WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bundesrepublik Deutschland (Federal Republic of Germany) v. "Vertraulich"
Case No. D2002-0599
1. The Parties
Complainant is the Bundesrepublik Deutschland (Federal Republic of Germany) represented by the Presse- und Informationsamt der Bundesregierung (Press and Information Office of the Federal Government). Complainant’s address is Dorotheenstrasse 84, D-10117 Berlin, Germany. Complainant’s authorised representative is Rechtsanwalt Friedrich Kurz, MBA, Schoenhauser Allee 10-11, 10119 Berlin, Germany.
Complainant has named "Unknown" as Respondent, for the reasons mentioned below under Parties’ Contentions. The Panel discusses the questions concerning the identity of Respondent below under Discussions and Findings.
2. Domain Name and Registrar
The domain name at issue is <kanzleramt.biz>.
Registrar is eNom Inc, 16771 NE 80th Street, Suite #100, Redmond, WA 98052, United States of America.
3. Procedural History
The World Intellectual Property Organization Arbitration and Mediation Center (the Center) received a Complaint in electronic form on June 27, 2002, and in hardcopy form on July 1, 2002. On July 15, 2002, the Center received an Amendment to Complaint in electronic form which was also submitted in hardcopy form on July 22, 2002.
The Center issued an Acknowledgement of Receipt of Complaint on June 28, 2002. On the same day the Center issued a Request for Registrar Verification. Such a Verification was received on July 7, 2002. During the following days some correspondence occurred between the Center and the Registrar concerning the contact information for Respondent.
The Registrar Verification contains the reply "Yes" to the following questions posed by the Center: a) whether a copy of the Complaint was sent to the Registrant by Complainant, b) whether the domain name <kanzleramt.biz> was registered with the Registrant, c) whether the Respondent RJG Engineering, Inc is the current registrant of the domain name, d) whether the Uniform Domain Name Dispute Resolution Policy applies to the domain name, and e) whether the domain name registrant has in its Registration Agreement submitted to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes arising from the use of the domain name. The language of the Registration Agreement was indicated to be English. The current status of the domain name was given as "Lock." In response to the request by the Center to the Registrar to provide full contact details that were available in its WHOIS data base, the Response was given as: "http://www.enom.com/domains/WhoIs.asp?Domain name=Kanzleramt.biz&submit.x=52&submit.y=13." The WHOIS information to which this URL resolved showed the word "vertraulich" in all contact information fields.
The Center completed the usual Formal Requirements Compliance Checklist on July 22, 2002. In that Checklist, the Center noted: "Neither Complainant nor the Registrar can say with certainty who the current registrant is".
On the same date the Center issued a Notification of Complaint and Commencement of Administrative Proceeding which was sent by registered mail on July 22, 2002, to "Gerhard Lauck RJG Engineering, P.O. Box 6426, Lincoln, NE 68506, United States of America", the person and entity that are presumed by the Complainant to be the Respondents in this case. The mail was not returned. Furthermore, the message was transmitted by e-mail to, among others, "postmaster ("firstname.lastname@example.org")and "postmaster ("email@example.com"). In reply to e-mails sent the Center received a mail delivery failure message relating to a number of transmission efforts and then stating: "the following address(es) failed: firstname.lastname@example.org."
The Notification was also transmitted to Complainant, the Registrar and ICANN.
As no Response had been received from Respondents, the Center issued a Notification of Respondent Default on August 12, 2002. This Notification was sent by registered mail to "LAUCK Gerhard, RJG Engineering Inc. P.O Box 6426, Lincoln, NE 68506, United States of America." That mail was not returned.
The Center invited Mr. Henry Olsson to serve as Sole Panelist in the case and received, on August 15, 2002, Mr. Olsson´s Statement of Acceptance and Declaration of Impartiality and Independence. The same day the Center appointed Mr. Olsson as Sole Panelist and issued a Notification of Appointment of Administrative Panel and Projected Decision Date which was duly communicated to the Parties. The Projected Decision Date was August 29, 2002.
The Sole Panelist considers that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
4. Factual Background
The word "Kanzleramt" corresponds in English to "Chancellery" and is the abbreviated expression for "Bundeskanzleramt"or "Federal Chancellery" It supports the Chancellor of the Federal Republic of Germany in the performance of his duties and is thus the superior federal authority for the coordination of government policy in the Federal Republic.
