WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Mast-Jägermeister AG v. James Jones

Case No. D2002-1044

 

1. The Parties

Complainant is Mast-Jägermeister AG, a corporation organized under the laws of Germany, having its principal place of business at Wolfenbüttel, Germany and represented by Gramm, Lins & Partner, ("Complainant").

Respondent is James Jones, a private individual, of College Station, TX 77845, United States of America ("Respondent").

 

2. The Domain Name and Registrar

The domain name at issue is <masterhunter.com>.

The Registrar is Network Solutions, Inc., located at 505 Huntmar Park Drive, Herndon, VA 20170, USA, ("the Registrar").

 

3. Procedural History

The complaint was submitted electronically with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on November 12, 2002. The hardcopy under cover of a letter of the same date was received on November 15, 2002, ("the Complaint").

An Acknowledgement of Receipt was sent by the Center to Complainant on November 13, 2002.

On November 13, 2002, a Request for Registrar Verification was transmitted to the Registrar. On November 20, 2002, the Registrar confirmed by e-mail that the domain name <masterhunter.com> is registered with the Registrar and that Respondent is the current registrant of that domain name.

On November 21, 2002, a Notification of Complaint and Commencement of Administrative Proceedings (the "Commencement Notification") was sent to both parties.

On December 12, 2002, Respondent submitted his response electronically to the Center. A hardcopy of the response was received by the Center on December 17, 2002.

On December 12, 2002, the Center sent an Acknowledgment of Receipt of Response to Respondent.

On December 20, 2002, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date by email to the parties, in which Wolter Wefers Bettink was appointed as the Sole Panelist.

 

4. Factual Background

Complainant is the owner of the IR-trademark MASTER-HUNTER, registered in various countries for beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for the making of beverages and alcoholic beverages (registration no. 701517, dated September 10, 1998.)

Complainant is also the owner of the trademark JÄGERMEISTER, registered worldwide in approximately 100 countries, including Germany, the European Union and the United States.

The domain name <masterhunter.com> was registered on December 15, 1999, by Respondent. On October 31, 2000, Complainant sent a Cease and Desist Letter to Respondent. Respondent replied to this letter by email dated November 21, 2000, stating that a response would be provided by November 27, 2000. Despite Complainantís reminder to Respondent of January 10, 2001, Respondent has not replied.

 

5. Applicable Rules

Paragraph 4 (a) of the Policy directs that Complainant must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to Complainant's trademark, and

(ii) the Respondent has no rights or legitimate interest in respect of the domain name, and

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4 (b) of the Policy sets out, by way of example, four circumstances, each of, which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4 (a) (iii) above.

Paragraph 4 (c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondentís rights or legitimate interest to the domain name for the purpose of Paragraph 4 (a) (ii) above.

 

6. Partiesí contentions

Complainant

Complainant is the owner of the IR-trademark MASTER-HUNTER (registered in various countries) and of the trademark JÄGERMEISTER, which has been registered by Complainant in approximately 100 countries, among which the USA. The trademark JÄGERMEISTER is well-known worldwide. The English translation of the German word "Jägermeister" is "master hunter", as indicated in the publication of the US trademark number 1952558, filed on August 18, 1994, and published on November 7, 1995.

Complainant extensively uses the trademark JÄGERMEISTER and the English translation "master-hunter" as label for the well-known herbal liquor Jägermeister. Public opinion research during two decades in the Federal Republic of Germany has proven that among the adult population (16 years and older) the level of brand recognition of Jägermeister has remained consistent at 85%.

Complainant is also owner of the domain names <masterhunter.net>, <masterhunter.org> and <masterhunter.de>. Complainant uses the internet intensively as an advertising medium to promote the herbal liquor Jägermeister.

The domain name <masterhunter.com> is identical to Complainantís trademark MASTER-HUNTER and is confusingly similar to the German translation of the word "Jägermeister".

Respondent has no rights or legitimate interests in respect of the domain name <masterhunter.com>. Respondent is simply blocking the domain name.

Respondent does not own any trademark similar to MASTER-HUNTER. Respondent does not use the domain name for any website.

The domain name was registered and is being used in bad faith. The domain name <masterhunter.com> was registered in order to prevent Complainant from using the trademark in a corresponding domain name.

Respondent has not replied to letters of summons from Complainant.

In view of the applicable circumstances, that Complainantís trademark has a strong reputation and is well-known in many countries, and Respondent is holding the website passive, together with the fact the Respondent did not constructively respond to Complainantís communications, clearly proves that Respondent is holding the domain name <masterhunter.com> in bad faith, as set out in Paragraph 4(a)(iii) of the Policy. (See also WIPO Case No. D2000-0003 Telstra Corporation Ltd v Nuclear Marshmallows; WIPO Case No. D2001-0404 Pharmacia v Thomas Habif.)

Respondent

Respondent has rights to the domain name <masterhunter.com> and should maintain those rights.

Respondentís intentions in registering the domain name at issue was not to profit by selling the domain name or benefit from Jägermeisterís name. Respondentís intentions were to market his labrador retriever for stud services and showcase his accomplishments once he achieved the American Kennel Clubís designation of master hunter (MH). This procedure can take up to three years. During the procedure Respondentís dog became lame and therefore the procedure could not be completed, thus forcing Respondent to begin again. A new procedure was dependant on Respondent finding another puppy that would be capable of achieving the master hunter title and training him. This could take an additional three years.

