WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Voigtländer GmbH v. John Voigtlander
Case No. D2003-0095
1. The Parties
The Complainant is Voigtländer GmbH, of D-90763 Furth, Germany, represented by Gramm, Lins & Partner GbR of Germany.
The Respondent is John Voigtlander, of Pensacola, Florida 32507-4179, United States of America.
2. The Domain Name and Registrar
The disputed domain name ("the domain name") <voigtlander.com>, is registered with Network Solutions, Inc. ("the Registrar") of 505 Huntmar Park Drive, Herndon Virginia 20170, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") in hard copy on February 10, 2003. The Center acknowledged receipt of the said Complaint on February 12, 2003.
On February 12, 2003, the Center transmitted by email to the Registrar, a request for registrar verification, in connection with the <voigtlander.com> domain name. On the same day, the Center also requested for the Complaint and annexes to be transmitted to the Center in electronic form in accordance with paragraph 3(b) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").
On February 13, 2003, the Center received the Registrarís verification response, confirming, inter alia, the Registrant, Administrative Contact, Billing Contact, and Technical Contact details.
On February 13, 2003, also, the Complaint in electronic form was received at the Center. On February 14, 2003, the Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules, including the payment of the requisite fees.
In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint filed and the necessity of responding to this Complaint within 20 days of the commencement date, with the last day for sending the Response being March 6, 2003.
The Respondent did not submit any response by the due date.
Evidence produced by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the Proceedings.
On March 7, 2003, the Center duly notified the Respondent of the default in complying with the deadline (of March 6, 2003) indicated in the Notification of Complaint and Commencement of Administrative Proceeding for the submission of Respondentís Response in this case.
The Center then notified the Respondent of the consequences of the default as follows:
(i) The Center shall proceed to appoint an Administrative Panel based on the number of panelists designated by the Complainant.
(ii) The Administrative Panel would be informed of the default, and would decide in its sole discretion whether to consider any late Response (if submitted).
(iii) All case-related communications will continue to be sent to the Respondent using the available contact details or the contact details in any late Response (if submitted).
On March 8, 2003, the Center received the Respondentís delayed response in electronic form.
On March 10, 2003, the Center acknowledged receipt of that email communication.
The Respondent has given no reasons for failing to lodge a Response within the 20-day time limit. The Respondentís late Response does not also fully comply with the Rules, in particular with regard to forwarding a copy to the Complainant.
However as the delay and lack of strict compliance regarding notice to the Complainant, has not caused prejudice to the Complainant and has not inconvenienced the Panel in any way, the Panel exercises its discretion in favor of allowing in the late Response.
A supplemental communication was received from the Complainant on March 17, 2003, responding to the Respondentís late Response of March 8, 2003.
On March 21, 2003, the Center appointed Uwa Ohiku, Esq., as the Sole Panelist in this matter. The Panel finds that it was properly constituted in accordance with the Rules and the Supplemental Rules. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center, to ensure compliance with the Rules, paragraph 7.
Absent exceptional circumstances, the Panel was required to issue a decision on or prior to April 4, 2003. However on March 31, 2003, the Panel extended the due date for the decision to April 18, 2003, pursuant to paragraph 15(b) of the Rules.
On April 10, 2003, the Panel in its sole discretion under paragraph 12 of the Rules requested via Procedural Order No. 1, further documents from the Respondent in support of Respondentís claims to the disputed name as indicated in Respondentís late response dated March 8, 2003, with a deadline of April 14, 2003, at 12 noon American Eastern Time.
The Respondent sent its additional communication in electronic form, on April 14, 2003, pursuant to Procedural Order No.1. The Complainant sent an additional unsolicited communication in electronic form to the Center, the Panel and the Respondent on April 15, 2003.
4. Factual Background
The Complainant Voigtländer GmbH is a private Limited Company registered under the registration number HRB 8005 at the local court of Furth (Germany) with an effective domicile in Furth (Germany).
The Complainant is owner of trademark rights in "Voigtländer" in many countries all over the world. The trademarks indicated in the schedule attached to the Complaint are registered in favor of the Complainant in respect of "optical and photographical apparatus, instruments and utensils". The trademark Voigtländer has also been used for decades and the Complainant asserts that it is well known by the relevant consumers. Furthermore the word "Voigtländer" is the company name of the Complainant.
The Complainant is also the owner of several domain names for "voigtlaender" under the top-level domains e.g. ".com", ".net", ".org", ".us", ".info", ".biz", ".de", ".ca", and offers its photo products under said domains.
