WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Freytag-Berndt und Artaria Kommanditgesellschaft v. Leimgruber A. & Co. OHG
Case No. D2002-1077
1. The Parties
The Complainant is Freytag-Berndt und Artaria Kommanditgesellschaft, a limited partnership, registered with Commercial Registry in Vienna under FN 4571y (Austria), doing its business in Brunnerstrasse 69, A-1230 Vienna, Austria.
The Respondent is Leimgruber A. & Co. OHG, Nationalstrasse 58, I-39040 Auer, Bolzano ,Italy.
2. The Domain Name and Registrar
The domain name at issue is <freytag-berndt.com> which is registered with MELBOURNE IT ("the Registrar") of Melbourne, Australia.
3. Procedural History
A Complaint was submitted by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on November 26, 2002, and in hardcopy on December 4, 2002. An Acknowledgment of Receipt was sent by the Center to the Complainant, dated November 28, 2002.
On November 28, 2002, a Request for Registrar Verification was transmitted to the Registrar.
On November 29, 2002, the Registrar confirmed that the domain name at issue, was registered with the Registrar and that the Respondent was the current registrant of the name. The Registrar also forwarded the requested WHOIS details and confirmed that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the domain name.
The Registrar has currently incorporated the Policy in its agreements. The Policy was adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999. There is no evidence that the Respondent ever requested that the domain name at issue be deleted from the domain name database. Accordingly, the Respondent is bound by the provisions of the Policy.
The Panel has determined 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 "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on December 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of December 25, 2002, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by post/courier and e-mail to the addresses indicated in the Complaint.
On December 26, 2002, having received no Response from the Respondent the Center transmitted to the parties a Notification of Respondent Default. On January 9, 2003, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Mr. Jonas Gulliksson.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules. The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent.
4. Factual Background
The Complainant and its Registered Trademarks
Complainant is the owner of the Community Trademark No. 844571 freytag & berndt (& design), registered on July 19, 1999, with priority date June 8, 1998, in international classes 9 (including directional compasses), 16 (including geographical maps, street maps, plans, in particular town plans, hiking maps and atlases) and 41. Furthermore, Complainant is the owner of the domain names <freytagberndt.com> and <freytagberndt.at>, re Annex number III to the Complaint.
5. Partiesí Contentions
(1) The Domain Name is Identical or Confusingly Similar to a Trademark in which Complainant has Rights
The domain name in dispute <freytag-berndt.com> is confusingly similar to the above-mentioned trademark freytag & berndt in which the Complainant has rights, because standard ASCII-characters do not allow the German noun "&" Instead of "&" companies generally use a hyphen. According to WIPO -decisions D2000-1801 (<bingodesmarques.com>) and D2000-1820 (<coles-hypen.com>) there is similarity if the domain distinguishes only by adding a hyphen. The distinctive names "Freytag" and "Berndt" of the domain name in dispute are identical to the Complainantís trademark and company name.
(2) Respondent has No Rights or Legitimate Interests in the <freytag-berndt.com> Domain Name
Respondent is the authorized dealer of maps including geographical maps, street maps, town plans and hiking maps for northern Italy of the Complainantís strongest competitor Kompass Karten GmbH ("www.kompass.at"). Respondent primarily uses the domain name <leimgruber.it> and <kompass-italia.it> for its business, while other domain names, such as <freytag-berndt.com> or <freytag-berndt.it>, are only used as traffic generators for its commercial activities. On November 26, 2002, the domain name <freytag-berndt.com> was connected with Kompass-content and Respondent had a banner in the bottom line of the URL "www.freytag-berndt.com", connected with its own web site "www.leimgruber.it", re Annex IV to the Complaint.
There is no evidence of the Respondentís use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.
The Respondent has not been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights.
The Respondent is not making a legitimate non-commercial or fair use of the domain name.
