WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OBI Bau und Heimwerkermarkte GmbH & Co KG v. Johnson & Johnson
Case No. DBIZ2002-00132
1. The Parties
The Complainant is OBI Bau und Heimwerkermarkte GmbH & Co KG of Albert-Einstein-Strasse 7-9, D-42929 Wermelskirchen, Germany, represented by Rechtsanwalt Moritz Vohwinkel of CBH Rechtsanwalte Cornelius Bartenbatch Haesemann & Partner GbR of Bismarckstrasse 11-13, D-50672 Koln, Germany.
The Respondent is Johnson & Johnson of One Johnson & Johnson Plaza, 8933 New Brunswick, New Jersey, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <obi.biz>, which is registered with Virtual Internet (UK) Limited, European Operations Center, of Elysium House, 126-128 New Kings Road, London SW6 4LZ, United Kingdom.
3. Procedural History
3.1 Complaint was filed and received by email by the WIPO Arbitration and Mediation Center ("the Center") on April 26, 2002, and in hard copy on May 2, 2002. A Complaint Deficiency Notification was sent to Complainant on May 9, 2002. An amendment to the Complaint was received by email on May 14, 2002.
3.2 On May 15, 2002, the Center completed a check of whether the Complaint complied with the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
3.3 On May 15, 2002, the Respondent was notified of the STOP Complaint and commencement of the Administrative Proceedings and was sent a copy of the Complaint and amendment to the Complaint. This was sent by courier, email and facsimile to the addresses appearing under the Registrant and Administrative Contact for the domain name registration. The email communication did not reach the recipient, but there is documentation in the case file confirming the courier delivery and the sending of the facsimile communication and the Panel finds that the requirements of paragraph 2(a) of the STOP Rules have been satisfied. In accordance with the STOP Rules, the date for the filing of a Response was set at June 4, 2002.
3.4 No Response was received by the Center and on June 6, 2002, the Center sent the Respondent a Notification of Respondent Default.
3.5 On June 25, 2002, after receiving the required Statement of Acceptance and Declaration of Impartiality from the proposed panelist, the Center notified the parties of the appointment of Staniforth Ricketson as the single member Administrative Panel in this proceeding. The date for transmission of the Panelís decision to the Center was set at July 9, 2002, in accordance with paragraph 15 of the STOP Rules.
3.6 After perusing all the materials filed in the proceeding, the Panel finds that the relevant requirements of the STOP, the STOP Rules and WIPO Supplemental STOP Rules have been complied with.
3.7 In accordance with paragraph 11 of the STOP Rules, the language of the proceedings is English (this being the language of the registration agreement).
4. Factual Background
4.1 The following matters appear undisputed.
4.2 The Complainant is the owner of the registered German trade mark number 1040693 for the word "OBI" registered in numerous classes of goods. It is also the registered owner of a range of further trade marks comprising the word "OBI" registered internationally as well as several community trade marks (for full details, see Annex 3 of the Complaint).
4.3 The Complainant is the owner of a chain of Do-It-Yourself-Stores ("DIY Storesí) selling the many classes of goods in respect of which the above marks are used. There is evidence provided in Annex 4 of the significant market position that the Complainant occupies in relation to DIY Stores, both in Germany and in Europe and worldwide. According to this, OBI is market leader within Germany, second in Europe (for 1999) and fifth in the world (for 1999). It is further stated that the Complainantís firm slogan is the trademark "OBI".
4.4 The Respondent is the well known US manufacturer of various health products. According to the Complainantís searches, it has no trade mark registrations in respect of the name "OBI" (Annex 6, Complaint), although it notes that the Respondent markets a tampon product named "o.b" and is the proprietor of domain "o-b.biz" (Annex 12, Complaint).
5. Partiesí Contentions
As to the three elements that must be proved by a Complaint under paragraph 4(a) of the STOP, the Complainantís contentions are as follows.
- As to the first (domain name is identical to a trade or service mark in which the Complainant has rights), the Complainant refers to its extensive registrations for the mark "OBI" in respect of a wide number of classes of goods (see Annex 3, Complaint). It points also to the wide usage of the mark as its firm-slogan.
