimant presented and unsubstantiated speculations of the motifs and schemes underlying the offer of sale in December last year, are here met with regret. It seems the Claimant is acting from an exaggerated self-image in regard to the their rights, however legitimate, valuable and highly esteemed those may be in proper circumstances.
Hence, the burden of proof in regard to any of the three conditions in Paragraph 4(a) under the Uniform Domain Name Dispute Resolution Policy required for a successful Complaint, has not been met. Therefore the Complaint should be denied, as the Respondent is in his full right.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) 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; and,
2) that the Respondent has no legitimate interests in respects of the domain name; and
3) the domain name has been registered and used in bad faith.
Identical or confusingly similar
According to the provided information Complainant is the holder of a registration of the word device mark "aLFABET - communicate your knowledge". The mark is registered as a Community Trademark on June 2, 1999.
The domain name <alfabet.com> is identical or almost identical to the dominant and distinctive part of the said mark except for the addition ".com", and must be considered confusingly similar to the said mark.
The prerequisites in the Policy, Paragraph 4(a)(i) are therefore fulfilled.
The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark. Further, the Respondent has not proven that he has any prior rights in the domain name.
However, the word "alfabet" is indeed, as claimed by the Respondent, a generic term in Respondents home-country, being the Scandinavian word for "alphabet". As pointed out by the Complainant, this does not preclude that the word can be protected as a trademark for goods and services for which it is not descriptive. On the other hand this means that the Registrant of a domain name incorporating a generic term may well have registered and even used the domain name based on an bona fide assumption that the term incorporated in the domain name is generic and not reflective of a protected mark. In such cases the Registrant can bee deemed to have a legitimate interest in the domain name as required in Paragraph 4 (a)(ii) and Paragraph 4(c). The Panel notes that many previous decisions under the UDRP has addressed the same question, see inter alia WIPO Case No. D2000-0617 <stmoritz.com>, WIPO Case No. D2000-0054 <crew.com>, WIPO Case No. D2000-0161 <zero.com> and WIPO Case No. D2001-0179 <deepfreeze.com>.
Based on the facts of this particular case as it is presented to the Panel, the Panel cannot preclude that Respondent has perceived the domain name as being "generic". Whether this is the actually case is closely related to the discussion of bad faith, and will therefore be discussed below
Paragraph 4(a)(iii) of the Policy further provides registration and use in bad faith. Paragraph 4(b) regulates, by way of example, the kind of evidence that is required. Further it must be stressed that the burden of proof of the bad faith rests with the Complainant.
Respondent registered the contested domain name on January 17, 2000. Respondent does not recognize having had any knowledge of Complainants trademark rights at this point. In addition, Complainant has not put any evidence before the Panel that could indicate otherwise, such as proof that the mark is in use and is well-known in Sweden.
Complainant claims that Respondent then approached them and offered to sell the domain name, for a price of 50.000 USD. Complainant has however not furnished any documentation in support of this claim. Since the Respondent has not confirmed that such contacts were made and since the onus is on the Complainant, the Panel cannot base its decision on this claim.
The domain name was then put on auction in November 2000. It is undisputed that Respondent has registered a number of domain names, including <alfabet.com> and has offered these for sale by way of an auction. This is however, not in itself an act of bad faith as required under the UDRP nor is it an illegitimate business, as long as the domain names does not incorporate trademark rights of other businesses or otherwise infringes rights of others. Complainant has presented a list of domain names registered by and offered for sale by the Respondent, but Complainant has not put forward more specific information or proof that these domain names contain trademarks of other entities. It is not within the powers of the Panel to make an independent investigation into this, but a prima facie look at the list does not indicate that this is the case. In the Panels view, the described activities of the Respondent does thus not fall under the definition of "bad faith" within the meaning of the UDRP as set out in Paragraph 4(a)(iii) and 4(b).
Bearing all these facts and the above arguments in mind, the Panel finds that the Complainant has not been able to demonstrate that the domain name has been registered and is being used in bad faith, cf. Paragraph 4 (a) iii and 4 (b).
Consequently, the prerequisites for cancellation or transfer of the domain name according to Paragraph 4(a) of the Policy are not fulfilled.
The Complainant has requested transfer of the domain name.
In view of the above circumstances and facts the Panel decides, that the domain name registered by Respondent is identical or confusingly similar to the trademark in which the Complainant has rights, but that the Respondent may have a legitimate interest in respect of the domain name, and that it has not been established that the Respondent’s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel denies the request that the domain name <alfabet.com> be transferred to the Complainant.
Dated: November 21, 2001