In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant has agreed to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer the domain name that is the subject of the Complaint, to the jurisdiction of the courts of Redmond, WA, United States of America.
Complainant indicates that a copy of the Complaint together with the cover sheet was been sent or transmitted to Respondent on June 27, 2002, by e-mail to "email@example.com".
5. Parties’ Contentions
Complainant first states that the WHOIS database of Registrar eNom.com as well as the Internic database and the WHOIS biz database contain no information that makes it possible to identify Respondent. In response to queries for Administrative Contact, Technical Contact and Zone Contact in relation to <kanzleramt.biz> only the word "vertraulich" appears, that is, in English, "confidential." The domain name at issue is redirected to or mirrors the domain <nazi-lauck-nsdapao.com> and tracing the domain name at issue shows twelve identical servers and routes. Complainant therefore supposes that Respondent could be "RJG engineering, Inc, PO Box 6426, Lincoln, NE 68506, United States" and the Administrative Contact "Lauck, Gerhard" with the same address.
As regards the substance of the Complaint, Complainant refers to two earlier cases against RJG Engineering Inc. (WIPO Cases Nos. D2001-1401 and D2002-0110) and alleges that in those cases as well as in the case at hand the domain name has been used to lead to a website containing Nazi propaganda material.
According to Complainant, the Presse- und Informationsamt der Bundesregierung (Press and Information Office) is the superior federal authority for government information and supports for instance the media work for the Chancellor and for the Federal Chancellery. Thus, the Office is responsible for running the websites of the Federal Government and for the Federal Chancellery, in this latter case through the websites "www.bundeskanzler.de" and "www.kanzleramt.de". The Federal Press Office is therefore to be considered to be the holder of those domain names.
Complainant states that it has not registered its trademarks or trade names but has common law service mark rights in the notion "Kanzleramt." The Chancellor of the Federal Republic and the Chancellery render their services, such as providing public information, under that name, for instance over the Internet under the domain "www.kanzleramt.de". In this way information is offered on a number of matters relating to the government operations, such as press releases, interviews and speeches of the Chancellor as well as his activities in general.
Thus those websites offer comprehensive information about for instance the work, organisation and tasks of the Federal Chancellery and about various political issues and current campaigns. Consequently, according to Complainant, the notion "Kanzleramt" is used in the course of trade like the notions "Bundesjustizministerium", "Bundesinnenministerium" and "Verfassungsschutz" as found in the two cases referred to above.
According to Complainant the abbreviated notion "Kanzleramt" meets the standards of Article 4, item 2, of the German Trademark Act, under which trademark and service mark rights can be established not only through registration but also through active use in public in the course of trade. Consequently, "kanzleramt" is a common law service mark protected for Complainant in the Federal Republic of Germany.
Complainant adds that trademarks do not have to be registered in order to come within the scope of the Policy, as found in a previous case (WIPO Case No. D2001-0470).
On the basis of these circumstances, Complainant alleges that the domain name is obviously identical or confusingly similar to Complainant’s mark "Kanzleramt" as the addition of ".biz" is an insignificant distinction that does not remove the likelihood for confusion.
Furthermore, according to Complainant, Respondent has no rights or legitimate interests in using the disputed domain name and does not conduct any bona fide business.
Complainant alleges that by using the domain name at issue and the other domain names in earlier cases referred to above, Respondent has gained illegal advantages of the public knowledge of the abbreviations of German Ministries and Offices and is illegally taking advantage of traffic generated by Internet users wanting to obtain information from the Ministries by directing the traffic to an American Nazi Goup which describes itself as an organisation for the refounding and re-establishing of the NSDAP and which explicitly aims to abolish the democratic system in the Federal Republic. Complainant alleges that the website to which the website at <kanzleramt.biz> is thus redirected contains material which is not only criminal under German law but is also deeply offensive to the Jewish community in Germany and all over the world. Complainant mentions that one of the articles posted on that website is called "How YOU can use the Internet as Propaganda Weapon" and this is, according to Complainant, exactly what Respondent does by registering domain names that are identical or confusingly similar to established and well-known service marks. According to Complainant, Respondent is notorious for trying to take illicit advantage of the reputation of German Government authorities. That this is done intentionally is evidenced, inter alia, by Respondent’s notice to visitors to redirected domain names to the effect that: "Important notice! If you reached this website via an "alternative url" please immediately record our ´real´url: http://www.nazi-lauck-nsdapo.com "Alternative url" sometimes suddenly cease to function."
