WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arbeitsmarktservice v. Arbeitsmarktservice.com
Case No. D2002-0501
1. The Parties
The Complainant is Arbeitsmarktservice, Vienna, Austria, represented by Alix Frank Rechtsanwälte KEG, Vienna, Austria.
The Respondent is Arbeitsmarktservice.com, Virrat, Finland.
2. The Domain Name and Registrar
The domain name at issue is <arbeitsmarktservice.com>.
The Registrar is Bulkregister.com, Inc. 10 East Baltimore Street, Suite 500, Baltimore MD 21202, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") by e-mail on May 29, 2002, and a hardcopy was received by the Center on June 3, 2002. The Center acknowledged the receipt of the Complaint on May 31, 2002.
On May 31, 2002, the Center sent to Bulkregister.com a request for verification of registration data. On June 4, 2002, Bulkregister.com confirmed that it is the Registrar, that the Respondent is the registrant of the domain name <arbeitsmarktservice.com>, and that the administrative contact and the technical contact is Muraliv, Differentiated Software Solutions PVT LT, Bangladore, Karnatika, India.
The Center verified that the Complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") and that payment was properly made. The Panel is satisfied this is the case. On June 10, 2002, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced.
Since no communication was received from the Respondent within the time limit set, the Center sent a default notification to the Respondent, on June 30, 2002.
On July 11, 2002, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" to the Center.
No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panelís decision is July 25, 2002.
4. Factual Background
The Complainant is the official Austrian employment agency, organized as a government agency by the Austrian public law Arbeitsmarktservicegesetz (employment market service law) of 1993, and is a (public) legal person in its own right. It is well-known in Austria under this term and the only organization (public or private) in German-speaking countries bearing that name. "Arbeitsmarkt" is the German language term for employment market or job market.
The Complainant primarily renders public services (such as implementing the job market policy of the government and the granting of unemployment benefits), however many of its services (such as assisting unemployed people to find a new job and offering professional training) may also be rendered and are rendered by private organizations.
To the extent that the Complainant is rendering services in competition with private organizations it is acting in the course of trade and may therefore be the owner of marks (trademarks or service marks) in order to distinguish its services from those of private competitors (the Austrian Trademark Protection Act does not restrict the registration of trademarks to private persons or private legal entities).
The Complainant is the registered owner of a service mark, registered in 1996 under No. 165670 with the Austrian Patent Office in class 35 (for the services "placing of persons and finding of jobs") consisting of the capital letters AMS (in a specific graphic presentation), combined with the words Arbeitsmarkservice Wien (Wien is the German term for the city of Vienna).
In a simplified manner, the mark of the Complainant may be presented as follows:
The Complainant is also the registrant of the domain names <ams.or.at> and <arbeitsmarktservice.at>.
The Respondent registered on February 9, 2000, the domain name <arbeitsmarktservice.com>. According to evidence submitted by the Complainant (Annex 8 to the Complaint) this domain name has been activated by the Respondent, however only leads visitors to a blank page.
5. Partiesí Contentions
The Complainant submits that (1) the domain name <arbeitsmarktservice.com> is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
The Respondent has failed to submit any statement. It has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of Complainantís submissions, and all inferences that can reasonably be drawn therefrom (Rules, paragraph 14(b)).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) the domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
1) Confusing Similarity with a Mark in which the Complainant has rights
The domain name <arbeitsmarktservice.com> is not identical with the mark "AMS Arbeitsmarktservice Wien", in which the Complainant has rights.
It must therefore be considered whether the fact that it is identical with one part of the service mark registration of the Complainant, can be considered to create confusing similarity with that mark.
In that context two aspects must be taken into consideration:
First the term "arbeitsmarktservice" refers to the services rendered by the Complainant and may be considered to be descriptive of the services offered by the Complainant. In view of the most recent jurisprudence of the European Court of Justice, which is binding for the Austrian courts (particularly the decisions in the cases BABY DRY and BRAVO) the Panelist tends to consider the term not to be exclusively descriptive of the services to place persons or to find jobs for unemployed persons. However, even if the term had been descriptive in 1996, when the mark was registered, it has no doubt become distinctive through use since at least 1994 by the Complainant (even if that term is first of all the name of the Complainant, its use as a name increases the level of knowledge of the public in that term and, if used as a service mark, respectively as part of a service mark, it will be recognized by the persons addressed by the Complainant as indicating the origin of the services rendered).
Secondly, the dominating part of the service mark as registered are the letters AMS. Nevertheless, the term "Arbeitsmarktservice" is written sufficiently large in order not to be overlooked. The addition of the term "Wien" does not diminish the function of the term "Arbeitsmarktservice" to indicate origin of the services rendered, since it is a generic term indicating the geographical place where the Complainant is located.
In conclusion, the domain name <arbeitsmarktservice.com> is, in view of its identity with a distinctive part of the Complainantís mark, confusingly similar with that mark. Also, when taking into account the particularities of the Internet, confusion will arise. Users trying to visit a website of the Complainant in the ".com" domain will either type AMS or "arbeitsmarktservice" (these are not only the two distinctive parts of the registered service mark but also the terms used by the Complainant in its domain names registered in the Austrian cctld). They will arrive at a blank page and be confused, since normally domain names lead either to a website or to a site informing the visitor that the website is not accessible at the moment.