According to the Registrarís (Network Solutionsí) verification response to the Center, John Voigtlander is the listed registrant of the disputed domain name <voigtlander.com>.
According to a WhoIS database report submitted by Complainant, the record of registration shows that the domain name <voigtlander.com> was formerly registered in favor of John OíKeefe with the following details:
Registrant: OíKEEFE, John
3141 Bishop Street, Apt. #1
Cincinnati, OH 45220-2106
Administrative Contact: Same as above.
Technical Contact: Verisign, Inc.
This database report shows that the record of registration for the disputed domain name was created on April 20, 1999, and last updated on October 7, 2002.
As of October 1, 2002, the domain name owner John OíKeefe used the disputed domain name <voigtlander.com> to announce a "Future Home of the Best Voigtlander Site on the internet", showing a camera objective.
Complainant sent a cease and desist/warning/cancellation demand to John OíKeefe by email and airmail on October 7, 2002, using the addresses indicated in the WhoIS database. The email could not be delivered and was returned to Counsel for Complainant, indicating "User Unknown". The letter sent by airmail however apparently reached the Respondent as a subsequent WhoIS database check later revealed the following changes had been made to the domain name:
Registrant: Voigtlander, John
3083 Clover Road
Bethel, OH 45106-9313
Administrative Contact: Same as above.
Technical Contact: Verisign, Inc.
This database report shows that the record of registration for the disputed domain name was created on April 20, 1999, and last updated on December 5, 2002.
The homepage of the domain name was also amended as follows: "Only Voigtlander is the Future Home page of John Voigtlander, photographer." In addition, the following disclaimer was entered: "Only Voigtlander is in no way affiliated with the Voigtlander camera company of Germany!!!"
The style of the homepage remained unchanged, with the camera still visible. The telephone number for the Administrative Contact of John OíKeefe and John Voigtlander remained the same, as indicated in the WhoIS reports.
According to a whitepages.com check of the address indicated in the WhoIS database of December 5, 2002, (3083 Clover Road, Bethel OH 45106-9313) no Mr. Voigtlander could be found under the zip code.
In another whitepages.com search for the state of Ohio, only Mr. John H. Voigtlander, residing in Miami OH 45150 could be found by a search for John Voigtlander. A third whitepages.com search indicated that no Mr. John Voigtlander is registered in Florida.
"Only Voitlander" is registered in the State of Florida as a Business Name under Certificate No. 27-00-073755-52-6 effective February 6, 2003, and expiring December 31, 2003, in the name of OíKeefe, John Voigtlander, 12301 Gulf Beach Hwy Pensacola FL 32507-9050. Only Voigtlander, with address at P.O. Box 34179 Pensacola FL 32507, is authorized to engage in the business/profession/occupation of Photographer/Photo Studio under Escambia County Florida Licence Number 590766 until September 30, 2003.
Jurisdictional Basis for Administrative Proceeding
The Service Agreement in effect between the Respondent and Network Solutions, Inc., (the "Registrar"), subjects the Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved Dispute Resolution Service provider, of which the WIPO Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Partiesí Contentions
The Complainantís contentions are as follows:
The disputed domain name <voigtlander.com> is identical to or confusingly similar to the Complainantís trademark "Voigtländer" in which the Complainant has rights in many countries all over the world, and which is also the well-known company name of the Complainant. The trademarks have been used for cameras all over the world for decades and "Voigtländer" is a very famous product for experienced photographers, with many fan clubs existing which can be proved by typing the term "voigtlander" in the search engine "www.yahoo.com". The trademark "Voigtländer" is well known by the relevant consumers in the photographical apparatus business/field, and the disputed domain name <voigtlander.com> is identical or at least confusingly similar to the Complainantís trademark "Voigtländer" protected and used for cameras.
The Complainant is the owner of several "voigtlaender" domain names under the ".com", ".net", ".org", ".info", ".biz", etc., top-level-domains, offering their photographic products under these domains.