Complainant is not the owner of the US trademark MASTER-HUNTER.

Respondent has rights and legitimate interests in respect of the domain name <masterhunter.com>. There is no rule that requires a domain name holder to use the domain. Complainant has had registered the domain names <masterhunter.org> and <masterhunter.net> since September 15, 2000, and has yet to use them.

The domain name at issue has not been registered and is not being used in bad faith.

Respondent registered the domain name at issue with absolutely no intent to infringe or profit from Jägermeister. At no time has Respondent contacted Complainant and requested any compensation for the domain name at issue. Respondent has not infringed the trademark rights of Complainant.

 

7. Discussion and Findings

Complainant must provide evidence of all elements of Paragraph 4 (a) of the Policy. Since the decision to transfer or cancel a domain name may have serious consequences for the domain name holder, the evidence should be sufficient in all respects to support such a decision.

a. Trademark rights

Complainant has provided sufficient evidence of its rights to the trademark MASTER-HUNTER. (See IR-trademark registration number 701517 dated September 10, 1998)

b. Identical or confusingly similar

The domain name <masterhunter.com> is confusingly similar to Complainantís trademark MASTER-HUNTER. The suffix ".com" indicates that the domain name is registered in the .com gTLD. The absence of the dash between "master" and "hunter" in the domain name <masterhunter.com> does not alter the likelihood of confusion with Complainantís trademark.

c. Rights or legitimate interests

Under paragraph 4 (c) of the Policy, Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of Article 4 (a) (ii), inter alia, by providing evidence of any of the following circumstances:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

It is doubtful whether Complainant has proven that Respondent has no rights or legitimate interests in the domain name <masterhunter.com>. The mere fact that Respondent does not own a trademark "Masterhunter" does not preclude that Respondent has another Ďown right or legitimate interestí. Likewise, the fact that Respondent does not have an active website does not preclude this. As to his intentions with the domain name, Respondent has stated that he wants to use the domain name to market his labrador retriever for stud services and showcase his accomplishments once he achieved the American Kennel Clubís designation of master hunter. Although this, at first sight, seems far-fetched, from a web search undertaken by the Panel, it was found that the American Kennel Club website "www.akc.org" indicates that the title of Master Hunter (MH) is the highest qualification a dog registered in the AKC Stud Book can obtain, by acquiring qualifying scores in six AKC- licensed or member club - Master Hunter Test. There are separate regulations for AKC Master Hunter Tests for Pointing breeds, Spaniels and Retrievers.

However, as Respondent has failed to provide any evidence of his purported plans and activities, it is doubtful whether the above facts would warrant the conclusion that he does have an own right or legitimate interest. Since this is not decisive for the case, the Panel will not elaborate on this issue.

d. Bad faith

As Complainant has not provided sufficient evidence that Respondentís registration and use of the domain name was in bad faith within the meaning of the Policy, the Complaint should be denied.

Complainant has stated that Respondent has registered the domain name in bad faith because Respondent has not reacted to Complainantís letters of summons and Respondent is not doing anything with the domain name at issue. Complainant claims that these circumstances create bad faith according to Paragraph 4 (a)(iii) of the Policy. Complainant is referring to WIPO Case no. D2000-0003 Telstra Corporation Ltd v Nuclear Marshmallows.

In the Telstra case the Panel considered that the passive holding of the domain name by the Respondent amounted to the Respondent acting in bad faith, in view of the following circumstances:

"1. the Complainantís trademark has a strong reputation and is widely known as evidenced by its substantial use in Australia and other countries,

2. the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

3. the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,

4. the Respondent has actively provided and failed to correct false contact details, in breach of his registration agreement and

5. taking into account all of the above it is not possible to conceive any plausible, actual or contemplated active use of the domain name by the Respondent that would not be legitimate, such as by being the passing of, an infringement of consumer protection legislation, or an infringement of the Complainantís rights under trademark law."

None of these specific circumstances seem to apply in this case. Where the Complainant in the Telstra case had a trademark with a strong, widely known reputation, the Complainant in this case has provided no evidence that his trademark MASTER-HUNTER is a well-known trademark. The fact that master-hunter is the English translation of Complainantís trademark JÄGERMEISTER (which can be considered well-known) makes no difference, if only because no evidence has been provided that this is evident to the general public. In this context, the Panel also notes that no reference to the trademark MASTER-HUNTER is made on Complainantís website.

Furthermore, none of the circumstances as mentioned under 2, 3 and 4 in the Telstra case stated above, appear to apply, while a plausible use by Respondent is conceivable. More in general, it should be mentioned that the distinctiveness of the designation MASTER-HUNTER is rather limited as it is a word in the English language, while Respondent has provided evidence of four US registrations of MASTER-HUNTER trademarks by third parties.

In view of the circumstances of this case, the Panel concludes that Respondentís passive holding of the domain name case does not satisfy the requirement of Paragraph 4 (a)(iii) that the domain name has been registered or is being used in bad faith by Respondent and that no evidence of other bad faith registration and use has been provided.

 

8. Decision

On the basis of the foregoing, the Panel decides that the Complaint should be denied.

 


 

Wolter Wefers Bettink
Sole Panelist

Dated: January 8, 2003