Since the Panelist is satisfied that the domain name <arbeitsmarktservice.com> is confusingly similar with the service mark registration No. 165670, in which the Complainant has rights, there is no need to consider whether the Complainant has rights in an unregistered service mark "Arbeitsmarktservice" (rights in an unregistered mark are of course sufficient under the Policy; however in principle according to Article 2(1) of the Trademark Protection Act it is necessary to enter a mark in the Trademark Register in order to obtain rights therein, and it is doubtful whether, under Austrian Law, an exception can be made for an "official" sign, used in the course of trade).
2) Legitimate Rights or Interests in respect of the Domain Name
The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name <arbeitsmarktservice.com>. The Respondent does not make any use of the domain name for its own legitimate commercial or non-commercial activities, if any, and quite apparently it is not known under that domain name.
In the absence of any submission of the Respondent, the Panel therefore concludes that the Respondent has no rights or legitimate interests vis-à-vis the Complainant in the domain name <arbeitsmarktservice.com>.
3) Registration and Use in Bad Faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. The question is therefore, whether the passive holding of the domain name can be considered to be registration and use in bad faith, taking into account all circumstances of the present case.
In that context, it has been convincingly argued in Telstra Limited v. Nuclear Marshmallows, WIPO Case No. D2002-0003, that inaction of the Respondent is within the concept of Paragraph 4(a) of the Policy.
The Complainant has submitted the following facts and arguments to support its claim that the Respondent has registered and is using the domain name <arbeitsmarktservice.com> in bad faith:
As said before, the domain name leads to a website consisting of a blank page. However, according to evidence submitted by the Complainant, the website uses (at least used until the Complaint was filed) since October 2000 meta-tags that are confusingly similar to the Complainantís websites. Particularly interesting is that not only the word "arbeitsmarkservice" and other German words relating to the services rendered by the Complainant are used, but also the mega-tag "AMS" which corresponds to the main distinctive part of the Complainantís service mark, and also is used as distinctive part of the domain name <ams.or.au>.
The very fact that the Respondent used that megatag, which consists of a combination of three letters, that normally has no meaning and which it therefore had no reason to use as a mega-tag, is clear evidence that the Respondent was aware of the Complainant and its rights when registering the domain name <arbeitsmarktservice.com>. The use of that mega-tag is at the same time a strong indication of bad faith registration and use of that domain name. It also shows that the Respondent was not totally inactive.
A further indication of registration of the domain name in bad faith is that the Respondent in the registration agreement alleges to bear a name which is identical with the domain name, and only indicates a post box address in Finland, where several official languages exist, whilst German is not an official language, and the term "Arbeitsmarktservice" belongs to none of the official languages. Additionally, the Complainant has submitted evidence that no firm or company bearing that name exists in Finland.
The fact that the Respondent uses the domain name <arbeitsmarktservice.com> for a website, consisting of a blank page, and uses or at least used for over a year mega-tags in the German language, including the mega-tags "arbeitsmarktservice", "arbeitsmarktservice.com" and "AMS", can only be interpreted as registration and use in bad faith. In the absence of any submission of the Respondent, the Panelist has no doubt that the Respondent makes or at least has the intention to make use of his domain name for commercial gain. In that context the Complainant has submitted evidence indicating that the Respondent intended to use the domain name for a "Stealth Website Redirection", as offered by MyDomain.com (a copy of the MyDomain.com homepage is added to the Complaint as Annex 11), even if it may not yet have activated that service of MyDomain.com. This assumption can be drawn from the fact that the website, in addition to the many German language terms relating to the services rendered by the Complainant, also uses the following mega-tags (as evidenced by Annex 9 to the Complaint): "Free Domain Name Registration and Free Domain Name Forwarding by <a href="hppP:www.MyDomain.com>" and "MyDomain.com".
Even if paragraph 4(b)(iv) of the Policy refers to the website or other location of the Respondent, whilst the Respondent may intend to use its domain name primarily in order to revert the visitor from its website to other websites, the Panelist considers the circumstances of the case to be evidence of registration and use in bad faith, at least comparable to the circumstances listed in paragraph 4(b)(iv) of the Policy. The Respondent may well also have hoped to be one day contacted by the Complainant, and to be able to sell the domain name to it. However, since the Complainant did not approach the Respondent, this is speculation and paragraph 4(b)(i) of the Policy does not apply. Of course, the Respondent has prevented the Complainant from reflecting its mark in a corresponding domain name in the ".com" domain (paragraph 4(b)(ii) of the Policy), and the fact that it used the above mentioned mega-tags for its website speaks in favor of the assumption, that it has engaged in a pattern of such conduct. Be it as it may, the circumstances as listed in paragraph 4(b)(i) to (iv) are not exhaustive and in the absence of any submission of the Respondent the Panelist is satisfied that the pattern developed by the Respondent is evidence of registration and use of the domain name <arbeitsmarktservice.com>in bad faith.
The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel requires that the registration of the domain name <arbeitsmarktservice.com> be transferred to the Complainant.
Dr. Gerd F. Kunze
Dated: July 22, 2002