The disputed domain name consists of the word "voigtlander" which is the usual English and "internet" version of the trademark of the Complainant due to the fact that the English Alphabet does not allow the umlaut on "A" and/or "a", and a consumer is misled and assumes that information is being obtained from the true owner of the trademark "Voigtländer" when contacting the said disputed domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name, as it was formerly registered in favor of John OíKeefe of Ohio, USA, as seen from the WhoIS database check of October 1, 2002, and that after sending a warning letter to John OíKeefe, the WhoIS data was changed with respect to the Registrant, who became John Voigtlander, and with respect to the homepage. The telephone details of John OíKeefe and John Voigtlander remained the same. Various Whitepages.com searches carried out by the Complainant to trace a John Voigtlander at the given addresses failed. In view of these reports, the registrant John Voigtlander is simply using a pseudonym or nickname, but remained the same person John OíKeefe as owner of the disputed domain name. However, should the domain name actually have been assigned to a different holder, then the assigneeís surname is not ĎVoigtlanderí; but the name has been chosen to claim legitimate interests regarding the disputed domain name, and such a claim cannot create any rights or legitimate interests in the disputed domain name.
That in the unlikely event that there indeed exists a John Voigtlander to whom the disputed domain name had been transferred, there can be no claim to any legitimate interests since the transfer occurred after the warning letter to the former registrant John OíKeefe had been received simply to avoid legal steps against the former registrant. In any case the registrant should provide proof of his true identity by presenting a certified copy of his passport or identity card.
The disputed domain name was registered and is being used in bad faith.
The Respondentís reference to the Complainantís well known company name and trademark in his home page when planning to establish Ďthe best Voigtlander site on the internetí is further confirmation of the fame of the Voigtländer name. The former registrant John OíKeefe must have had knowledge of the trademark rights and the company name of the Complainant before filing an application for registration of the disputed domain name, and that he intended to make his photo-website more attractive for internet users by occupying the company name and trademark of the Complainant. However upon receiving the warning letter from the Complainantís representatives, the former Registrant John OíKeefe tried to hide behind a John Voigtlander who did not exist according to various Whitepages.com researches carried out, in respect of the States of Ohio and Florida. Since the telephone number and the style of the homepage of both the former and present registrants (John OíKeefe and John Voigtlander) remained the same and/or similar, the registrant is being dishonest, and is trying to establish some form of legitimate rights and interests in the disputed domain name, by choosing the surname "Voigtlanderí, hoping to avoid any legal process thereby, which is evidence of Respondentís bad faith.
The elements of bad faith as analyzed by the panel in Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, are also present in this case, and taking all the circumstances of this case into consideration, a finding of bad faith should be reached by this Panel. These circumstances are: (1) The trademark "Voigtländer" is well known with a strong reputation; (2) The Respondent changed the registrantís name from John OíKeefe to John Voigtlander to claim rights or legitimate interest in the "Voigtlander" name, (3) Concealment of Respondentís true identity, and operating under a fictitious or assumed name with the telephone numbers remaining unchanged; (4) Providing false contact details in breach of the Registrarís agreement; (5) The actual and intended use of the disputed domain name is an infringement Complainantís rights.
That in accordance with the paragraph 4(i) of the Policy therefore, the Administrative Panel should issue a decision that the contested domain name be transferred to the Complainant.
Respondentís late Response denies every one of the Complainantís allegations against him, and asserts and contends:
That Respondentís full legal name is John Edward Voigtlander OíKeefe, his mother being Fanny Voigtlander, late, of Blanchester, Ohio, USA, and that he was named for both his grandfathers and his uncle - his paternal grandfather being Edward OíKeefe and his maternal grandfather John Voigtlander. His Uncle was John Voigtlander Jr. of Milford, Ohio, USA who is now late. He and his family have been Voigtlanders for thousands of years, and may or may not be distantly related to the Voigtlander camera/lens folks. He is the 4th generation Voigtlander in America. He is a photographer and a computer professional full time, and has worked part time as an officer of the US under the United States Coast Guard Auxiliary for the past 5 years. His photographer name is John Voigtlander, with a business fully licenced in the State of Florida, and his mailing address and Florida Licence nos. are:
Escambia County Florida Licence Number 590766
Florida Tax Number 27-00-073755-52-6
Being the last male Voigtlander in his immediate family he named his business "Only Voigtlander" to honor that fact, and as the USA reserves anyone the right and privilege to use either or both parentsí surname, he chose to use both for only honest intentions. John Voigtlander is not an alias, but one of his two legal names in America.
That the Voigtländer lens began its start in 1756, so the trademark has been around for less than 250 years. The German Voigtländer trademark has a different letter in its name than the Respondentís name; it even looks different visually and that the actual letter is not available in American language. In view of this difference his name is not the same as the German Voigtländer and thus not a trademark infringement.
That the searches carried out on him were incomplete.