- As to the second element (lack of rights or legitimate interest of the Respondent in the domain name), the Complainant argues that there is no underlying IP claim to the Respondentís registration of the domain name. In this regard, it points to the Registrarís email notification of the Respondentís IP-Claim (Annex 5, Complaint), which states, in relation to any possible trade or service mark of the Respondent, that this is "not provided in bulk". The Complainant notes further that, despite intensive searches, it has found no association between the Respondent and the name "OBI". While an electronic search of the USPTO shows that there are 8 trade marks named "OBI", none of them is registered in favour of the Respondent (Annex 6, Complaint). The Complainant states further that a search of the Respondentís homepage "jnj.com" provided only one result with the term "OBI" (Annex 7). This was a reference to the Oklahoma Blood Institute and related to its use of a product of the Respondent, but the Institute (which is the owner of the domain "obi.org") has no connection to the Respondent apart from this use of the particular product (Annexes 8-10). While there is another domain name "obi.com" (owned by OsteoBiologics Inc), there is no connection here with the Respondent (Annex 11). Despite the wide range of products marketed by the Respondent, the Complainant asserts that there is none that is sold with the name "OBI".
- As to the third element (bad faith by the Respondent in registering or using the domain name), the Complainant contends that the Respondent has no "comprehensible interest" in the domain name and that possibly the registration occurred erroneously. In this regard, the Complainant notes that the Respondent produces a tampon product, which is named "o.b." and has a registered domain name "o-b.biz". This product is marketed worldwide, particularly in Europe (Annex 13). The Complainant therefore suggests that it is probable that the Respondent was monitoring the application and registration of any trade marks colliding with the product name "o.b", and would have been well aware of the Complainantís many registrations of "OBI", which cover class 5, the class for tampons. Accordingly, if the registration of "obi.biz" was not done through error, the Complainant alleges that the Respondent would have known that to effect such a registration would be to exclude the Complainant from registering a domain name based precisely on its (the Complainantís) trade mark. This, the Complainant argues, amounted to bad faith in registration, because the Complainant would have known that consumers would try to find the Complainant under "obi.bizí and would have been directed, against their will, to the Respondentís website. Because of the Respondentís lack of any legitimate interest in the domain name, the Complainant contends that this indicates that the Respondentís primary purpose for the registration must have been to attract traffic to its website and thus disrupt the Complainantís business.
As noted above, the Respondent has filed no Response in this proceeding. Under paragraph 5(e) of the STOP Rules, in such a case the Panel is to decide the dispute based on the Complaint. Furthermore, under paragraph 14(b) of the STOP Rules, when a party defaults in complying with any of the requirements of the Rules, the Panel is entitled to "draw such inferences therefrom as it considers appropriate".
6. Discussion and Findings
Under paragraph 4(a) of STOP, the Complainant must prove the presence of each of the elements listed in that paragraph.
Domain name identical to trade or service mark in which the Complainant has rights
The Complainant has established this requirement of paragraph 4(a).
Lack of rights or legitimate interest of Respondent in domain name
The Complainant has established this element as well. Paragraph 4(c) refers to various matters that can be shown by a Respondent that will be evidence of rights or legitimate interest in a domain name by a Respondent, including ownership of an identical trade mark, the use of the domain name or a corresponding name in connection with a bona fide offering of goods or services, or that the Respondent has been commonly known by that name. As noted above, the Respondent has elected not to file any response in the proceeding, and the Complainant has demonstrated that there is (a) no corresponding trade mark for "OBI" that is owned by the Respondent, (b) that no goods or services have been offered under that name by the Respondent, and (c) that there is no evidence that the Respondent has ever used that name as its business or firm name. While there are other domain name and trade mark registrations consisting of the name "OBI", there is no connection between these and the Respondent. Accordingly, the Respondent has no rights or legitimate interest in the domain name.
Bad faith in registration or use of the domain name
Unlike the UDRP, there is no requirement to show bad faith at both the stages of registration and use of a disputed domain name.
In the present proceeding, a possible explanation for the registration of the domain name by the Respondent is that this was done in error. However, in the absence of any response by the Respondent, the Panel is prepared to draw the more positive inference argued for by the Complainant, namely that this was done by the Respondent in order to block the Complainant from registering a domain name that exactly reflects its (the Complainantís) registered trade marks. The Complainantís submissions as to the Respondentís likely knowledge of the effect of such a registration are persuasive, and the Panel therefore concludes that the registration was made with the requisite bad faith specified under the STOP.
In addition, even if the opposite conclusion on registration were to be reached, it is difficult to see how the Respondent could actually use the domain name in anything other than bad faith. That is, it already has its own domain name registration for its "o.b." product, and must now be presumed to be well aware of the Complainantís registered trade marks. Any use of the domain name would therefore be likely create confusion within the meaning of paragraph 4(c)(iv) of STOP, and would constitute a bad faith use of the domain name.
In light of the above findings, the Panel directs that the domain name should be transferred to the Complainant.
Dated: July 8 2002