WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Post AG v. MailMij LLC
Case No. D2003-0128
1. The Parties
The Complainant is Deutsche Post AG, of Bonn, Germany, represented by Linklaters Oppenhoff & Rädler of Germany ("the Complainant").
The Respondent is MailMij LLC of Newcastle, Delaware, United States of America represented by Merel Dorgelo of the Netherlands ("the Respondent").
2. The Domain Name and Registrar
The disputed domain name <deutschepost.net> ("the Domain Name") is registered with BulkRegister.com ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 21, 2003. On February 21, 2003, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the Domain Name. On February 25, 2003, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 26, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2003. The Response was filed with the Center on March 17, 2003.
The Center appointed Tony Willoughby as the sole panelist in this matter on March 27, 2003. The Panel finds that it was properly constituted. 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.
The Center has notified the Panel that both parties have submitted supplemental filings. The Panel has been given no reason from the parties why the Panel should depart from the normal procedure. Bearing in mind the applicable regulations and having noted the direction of the evidence in the Complaint and in the Response, the Panel declines to accept the supplemental filings.
The Complainant has disclosed the existence of proceedings between the parties in the Netherlands which affect the Domain Name. The Complainant states that these proceedings are in suspense pending the outcome of this Complaint.
By virtue of paragraph 18 of the Rules the Panel has the right to decide whether to suspend or terminate the administrative proceeding or to proceed to a decision.
Taking into account the status of the Dutch proceedings, noting that the Dutch proceedings appear to have turned on whether or not the Court had jurisdiction to hear the dispute rather than the merits of the complaint itself, the Panel has decided not to suspend this administrative proceeding.
On a related issue, it is convenient to raise here the debate as to the identity of the Respondent. According to the Registrar, the Respondent is MailMij LLC. The Response however identifies the Respondent as a Mr. Colby Fisher of Miami, Florida, United States of America. According to the Response, Mr. Colby Fisher has been the driving force behind the business/businesses which has/have owned and operated the Domain Name from date of registration to date. It appears to the Panel that the Complainant would be unlikely to dissent from that analysis as a general proposition.
The Panel proposes to refer to the current registrant as the Respondent and will treat the Response as having been submitted by the Respondent. That said, the Panel accepts that for all practical purposes Mr. Colby Fisher has been the underlying party to the registration from date of registration to date.
4. Factual Background
The Complainant is the largest provider of postal services in Germany. It is the privatized successor to the former Federal Post Office in Germany, the Deutsche Bundespost. The Complainant is the proprietor of a large number of trade mark registrations (mostly, but not exclusively, European registrations) of or including the name Deutsche Post.
The Complainant was incorporated in 1997, and has, since incorporation, conducted a very substantial business under the name Deutsche Post running into hundreds of millions of Euros each year.
The history of the Domain Name is that it was registered in August 1998, in the name of either MilMail or Mr. Colby Fisher. MilMail was a business run by Mr. Colby Fisher which commenced in 1997, its primary purpose being to provide email addresses to members of the United States armed services using domain names such as <army.net>, <navy.org>, <airforce.net> etc.
In 1998, Mr. Colby Fisher decided to expand his idea to embrace a broader category of customers and to this end registered more domain names including, for example, the Domain Name for people with German connections and <antwerpen.com> for people wishing to identify with Antwerp.
Accordingly, and the Panel notes the Respondentís evidence on this, the Domain Name was registered with a view to providing email addresses to people wishing to identify themselves with Germany.
In the year 2000, Mr. Colby Fisher went into partnership with a venture capitalist named Motion Container. The partnership vehicle was named BigFish BV. Mr. Colby Fisherís interest in BigFish BV (60%) was held by the Respondent, but it appears from the Complaint that at that stage the Domain Name must have been transferred into the name of BigFish BV. By August 2000, the Domain Name was connected to an active Web site.
Shortly after August 2000, the relationship between the partners of BigFish BV soured. Motion Container looked as though it was about to founder, so Mr. Colby Fisher transferred partnership assets to the Respondent, hence the transfer of the Domain Name to the Respondent.
From about August 2000, (according to the Respondent) the Complainant and the Respondent have been in communication whether by way of correspondence or in litigation. The Complainant was seeking transfer of the Domain Name and the Respondent was:-
(a) denying that the Complainant had any right to the Domain Name;
(b) seeking what it regarded as being fair compensation for its substantial investment in the Web site connected to the Domain Name; and
(c) asserting that the appropriate method of resolving the dispute was by way of the Policy.
The Complainant bases its Complaint in part on the matters raised in that correspondence, but the Panel regards the correspondence as largely irrelevant.
5. Partiesí Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the DEUTSCHE POST trade mark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It contends that:
(1) before the Complainant became aware of the conflict the Respondent had not been using either the Domain Name or any similar name in good faith;
(2) at that time the Respondent was not generally known under the Domain Name;
(3) neither had the Respondent used the Domain Name for any legitimate non-commercial or equitable purpose;
(4) the Respondent does not own any rights in the name or mark DEUTSCHE POST. The Complainant has not licensed or otherwise permitted the Respondent to use its name or trade marks or to apply for the Domain Name in dispute. The Complainant points to the Complainantís trade mark rights and the inevitable risk of confusion in that Internet users would be likely to associate the Domain Name with the Complainant.