On the basis of these allegations, Complainant contends that Respondent has registered and use the domain name at issue in bad faith with the intent to mislead Internet users to a Nazi website which is dedicated to the "battle against the constitution of the Republic of Germany" and which also aims at discrediting the Federal Government.
According to Complainant Respondent is obviously not willing to meet its Service Agreement obligations in relation to the Registrant, something that is evidenced by the instruction on how to save blocked addresses. Also, Complainant alleges that Respondent on its website posted: "We thank Gerhardt Schrott for his Führer´s birthday present, namely the additional domain name http://www.kanzleramt.biz!"
Finally, Complainant indicates that the fact that Respondent hides its identity in the WHOIS database shows the bad faith.
On the basis of these contentions, Complainant requests that the Administrative Panel issue a decision that the domain name <kanzleramt.biz> be transferred to Complainant.
The entity and person believed to be Respondents and to which the Complaint has been communicated have not submitted any Response. Respondent is therefore in Default.
6. Discussions and Findings
Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.
The first issue that the Panel has to consider concerns the identity of Respondent and the question whether the Notification of Complaint and Commencement of Administrative Proceeding and the Notification of Respondent Default as well as other communications in this case have in fact been communicated to an entity or a person who can be assumed to be Respondent.
In this case the Panel first notes that that all searches in the applicable data bases ended up in the word "Vertraulich", the German word for "Confidential." This means that the WHOIS data base provides no information about the identity of Respondent. Complainant has therefore named "Unknown" as Respondent. As no information is available from the normal sources, the Panel has to rely, to the extent necessary, on other facts to establish who Respondent is for the purposes of this dispute. The Panel notes that both the Notification of Complaint and the Notification of Respondent Default were sent by registered mail to "Gerhard Lauck, RJG Engineering" Those were never returned. The Panel also notes that one e-mail message from the Center relating to the Notification of Complaint was returned with a mention of "firstname.lastname@example.org".
The Panel also notes that in an earlier case (WIPO Case No. D2001-1401) Mr. Gerhard Lauck was named as Administrative Contact, Technical Contact and Zone contact in respect of RJG Engineering. The same was stated in a later case (WIPO Case No. D2002-0110) where Respondent was mentioned as "RJG Engineering Inc./Gerhard Lauck."
Neither RJG Engineering nor Mr. Lauck has commented on, or opposed, the indications as to Respondent’s identity in the various communications made, something that would have been quite natural in case the recipients had considered that the communications were sent to the wrong persons.
All these circumstances taken together bring the Panel to the conclusion that the proper Respondents in this case are – as in the earlier case from 2002 – both RJG Engineering and Mr. Gerhard Lauck which therefore must be assumed to be the entity/person behind "Vertraulich." The communications directed to them have consequently been directed to the entity and the person who are to be considered as Respondents for the purposes of this case.
In the view of the Panel all reasonable efforts have been undertaken to effectively communicate the various Notifications to that entity and that person. In any event, if a registrant has elected to conceal its identity, it must bear the consequences of the absence of such information in the context of a UDRP case brought against it. There is, therefore, no obstacle to considering the case.
In the case of a Default by a Party, Paragraph 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case no Response has been submitted and none of the contentions by Complainant have, despite having been given the opportunity to do so, been contested. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.
The Registrar Verification confirms that the Policy is applicable to this case, and that there is an obligation to submit to a mandatory administrative proceeding as now initiated in respect of the domain name at issue.
Paragraph 4.a of the Policy directs that Complainant has to prove each of the following:
- that the domain name registered by Respondent is identical with or confusingly similar to a trademark or a service mark in which Complainant has rights
- that Respondent has no rights or legitimate interests in the domain name, and
- that the domain name has been registered and is being used in bad faith.
In the following part of this Decision the Panel discusses each of those elements.
