WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
METRO International DL AG v. EarlyBird
Case No. DBIZ2002-00019
1. The Parties
The Complainant is METRO International DL AG, of Neuhofstrasse 4, CH-6340 Baar, Switzerland.
Represented by Eva Kessler, Corporate Counsel, of METRO AG, Schlueterstrasse 41, DE-40235, Duesseldorf, Germany.
The Respondent is EarlyBird, of 2600 Lake Austin Blvd, Austin, Texas 78703, United States of America.
Respondent is not represented.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: <makro.biz>.
The Registrar with which the domain name is currently registered is Alldomains.com, Inc., United States of America.
3. Procedural History
3.1 This is a proceeding under the Start-up Trademark Opposition Policy and Rules ("STOP") for the .Biz domain. Complainant having duly filed notice of an IP claim and intent to file a STOP Complaint, the Complaint was filed with the WIPO Center ("the Center") on April 22, 2002, by e-mail, and on April 25, 2002, in hard copy. Following issue by the Center of a Notice of Complaint Deficiency an amendment to the Complaint was filed on June 3, 2002.
3.2 On May 29, 2002, and June 5, 2002, the Center checked the Complaint for formal compliance with STOP and the STOP Rules.
3.3 The Center, having determined that all formal requirements had been met, sent the Notification of Complaint and Commencement of Administrative Proceeding on June 6 and June 7, 2002, by courier and by e-mail to Respondent and to the Administrative, Technical and Billing Contact for the domain name.
3.4 The communication of the Complaint satisfies the provisions of Rule 2(a) of the STOP Rules and the courier and e-mail deliveries to Respondent were effective. The Panel is satisfied that Respondent received due notice of the Complaint.
3.5 The Administrative Proceeding commenced on June 6, 2002, and the Response was due on June 26, 2002.
3.6 No Response was received and Notification of Respondent Default was issued on June 28, 2002.
3.7 Sole Panelist, Desmond J. Ryan, having filed the Statement of Acceptance and Declaration of Impartiality and Independence, the Panel was appointed on July 12, 2002.
4. Factual Background
4.1 The domain name was registered with the registrar in question, on March 27, 2002.
4.2 Complainant is a Swiss company. It states that it is an affiliated company of Metro AG of Germany.
4.3 The only information available on the record with respect to Complainant or its business is that contained in the statement of "Factual and Legal Grounds" set out in the Complaint. That statement is as follows:
"Complainant has trademark rights to trademark "makro." It is owner of several registered trademarks "makro", such as International Trademark No. 549971.
The trademark is well known in Germany and throughout the world and has a good reputation for various Non-food articles. Complainant must assume that the Respondent has no rights to the trademark "makro." There seems to be no connection between Respondent's business and domain name. It is unlikely that Respondent has any legitimate interests in respect of the domain name "makro." Circumstances indicate that the Respondent registered the domain name to either disrupt the business of a competitor (our business) or to attract commercial gain from the Complainant's famous trademark. The domain name was registered in bad faith.
5. Applicable Dispute
5.1 This dispute is one to which the STOP applies. Complainant duly registered an IP claim and duly filed the Complaint on receipt of notice of the registration of the domain name. As applicant for the domain name Respondent would have received notice of Complainantís IP claim and details of its trademarks.
5.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the STOP are satisfied, namely that:
(i) the domain name is identical to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered or is being used in bad faith.
6. Partiesí Contentions
6.1 Complainant's contentions are as set out in the statement quoted in paragraph 4.3 above.
6.2 No Response was filed
7. Discussion and Findings
7.1 Complainant's trademark registrations are for the word "makro in a distinctive script." Complainant has produced no evidence of any use by it of the trademark otherwise than in that form. The question remains however, as to whether or not the mark should be treated as identical to the domain name for the purpose of these proceedings.
As pointed out by the learned Panelist in Qtech Business Systems Pty Ltd. v. Coldwell Banker Burnet, WIPO Case DBIZ2001-00004,
"there should be identity between marks only when an average consumer would regard them as the same, in the sense that any differences, whether of addition, omission or modification, were "minute or wholly insignificant"."
The learned Panelist then went on to state, without deciding, that
"it is probably therefore appropriate in the present case to regard the decorative motifs in the registered mark, which are undoubtedly minor, as being "minute or wholly insignificant"."
The mark consists of the word "makro" in lower case script with each letter outlined. The outlining is common place and does not significantly effect the identity of the word as a mark. The Panel is therefore prepared to treat it is "minute or wholly insignificant."
The Panel finds that the domain name is identical to a trademark in which Complainant has rights.
Rights or Legitimate Interests
7.2 In these proceedings the onus is on Complainant to show that each of the requirements of para. 4(a) of STOP is satisfied. The facts as to whether or not a Respondent has any rights or legitimate interest in a domain name are ordinarily principally within the knowledge of the Respondent. A Complainant can often discharge the onus of showing lack of right or legitimate interest by setting up a prima facie case and reverting the onus of rebuttal of that prima facie showing to the Respondent. The onus proof is thereby reversed, notwithstanding the fact that by para. 4(a) the burden of proof is placed upon the Complainant. The fact remains however, that the Complainant must at least make some prima facie showing. All that Complainant has done here is to state that "Complainant must assume that the Respondent has no rights to the trademark "makro"." There is no basis given for that assumption. No searches appear to have been carried out, no enquiries made, and no correspondence entered into between Complainant and Respondent. Complainant's mere assertion of an unsupported assumption is not enough to constitute a prima facie showing. Absent such prima facie showing, no onus of rebuttal is placed on Respondent. Though Respondent's failure to Respond would normally be a powerful factor in Complainant's favour, Complainant here has failed to make even a prima facie showing.
7.3 The Panel therefore finds that Complainant has failed to satisfy ground 4(a)(ii) of STOP, and the Complaint must therefore fail.
Bad Faith Use or Registration
7.4 The Complainant having failed under para. 4(a)(2), it is unnecessary to consider questions of bad faith. The Panel notes however, that Complainant has produced no evidence sufficient to establish a prima facie case, and has again relied on mere assertion, that its trademark is "well known in Germany and throughout the world." Complainant has produced no evidence to support this assertion, and in particular, no evidence as to why a trademark consisting of the common English word "makro" would be likely to be known to the American-domiciled Respondent. The fact that Respondent would have received a notice of Complainant's IP claim is not, alone, sufficient to establish the bad faith requirement, particularly, as here, the trademark is a common English word, registered only in jurisdictions outside the United States and in respect of a limited range of goods, (see Network Associates Technology, Inc v. Lenow International, Inc, WIPO Case DBIZ2001-00043).
7.5 The Panel finds that Complainant has failed to show registration or use of the domain name in bad faith.
8.1 Complainant having failed to satisfy the requirements of paragraph 4(a)(ii) and 4(a)(iii) of STOP, the Complaint is dismissed.
Dated: July 23, 2002