That as a hobby he collects and presently owns over a dozen vintage Voitgländer cameras, binoculars, lenses from 1800-1950, and uses them regularly in his photography and computer business. He has a collection of old Voigtländer manuals, Voigtländer information, old Voigtländer catalogs etc., and may well have the most extensive collection of Voigtländer information in the US, and planned to have the best Voigtländer information site on the Internet. He may still do so once the present administrative proceeding is cleared up. He plans to donate his entire Voigtländer collection to his United States College Alma Mater. He also has a camera repair facility set up to repair any Voigtländer camera, which is complete with all the tools and manuals, and he is presently interviewing someone he can train to run this repair facility; then he will be set up to be a "complete Voigtländer repair facility for the whole world". He is not aware of any other facility like this. The Voigtländer factory in Germany closed in 1992.
The Complainant is trying to use intimidating tactics to get him to cancel the disputed domain name so that the Complainant could register it.
6. Supplemental Filing
A. Complainantís Supplemental Filing
The Respondent held the domain name under John OíKeefe and only after receipt of the first warning letter of October 7, 2002, did Respondent change his name in the register to John Voigtlander. The Respondent failed to respond to the warning letter and to clarify his position, but tried to hide behind a name, which he alleges is his motherís family name.
The Respondent is, according to his Response, well aware of the Voigtländer company and the Voigtländer trade name of the Complainant, and according to his own admission, is collecting cameras and equipment for products of Complainant and plans to have the best information site for Voigtländer products on the internet.
Even though as alleged by the Respondent, the production company in Germany is closed, the company, Voigtländer GmbH still exists and offers its products in the market. These being manufactured by third parties, a famous recent product of the Complainant is the Voigtländer Bessa camera, introduced in 1999, for which actual offers in the USA can be found under the website "www.central-camera.com/voigtlander/bessa/info.htm".
It is clear from the Respondentís late Response the domain name was registered to make use of the well known trademark of the Complainant, and to lead interested internet users to his "Best Voigtlander Information Site" where he intends to present products of the Complainant.
The Respondent registered the following additional domain names on February 12, 2003, <onlyvoigtlander.com>, <onlyvoigtlander.org>, <onlyvoigtlander.net>, and this is a further attempt to make use of the Complainantís famous trademark "Voigtländer". The addition of "only" gives the impression that the site would be dedicated to Voigtlander-related matters alone, and in view of the foregoing circumstances, the three new domain names should be considered by the Administrative Panel in reaching a decision, and should be cancelled.
The Panel will now examine the provisions of the Policy, the Rules and other rules which the Panel deems applicable, to determine whether to accept the Complainantís supplemental filing.
Paragraphs 14 (a) & (b) of the Rules provide that:
(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the Complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
Paragraph 15 (a) of the Rules provides that:
" A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
Paragraph 10 (b) of the Rules provides that:
"In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case"
Paragraph 10 (d) of the Rules provides that:
"The Panel shall determine the admissibility, relevance, materiality and weight of the evidence"
The Panel is the view that accepting the Complainantís additional communication does not prejudice either Party in any manner, and exercises it sole discretion to allow it. The same applies to the Complainantís supplemental filing of April 15, 2003, detailed below.
B. Respondentís Response to the Administrative Panelís Procedural
Order No. 1
Pursuant to the Administrative Panelís Procedural Order No. 1 the Respondent furnished further documents in support of Respondentís claims.
Respondent contends as follows:
He registered the disputed domain name almost four years ago to honor his family name via the internet, and not to make any financial gain, since preserving his family name is of utmost importance to him, being the last male in his family with Voigtlander as part of his name. He is named after his grandfather and Uncle, both John Voigtlander; his grandfather being John Henry Voigtlander; his Uncle, John Henry Voigtlander JR; his mother, Fanny Voigtlander and his Aunts in order of age being, Mary, Louise, Dorothy, Annabelle, Cleo & Frances. The attached documents, namely three pages of handwritten names & dates taken from his grandfatherís bible which was given to him prior to the death of his Uncle and the obituaries of John Voigtlander JR and Annabelle L. Voigtlander support the above claims.
The domain name will not compete with the Complainantís but will enhance their place in the world market with his love of photography and teaching it to others, and losing it would be a huge loss, having invested both financially and personally in the domain name for the past four years, getting it ready to launch his small creative venture "Only Voigtlander".
His paid and only email address is "email@example.com", with an extensive mail list using this address. In January 2003, he moved to Florida to pursue his dream of combining his digital & film photography expertise with his computer expertise, and the two documents attached to this supplemental filing, are his legal permits for doing business in Florida, his business name being "Only Voigtlander" because he is the last Voigtlander in the family. His photographer & business name has been John Voigtlander for the past eight years.