(3) Respondent Registered and is Using the <freytag-berndt.com> Domain in Bad Faith
Complainant is doing business in Austria, Germany, Hungary, Czech Republic and Slovakia. Its maps are even sold in German speaking areas of northern Italy. Respondent must have knowledge about the Complainantís activities since the Respondent also is a dealer of maps. Following the link "Kontakt" on Respondentís web site "http://www.freytag-berndt.com/Kompass-index.htm" everybody can read that the Respondent acts as Kompass-Italia of the Complainantís competitor Kompass Kompass Karten GmbH.
The domain name was registered primarily for the purpose of disrupting the Complainantís business as the Complainant and the Respondent are competitors in the field of selling plans and maps and Respondent brings traffic via "www.freytag-berndt.com" to its web sites.
By using the domain name, the Respondent intentionally attempted to attract for commercial gain, in particular to sell its maps and plans, Internet users to the Respondentís web site by creating a likelihood of confusion with the Complainantís mark freytag & berndt.
The Complainant has requested the Administrative Panel to issue a decision by which the contested domain name is transferred to the Complainant.
Respondent has not contested the allegations of the Complaint.
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 respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
The Complainant is the owner of the Community Trademark freytag & berndt. In the Panelistís opinion the domain name <freytag-berndt.com> is identical to the trademark freytag & berndt except for the "&"and the addition of ".com".
Accordingly, the Panelist finds that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Respondent has not proven that he has any prior rights or legitimate interests in the domain name.
The prerequisites in the Policy, Paragraph 4(a)(i) and (ii) are therefore fulfilled.
Paragraph 4 (a)(iii) of the Policy further provides registration and use in bad faith.
Given Respondentís failure to file a Response in this case, the Panel accepts as true all the allegations of the Complaint. Respondentís default does not, however, translate into an automatic ruling for the Complainant. To the contrary, the Complainant still must establish a prima facie showing that, under the Policy, it is entitled to transfer of the domain name.
According to Paragraph 4(b)(i)-(iv) of the Policy the certain circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
The Panelist does not find that the circumstances under Paragraph 4(b)(i)-(ii) are at hand in this particular case. The Panelist has therefore considered whether the circumstances under Paragraph 4(b)(iii)-(iv) could be applicable to this case.
According to the Complainant the Respondent is working as an authorized dealer of maps, including geographical maps, street maps, town plans and hiking maps, for the Complainantís competitor Kompass Karten GmbH. The Respondent primarily uses the domain name <leimgruber.it> and <kompass-italia.it> for its business. The domain names <freytag-berndt.com> and <freytag-berndt.it> are only used as traffic generators for the Respondentís commercial activities.
The Complainantís Community Trademark No. 844 571 freytag & berndt (& design) was registered on July 19, 1999, while the contested domain name was registered on March 28, 2002, re Annex I to the Complaint.
From the facts in the case, i.e. the prior ownership by Complainant of the trademark registration for freytag & berndt and the fact that the Respondent and the Complainant are competitors in the field of map-selling and both doing business in northern Italy, the Panelist finds that it is highly improbable that the Respondent has selected the domain name without knowledge of the Complainantís company and its trademark registration.
The Panelist finds that it is likely that the Respondent was aware of the existence of the Complainantís name and that the Respondentís intention was to direct Internet users to its web sites by using the domain name <freytag-berndt.com>. In view of these facts it can be inferred that the Respondent was in bad faith.
In view of these circumstances and the fact that the Respondent has not proven that he has any prior rights or legitimate interests in the contested domain name or any other connection with the name freytag-berndt it is the Panelistís opinion that the Respondent has registered the contested domain name primarily for the purpose of disrupting the business of the Complainant as they are competitors in the field of selling maps and plans.
By bringing traffic via the domain name <freytag-berndt.com> to his own web sites it is also the Panelistís opinion that by using the domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondentís web site by creating a likelihood of confusion with the Complainantís mark freytag & berndt.
In view of the above it is the Panelistís opinion that the domain name has been registered and used in bad faith in accordance with Paragraph 4 (a) (iii) of the Policy. Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4 (i) of the Policy are 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 and service mark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that Respondentís domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel requires that the registration of the domain name <freytag-berndt.com> be transferred to the Complainant.
Dated: January 23, 2003