WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Reemtsma GmbH v. Mark Shaffhausen
Case No. DBIZ2002-00126
1. The Parties
Complainant is H.F. & Ph.F Reemtsma, GmbH, Hamburg, Germany.
Respondent is Mark Shaffhausen, North Oaks, Minnesota, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <cabinet.biz>. The registrar is Alldomains.com, Inc., California, United States of America.
3. Procedural History
The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy ("STOP") for .BIZ, adopted by NeuLevel, Inc. and approved by Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, in accordance with the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the "STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the "Supplemental STOP Rules").
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on April 26, 2002, and May 3, 2002, (hard copy). The fees prescribed under the STOP Rules and the Supplemental STOP Rules and the STOP Schedule of Fees have been paid by the Complainant. Some apparent deficiencies in the initial Complaint was later rectified by Complainant
The Center sent the Notification of STOP Complaint and Commencement of Administrative Proceeding on July 11, 2002, to the Respondent in the prescribed manner, setting a deadline of July 31, 2002, by which the Respondent could file a Response. The Notification was also sent to the Complainantís representative. The Center also sent a copy of the Complaint (without attachments) to ICANN and the Registrar.
The Respondent filed a formal Response within the time allowed after some correspondence with the Center.
The Panel submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center and on July 31, 2002, the Center notified the parties of the appointment of the Panel and at the same time forwarded the case files to the Panel.
In accordance with Paragraph 4(a) of the STOP Rules, the Center has verified that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the Supplemental STOP Rules. The Panel has reviewed the Complaint and is satisfied with the Centerís assessment that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the Supplemental STOP Rules.
All other procedural requirements appear to have been satisfied.
4. Factual Background
Complainant is a large tobacco company that mainly produces and distributes cigarettes. Complainant has about 11,000 employees and sells it products in more than 100 countries around the world.
Respondentís family owns a kitchen and bath showroom in St. Paul, Minnesota, United States of America called House of Dreams, LLC. The business has been in operation since 1991 and among other items they sell cabinets to homeowners and builders.
5. Parties Contentions
The IP-Claim is based on the registered trademark "Cabinet" of "H.F. & Ph.F. Reemtsma GmbH", Enclosed was a copy German Trademark Registration # DD653920 with a Filing Date of August 20, 1990. The mark is registered for goods in class 34: smokersí articles.
The domain name <cabinet.biz> is identical to the above mentioned trademark.
Queries on US and international trademark databases have not shown that Respondent has registered the trademark Cabinet. Consequently, Respondent has no rights in the domain name.
The Respondent was notified by NeuLevel of Complainants IP Claim. The fact that Respondent proceeded with the application should be considered as proof of the registration being in bad faith.
Respondent does not have a trademark for the generic term "Cabinet". Prior to registering the name, Respondent conducted a search of the U.S. Trademark & Service Mark database and found that only one company has a trademark or service mark registered for "Cabinet". They sell a magazine titled Cabinet. This term is considered generic and is generally available for anyoneís use. Respondent did not research the databases of any other country as our business is conducted solely in the United States.
Complainant does have a trademark for the name Cabinet registered in Germany. However, their product is a brand of cigarettes, not cabinets. Just having a generic name trademarked does not give them exclusive rights to the name "Cabinet". Cabinet cigarettes are generally only marketed in Europe and are not a brand of cigarettes that are familiar to those in the United States. A search of the Google search engine for the term "Cabinet" did not bring up any search results in the first ten pages that were relevant to Complainants product. As result, Respondents use of the domain <cabinet.biz> will not lead to confusion for those within the United States.
The name <cabinet.biz> was registered in good faith. Respondentís family owns a large kitchen and bath showroom in St. Paul, Minnesota, United States of America called House of Dreams, LLC, which has been in operation since 1991. The company sells cabinets to homeowners and builders and is in the process of developing a system through their website where they can design and sell cabinets to people online. Thus, when the opportunity to register the new domain <cabinet.biz> became available, it was registered.
In conclusion, Respondent has a legitimate right to the name <cabinet.biz>. It will be used in good faith to market kitchen and bath cabinetry and the use of the name should not in any way interfere or lead to confusion regarding Complainantís product.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the STOP, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the STOP directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical 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) the domain name has been registered or is being used in bad faith.
The Panel finds the disputed domain name <cabinet.biz> is identical to the cabinet mark owned by the Complainant. In STOP proceedings, the generic top-level domain ".biz" is irrelevant when determining whether a domain name and mark are identical
The prerequisites in the STOP, Paragraph 4(a)(i) are therefore fulfilled
Respondentís rights or legitimate interests
The Complainant has neither explicitly nor tacitly licensed nor otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark.
Further, Respondent has not furnished any evidence that he has any rights in support of the domain name.
However, the word "cabinet" is Ė as pointed out by the Respondent - a generic name that must be regarded as commonly known in American English. The Panel finds that Respondent has put forward reliable information that the domain name was registered and is intended to be used for a website promoting inter alia cabinets. See further reasoning below in the paragraph on bad faith.
The Panel therefore finds that Respondent has a legitimate interest in the contested domain name.
The prerequisites in the STOP, Paragraph 4(a)(ii), cf. 4(c) are therefore not fulfilled.
Paragraph 4(a)(iii) of the STOP further provides registration or use in bad faith.
Paragraph 4(b) regulates, by way of example, the kind of evidence that is required.
The trademark Cabinet is apparently only registered in Germany. There is no proof that the mark is registered or used in other countries and in particular not in the country of residence of the Respondent, USA. This fact alone makes it hard to see that Respondent can be in bad faith.
Further, the Complainant claims that the mere fact that Respondent has proceeded with his application despite the notification of the Complainants IP- claim is proof of bad faith. The Panel cannot adhere to this point of view in this case. The word "cabinet" is a generic word with a commonly known meaning. On the one hand this does not preclude that the word can be a trademark if the word is used for goods and services for which it is not descriptive. On the other hand this means that the name can be used e.g. as a domain name in its generic sense, and it is in principle free for all to use word in this way. The Panel is satisfied that this was the background for Respondents registration of the contested domain name.
The Panel finds the Complainant has failed to satisfy its burden of proof. The Panel thus concludes there has not been any bad faith on the Respondent's part when he registered the domain name.
Consequently, the prerequisites for transfer of the domain name according to Paragraph 4(a) of the STOP are not fulfilled. See WIPO Case DBIZ2002-00175 concerning the domain name <geo.biz> and several previous decisions.
In view of the above circumstances and facts the Panel decides, that the domain name registered by Respondent is identical to the trademark in which the Complainant has rights, but that the Respondent has shown to have a legitimate interest in respect of the domain name, and that the domain name has not been registered nor is being used in bad faith.
Accordingly, the Panel dismisses the Complaint.
Dated: August 13, 2002