The reason he could not be contacted was that he had lived full time since November 2001, in an Airstream Recreational Vehicle and that until recently, his cellular telephone number was different. The Rick Carmean, which a database check revealed against his former address in Bethel, OH, is his brother-in-law, and he stayed on their property with his Airstream from July-November 2002, until he began to head south to Northwest Florida. He belongs to a Recreational Vehicle Club of Airstream Owners, and has recently begun to write a monthly column which will include photographs for the Cincinnati Ohio Unit of the Wally Byam Caravan Club International, Wally Byam being the original owner and builder of the Aluminium Airstream recreational vehicle, and that the Airstream website is "http:www.cou-wbcci.org/", with his column at page 5 of the April 2003 newsletter.
C. Complainantís additional filing
The Complainant submitted a further unsolicited communication on April 15, 2003, and contends as follows:
The Respondentís evidence reveal Respondentís true name as OíKeefe, with no interest in a supposed grandfatherís name; the Respondent is not named in any of the obituaries he provided despite the high interest in his supposed "Voigtlander" family; the exclusive term "Only Voigtlander" and Respondentís plans for using the domain name in dispute for photographer services and camera collection including the famous Voigtländer-cameras of the Complainant indicate that Respondentís true intention is to take advantage of the Complainantís name for his domain name, which is proof of the Respondentís bad faith.
7. Discussion and Findings
Request for Consolidation
In Complainantís response to Respondentís late Response of March 8, 2003, Complainant requested that this Administrative Panel consolidate the three recently registered domain names <onlyvoigtlander.com>, <onlyvoigtlander.org> and <onlyvoigtlander.net> in the present proceedings, and order their cancellation, as they are a further attempt by the Respondent to make use of the Complainantís trademark. In particular, the addition of "only" gives the impression of an exclusive Ďvoigtlanderí site.
The provisions of the Rules and the Policy regarding consolidating matters are:
Paragraph 3(c) of the Rules:
"The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder"
Paragraph 4(f) of the Policy:
"In the event of multiple disputes between you and a Complainant, either you or the Complainant may petition to consolidate the disputes before a single Administrative Panel. This Petition shall be made to the first Administrative Panel appointed to hear a pending dispute between the parties. The Administrative Panel may consolidate before it, any or all such disputes in its sole discretion, provided that the disputes being consolidated are governed by this Policy or a later version of this Policy adopted by ICANN".
Having examined the circumstances surrounding the present dispute and taking into consideration the inevitable time and trouble that will be caused if the three additional domain names are considered in this proceeding, the Panel decides it shall not accept to consider the three additional domain names specified in the Complainantís supplemental filing.
General Principles under the Policy and the Rules
Paragraph 4(a) of the Policy places on the Complainant, the burden of proving:
(i) That the Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists the following circumstances, which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith:
(i) The Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location or of a product or service on the Respondentís website or location.
Paragraph 4(c) of the Policy sets out the following circumstances, again without limitation, which may be effective for a Respondent to demonstrate that it has rights to, or legitimate interests in, the disputed name, for the purpose of paragraph 4(a)(ii) of the Policy:
(i) Before any notice to the Respondent of the dispute, use by the Respondent 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) Where the Respondent as an individual, business, or other organization has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) Where the Respondent is 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.
Paragraph 15(a) of the Rules instructs the Panel to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any other rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
Complainant has established its rights in the trademark "Voigtländer" as per the schedule of trademarks showing registration in many countries all over the world, and the annexures attached to the Complaint. The dates of all but four of the said trademark registrations are prior to the date of creation of the contested domain name <voigtlander.com>.
This Panel finds that <voigtlander.com> is identical to the trademark "Voigtländer" irrespective of the umlauts in the German equivalent, since the English or American alphabets do not have umlauts. The disputed domain name <voigtlander.com> consists of exactly the same verbal elements as the Complainantís protected trademark "Voigtländer" except for the umlauts, and the gTLD, .com. The addition of the gTLD and the absence of the umlauts are not significant in determining whether the domain name is identical or confusingly similar to the mark. The difference between the Complainantís trademark and the domain name <voigtlander.com> is the umlauts, and this is not sufficient to erase the identical nature of both names.
It has been established in numerous cases, that the presence of the gTLDs is irrelevant in deciding whether a domain name is identical or confusingly similar to a registered trademark or service mark.