The Complainant further contends that the Domain Name was registered in bad faith and is being used in bad faith. It makes various assertions as to the Respondentís bad faith intentions, two of which in particular merit quotation:
Paragraph 1.1 of the Complaint reads as follows:
"1.1 The Respondent, following transferral of the domain name deutschepost.net, has used this domain name since 2001 for an e-mail service and, at first, had a website offering permanent e-mail portability and accessibility to "people living outside Europe who want to express their German heritage through their e-mail address". It is clear that any German or person with German ancestors wishing to express their German heritage in this way will be attracted by the domain name to the site because they recognise the name and mark DEUTSCHE POST and associate it with, and therefore the supposed provider of the services as, the Complainant and its predecessors, as these form part of their German heritage. MailMij LLC does not. By using the name and mark DEUTSCHE POST, the target public will be confused into believing that this website has been set-up and is owned by the Complainant for the express purpose of providing such a service to them."
The Complaint continues:
"All these factors taken together with the reputation of the name and marks of the Complainant mean that there is no possibility that a user of this site would think that it is anything other than a site owned by or affiliated with the Complainant and that the products and services are those of the Complainant. Similarly, on the basis of the facts, it is inconceivable that the Respondent did not have this in mind when it chose the domain name and designed the website."
The Respondent acknowledges that the Complainantís name Deutsche Post AG is similar to the Domain Name. It also recognizes that the Complainant is the proprietor of various trade mark registrations of Deutsche Post AG. [In fact, the Panel observes that many of the registrations are for Deutsche Post].
The Respondent asserts that the Complainantís name is only famous in Germany and certain German-speaking parts of Europe. On this basis "the Respondent asserts that there are minimal grounds for conflict or confusion between the Complainantís name and the Respondentís website."
The Respondent asserts that it has rights or legitimate interests in respect of the Domain Name and relates the history of the Domain Name as set out in the Factual Background above. On this topic the Response reads as follows:
"- As viewed in the earlier description of the Respondent company background, there is undeniable evidence of the Respondentís demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services even before the Respondent received any notice of the dispute. The Respondentís website DeutschEpost.net, as viewed through both search engine and directory links has been or is commonly known by the domain name in issue.
- The Respondent is using the domain DeutschEpost.net to provide a legitimate email service to subscribers. This is certainly a fair use for the domain considering that the two words that comprise the domain translate into "German" and "Email" and that is exactly, the purpose of the domain.
- Finally, the Respondentís use of the domain DeutschEpost.net is not intended for commercial gain by misleadingly diverting consumers or through tarnishing the Complainantís trademark at issue."
The Respondent is adamant that the Domain Name is intended to be "Deutsch Epost" not "Deutsche Post".
The Respondent denies that it registered/acquired the Domain Name in bad faith. It specifically denies that it registered/acquired the Domain Name to extort money from the Complainant or to "attract, for commercial gain, Internet users to the Respondentís website or other online 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."
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
Ignoring, as the Panel is entitled to do, the generic .net domain suffix, the Domain Name is the Complainantís trade mark. Even if, as the Respondent asserts, the Complainantís trade mark were not known outside German speaking parts of Europe, that is not a consideration of any relevance when considering paragraph 4(a)(i) of the Policy.
Does the Complainant have a trade mark? Yes. Is the Domain Name identical to the trade mark? Yes. End of story so far as paragraph 4(a)(i) of the Policy is concerned.
Accordingly, the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
It is here that the core issue lies. The record suggests that Mr. Colby Fisher and/or MilMail, when registering the Domain Name, and that the Respondent, when it acquired the Domain Name, intended to use the Domain Name to provide email addresses to persons with German associations/aspirations.
Paragraph 4(c)(i) of the Policy provides that if the Respondent can show that before being notified of the dispute the Respondent has used and/or made demonstrative preparations to use the Domain Name in connection with a bona fide offering of goods or services, the Complaint must fail.
However, the Panel does not accept that the service to be provided by any of the registrants of the Domain Name could sensibly be regarded as "bona fide". While Mr. Colby Fisherís intention may have been, as he says in his Response, to use the name <DeutschEpost.net>, the fact is that as a domain name it appears as <deutschepost.net>. The Complainantís name is a famous name. While it may not be well known to people unfamiliar with Germany and German institutions, it will be very well known to the vast majority of the Respondentís target audience, namely people with German connections/aspirations.
Mr. Colby Fisher and, therefore, the Respondent must have known of the fame of the Complainant. It is not as if the Respondent selected a large number of geographical names for domain names. On the contrary, it targeted particular defined audiences, being audiences with which in all probability Mr. Colby Fisher has some familiarity. It is to be noted that when targeting potential customers associated with Antwerp, Mr. Colby Fisher went for <antwerpen.com>, it being in the language of the local population of Antwerp.
The Panel believes that when Mr. Colby Fisher selected the Domain Name he was very well aware of the fame of the Complainantís trade mark and intended to benefit from the Ďcoincidenceí that his chosen name DeutschEpost is in domain name-speak the same as the Complainantís trade mark DEUTSCHE POST.
The Panel believes that Mr. Colby Fisher will have known that, as the Complainant contends, there would be a very real likelihood that Internet users would assume the Respondentís service under the Domain Name to be in some way associated with the Complainant and that he would derive a substantial commercial advantage from that misapprehension. With that background, the Respondentís service under and in relation to the Domain Name cannot conceivably constitute a bona fide offering of a service within the meaning of paragraph 4(c)(i) of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
For precisely the same reasons the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
In light of the foregoing findings, namely that the Domain Name is identical to a trade 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 the Domain Name was registered and is being used in bad faith, the Panel directs that the Domain Name <deutschepost.net> be transferred to the Complainant.
Dated: April 7, 2003