Identity or Confusing Similarity
Complainant has, according to Paragraph 4.a.(i) of the Policy, to prove that the domain name at issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
The domain name at issue is <kanzleramt.biz>.
The principal question in this context is whether the notion "kanzleramt" enjoys protection as a trademark/service mark.
An Administrative Panel has in an earlier case (WIPO Case No. D2001-1401) considered the scope of protection for unregistered trademarks under the German Trademark Act. According to Article 3, item 1. of that Act trademarks are: "Any signs, particularly words, including personal names, designs, letters, numerals, sound marks, three-dimensional configurations, including the shape of goods or their wrapping as well as other packaging, including colors or combinations of colors, which are capable of distinguishing the goods or services of one undertaking from those of another undertaking…."
According to Article 4 of the Trademark Act, protection as a trademark may be created through registration or by being a so-called well-known mark and also "through the use of a sigh in the course of trade insofar as the sign has acquired a secondary meaning as a trademark within the affected trade circles…"
The Panel can summarise its considerations on the nature of the notion "kanzleramt" in this context in the following way. The notion has per se such a distinctive character that may constitute a trademark. In the view of this Panel an authority such as the Federal Chancellery would well be covered by the notion "undertaking" in the Trademark Act provided that it is engaged in activities such as offering of goods or services. It is also clear that the notion "kanzleramt" is well known in the Federal Republic of Germany as representing the Federal Chancellor. Finally, the Panel considers that the activities provided or offered by the Kanzleramt/Chancellery satisfy the requirement under the law that the notion be used "in the course of trade" in order to be protected as a trademark or service mark.
On the basis of these considerations, the Panel finds it to be established that, for the purposes of this dispute, the notion "Kanzleramt" would enjoy trademark protection under Article 4, item 2. of the German Trademark Act.
In the view of this Panel it is clear that a trademark or service mark does not have to be registered in order for the Policy to apply.
The domain name at issue contains the trademark/service mark with the addition of "biz" which addition is, under UDRP case precedents, an insignificant distinction that does not remove the likelihood for confusion.
The Panel consequently concludes that there exists a confusing similarity between the domain name at issue and Complainant’s protected trademark/service mark "Kanzleramt."
Rights or Legitimate Interests
In this respect Complainant has, according to paragraph 4.a(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name.
In order to support its contentions in this respect Complainant has referred to a number of circumstances and to documentary evidence, to show, inter alia, that Respondents conduct no bona fide business and have redirected contacts with the website under <kanzleramt.biz> to the website of a Nazi Group in the United States.
Despite the opportunity given, the contentions by Complainant have not been contested or commented upon.
On the basis of these circumstances, the Panel is satisfied that Respondent has no rights or legitimate interests in the domain name <kanzleramt.biz>.
Registration and Use in Bad Faith
In this respect Complainant has, according to Paragraph 4.a(iii) of the Policy, to prove that the domain name has been registered and is being used in bad faith. Furthermore, Paragraph 4.b sets out some circumstances which, in particular but without limitation, shall, if found by the Panel to be present, be considered to be evidence of registration and use in bad faith.
As summarised above, Complainant has basically contended that the website to which the domain name <kanzleramt.biz> is redirected belongs to a Nazi Group and contains material which is criminal under German law and deeply offending for the Jewish community. Complainant refers in this context also to the advice given on that website to record the "real" website of the Group in case it has been reached via an "alternative url." Respondent’s intention is, according to Complainant, not only to mislead Internet traffic but also to discredit the Government of the Federal Republic. Also, Complainant points to the fact that the WHOIS database contains no public information about the identity of the Administrative and other Contacts.
As in the case of the other contentions by Complainant, no contestation or comment has been submitted.
On the basis of these circumstances, the Panel is satisfied that the evidence submitted by Complainant sufficiently supports its contention that Respondent has in fact registered the domain name at issue, and are using it, in bad faith.
On the basis of the foregoing, the Administrative Panel concludes that it has been established that the domain name at issue is confusingly similar to the trademark/service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and is being used in bad faith.
In accordance with Complainant’s request and with reference to Paragraph 4.i of the Policy, the Panel requires that the domain name <kanzleramt.biz> be transferred to Complainant.
Dated: August 20, 2002