See: Minnesota Mining & Mfg. Co v. Taylor, 21 F. Supp. 2nd 1003, 1005 (D.Minn.1998) finding <post-it.com> and "Post-It" to be the same; Interstellar Starship Services Ltd v. Epix Inc., 983 F. Supp. 1331, 1335 (D.Or.1997) finding that in the context of internet use, <epix.com> is the same mark as "EPIX"; K2r Produkte AG v. Jeremie Trigano, WIPO Case No. D2000-0622 finding that <K2r.com> is identical to "K2r", and other numerous cases.
For purposes of the Policy, it is sufficient for establishing the identical or confusingly similar nature of the disputed domain name and the trademark if there is virtual or essential identity between them, and the Panel sees no reason to deviate from the sound reasoning in the numerous cases on this issue.
The Panel therefore finds that the disputed domain name <voigtlander.com> is identical to the trademark "Voigtländer" of the Complainant.
B. Rights or Legitimate Interests
It is clear that the Respondent did not have the Complainantís authority to use the "Voigtlander" name.
It is therefore necessary to consider whether any of the circumstances described in paragraph 4(c)(i-iii) of the Policy might be applicable or whether the Respondent might have a right or legitimate interest in the domain name on some other basis.
Referring to paragraph 4(c)(i) of the Policy as against the Respondentís conduct, it is clear to the Panel that no significant use has been made of the disputed domain name.
Regarding <voigtlander.com>, the homepage initially indicated "a future home of the Best Voigtlander site on the Internet". The same homepage later indicated that "Only Voigtlander is the future home page of John Voigtlander, photographer", with a disclaimer that "Only Voigtlander is in no way affiliated with the Voigtlander Camera Company of Germany!!!". Nothing else.
In the Panelís view, this cannot be regarded as "use" within the ambit of paragraph 4(c)(i). The fact of registering the domain name in 1999, and there being in 2003 nothing else but the above homepage, does not, to this Panel, meet the requirements of use in 4(c)(i).
The Respondent has provided proof of the Florida Licence Registration No. 590766 and Business Name registration No. 27-00-073755-52-6 for Only Voigtlander in proof of the Ďdemonstrable preparations to useí the disputed domain name. However, it would appear that registration no. 590766 may have been obtained on or around October 29, 2002, since it expires on September 30, 2003. Registration no. 27-00-073755-52-6 clearly states its registration date as February 6, 2003, due to expire on December 31, 2003. It may have been applied for, on January 1, 2003, according to the certificate tendered by the Respondent.
Complainant has furnished evidence that its warning letter was sent to the Respondent (John OíKeefe as he then was), by email and airmail on October 7, 2002, and steps were thereafter taken to transfer the disputed domain name from John OíKeefe to John Voigtlander; amend the homepage details; register Only Voigtlander as a Business Name and obtain a Licence under Escambia County, Florida, and in February 2003, register the following additional domain names: <onlyvoigtlander.com>, <onlyvoigtlander.org>, <onlyvoigtlander.net>.
It is clear that this chain of events began with the receipt of the Complainantís warning letter of October 7, 2002. This letter put the Respondent on notice that steps would be taken to get the disputed domain name cancelled or removed if the Respondent did not take the requested action itself at the expiration of the October 18, 2002, deadline.
By reason therefore of the fact that the Respondent only took these steps after notice of this dispute or possible dispute, the Panel is of the view that paragraph 4(c)(i) has not been met by the Respondent as against the disputed domain name, as the Respondent did not use or demonstrate any preparations to use, the domain name in connection with a bona fide offering of goods or services.
Since the Panel has determined that there has not been any use or demonstrable preparations to use the disputed domain name, the issue of whether or not the use or the offering of goods or services was bona fide is otiose.
The next question to determine can be found under paragraph 4 (c)(ii) of the Policy, and this is whether the Respondent as an individual, business or other organization has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights.
The Panel respectfully notes that the relevant period for determining if this requirement exists, is at the latest the period prior to the Respondent receiving notice of the Administrative proceedings against him, not after.
Complainant has established that prior to the warning letter to the Respondent, the <voigtlander.com> domain name was registered in the name of John OíKeefe. After receiving the warning letter, the registrantís details were changed to John Voigtlander, but the other contact details remained the same. Respondent never replied to the warning letter.
Complainant has also established through various WhoIS and Whitepages searches that the contact details were faulty and that no John Voigtlander existed at the places indicated in the registration document. The Complainant has also established that no correspondence could be delivered to the email address provided against the domain name.
Respondent furnished the following documents further to the Panelís Procedural Order No. 1 requesting evidence of claims to the Voigtlander name:
(i) Florida License Registration No. 590766 for Only Voigtlander
(ii) Business Name registration No. 27-00-073755-52-6 for Only Voigtlander
(iii) Three pages of handwritten names & dates taken from his grandfatherís bible which was given to him prior to the death of his Uncle and
(iv) The obituaries of John Voigtlander JR and Annabelle L. Voigtlander.
Having examined these documents, the crucial question which the Panel has to rule upon, is whether any or all of them establish Respondentís claim to rights or legitimate interests in the name Voigtlander.
The Panel finds as follows:
(i) The two Business registration documents for Only Voigtlander, establish that the Only Voigtlander business was registered, and may be able to claim rights in the <onlyvoigtlander> domain names on that basis.
(ii) However, since the Respondent registered the Only Voigtlander business after being put on notice of this dispute or possible dispute by the Complainantís warning letter, such claims cannot satisfy the requirement in paragraph 4(c)(ii) of the Policy that the Respondent, as an individual, business, or other organization must have been commonly known by the domain name.
The emphasis here is not only on the period prior to having notice of the dispute, but more importantly, on the qualifying word "commonly".
(iii) The Respondent has not provided any evidence to prove that as a business, it had been commonly known as Only Voigtlander. It is inconceivable that anyone would accept the Business registration certificates as establishing this requirement.
(iv) The Respondent has made numerous assertions on his business, including how long he has been carrying on the business. However, assertions not backed with proof cannot be taken as proved facts. See, e.g., DIMC, Inc. v. Phan, WIPO Case No. D2000-1519 (February 20, 2001), rejecting claim that Respondent was known by nickname "Krylon" given absence of evidence of when alleged nickname was adopted and how it was used.
(v) Given the interest and pride which the Respondent claims he has in the Voigtlander part of him, and the numerous assertions made in both of his responses, the Panel would have liked to see the Respondent mentioned in the "bible" entries, or at least linked in some manner, to these entries, e.g. through his mother.
(vi) The Respondent is not linked in any form to the two obituaries supposedly of his Uncle and Aunt. Since his mother is deceased, then his motherís obituary should have been provided to establish the link he claims to the Voigtlander name, as this would have been indicated therein.
(vii) Some other forms of evidence which the Panel would have welcomed are:
- Respondentís birth and/or baptismal records, duly certified
- Respondentís passport or other identification documents, duly certified
- Respondentís registration records in school, duly certified
- Respondentís medical records, duly certified
- Respondentís records at the US Marines which he claimed he served for many years, duly certified
- a host of other documentary forms of evidence
The Respondent, however, chose to only provide documents which do not link him, in any manner, to the Voigtlander name he claims he has rights and legitimate interests in.
Under paragraph 14(b) of the Rules, in the absence of exceptional circumstances, the Panel is entitled to draw such inferences as it considers appropriate, from a partyís non-compliance with any provision of, or requirement under the Rules or any request from the Panel. As the Respondent failed to provide evidence that could readily have been available, this Panel infers that the Respondent is not entitled to claim any rights or legitimate interests in the Voigtlander name.
The Panel therefore finds that the Respondent has not satisfied the requirement of paragraph 4(c)(ii) of the Policy.
Turning to the requirement under paragraph 4(c)(iii), rights and legitimate interests in a disputed name may be established where Respondent is 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 in issue.
The Panel has already held that there has been no significant use of the disputed domain name to establish rights and legitimates in the domain name under Paragraph 4(c)(i). Same applies to whether such use meets the paragraph 4(c)(iii) requirement. Even if there was significant use, such use could not have been legitimate (in view of the Finding that the Respondent was not entitled to the Voigtlander name), non-commercial (because the Respondent made it clear his plans are to have the best Voigtlander site on the Internet, and made no pretense that the websites would be used for commercial purposes) or fair use.
This Panel therefore finds that the Respondent has not met the requirement of paragraph 4(c)(iii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) lists a number of circumstances, which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith, and if just one of those circumstances is proved, a finding of bad faith must be reached.
From the submissions of both parties, it is clear that the Voigtlander name has acquired some degree of fame and reknown, in particular, regarding cameras. The Respondent admits that much and even more.
Respondent did not deny knowledge of the Complainantís name. In fact, according to the Respondent, "the Voigtlander lens began its start in 1756, so the trademark has been around for less than 250 years"; "As a hobby I collect and own over a dozen vintage voigtlander cameras, binoculars, lenses from 1800-1950 and use them regularly in my photography & Computer business"; "I have a collection of old voigtlander manuals, voigtlander information, old voigtlander catalogs etc. I may have the most extensive collection of Voigtlander information in the US. I planned to have the best Voigtlander information site on the Internet"; "The Voigtlander factory no longer exists in Germany. It officially closed in 1992"; "I even have a camera repair facility set up to repair any Voigtlander camera. It is complete with all the tools and manuals. I am presently interviewing someone I can train to run it. Then I will be set up to be a complete Voigtlander repair facility for the whole world. I am not aware of any facility like this"
The Panel is of the view that the Respondentís various actions do not only fall generally within the ambit of paragraph 4(b), they fall, in varying degrees, within paragraph 4(b)(ii-iv).
As the circumstances indicating bad faith registration and use are not exhausted in paragraph 4(b) of the Policy, the Panel also infers these bad faith elements generally from Respondentís calculated steps and actions taken in respect of the Voigtlander name. There appears to be a definite fascination, on Respondentís part, with the name and all things related thereto. Unfortunately, as the Panel indicated above, the Respondent has failed to prove that he is entitled to the relationship he proffers to have with the Voigtlander name.
The fact that by Respondentís own admission, he planned to have the best Voigtländer information site on the Internet with respect to the Complainantís products and accessories, without the Complainantís authority or licence, can only be seen as a plan to compete directly with the Complainant and/or disrupt Complainantís business. It is clear to this Panel, that having extensively researched on the Voigtländer company and products, the Respondent planned to set up a site that would give any internet user the impression that they were at a valid and authorized site of the Voigtländer company.
Respondentís actions and statements made, completely contradict Respondentís later assertion in the delayed supplemental filing that "I know www.voigtlander.com will in no way compete with the complainantís company. I believe it would only enhance their place in the world market with my love of photography & teaching it to others".
The Panel wonders, in the light of all prevailing circumstances how this could be so.
Some other instances pointing to bad faith on the part of the Respondent are:
- Original domain name registrant changed from John OíKeefe to John Voigtlander after receiving Complainantís warning letter. Respondent never acknowledged or responded to the warning letter.
- Respondent being aware of the trademark Voigtländer and company long before registering the disputed domain names; Respondent had gathered extensive information on the company, its products etc.
- Providing contact details that could not be used e.g. email address which could not be located, violating the domain name registration agreement.
- The inability of Whitepages.com searches to locate the Respondent at the contact addresses provided, (even address provided on March 8, 2003).
- Registration of the three <onlyvoigtlander> domain names after receiving some form of notice of this dispute or possible dispute.
According to the Panel in Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 of February 18, 2000, "the Administrative Panel must give close attention to all the circumstances of the Respondentís behavior", in determining whether paragraph 4(a)(iii) of the Policy has been established.
In the light of the foregoing, and taking into consideration all the circumstances of the Respondentís behavior, "it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that could not be illegitimate, such as being a passing-off, an infringement of consumer protection legislation or an infringement of the Complainantís rights under trademark law.". (Telstra Corp. v. Nuclear Marshmallows).
Although one would have the right to use and/or register oneís surname, the Respondent has not provided proof that his surname is Voigtlander. If he had proof, he would have registered the domain name in the name of John Voigtlander in the first place, but this is not to say that this would have enabled him to prevail in these proceedings. In the present case, everything the Respondent did or planned to do centered on the Complainantís products and accessories etc., without the Complainantís authority or license. Such use and/or registration must of necessity be an infringement of the rights of the Complainant in that name which has been established.
The Panel therefore upholds the Complainantís allegations and contentions in terms of Paragraph 4(a)(iii) of the Policy, and finds Bad faith Registration and Use in all the surrounding circumstances of the Respondentís actions, statements etc.
For the foregoing reasons, the Panel makes the following Findings:
(i) That the disputed Domain Name <voigtlander.com> registered by the Respondent is identical to the trademark Voigtländer in which the complainant has rights, and
(ii) That the Respondent has failed to prove that it had any rights or legitimate interests in respect of the disputed Domain Name, and
(iii) That the disputed Domain Name has been registered and is being used in bad faith.
Accordingly, the Panel finds in favor of the Complainant and orders that the registration of the disputed domain name <voigtlander.com> be transferred to the Complainant.
Dated: April 18, 2003.