WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ditting Maschinen AG v. I.C.T. Company
Case No. D2003-0170
1. The Parties
Complainant is Ditting Maschinen AG of Bachenbülach, Switzerland, represented by Kupper Lehner & Partner of Switzerland.
Respondent is I.C.T. Company, Ras El-Amoud, company located in Jerusalem, Israel.
2. The Domain Name and Registrar
The disputed domain name <dittingswiss.com> is registered with Network Solutions, Inc.
3. Procedural History
A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 ("the Policy"), to the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("the Rules") and to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") was submitted electronically to the World Intellectual Property Organisation Arbitration and Mediation Center (the "Center") on March 3, 2003, and subsequently in hard copy on March 5, 2003. On the same day the Center sent an Acknowledgement of Receipt of Complaint to Complainant.
On March 5, 2003, a request for Registrar Verification in connection with this case was transmitted to Registrar. On the subsequent day Registrar replied by e-mail confirming that Respondent is listed as the registrant and the language of the Service Agreement is English and providing the contact details for the administrative, billing and technical contacts.
On March 11, 2003, the Center completed the Formal Requirements Compliance Checklist and on March 12, 2003, formally notified Respondent of the Complaint and of the Commencement of Administrative Proceeding by the required means, setting a deadline at April 1, 2003, by which Respondent could file a Response to the Complaint.
Given that no Response was submitted within said deadline, the Center notified Respondentís default on April 3, 2003.
On April 16, 2003, the Center notified the parties that Ms. Anna Carabelli had been appointed as the Panelist in this proceeding and the projected decision date would be April 30, 2003, in the absence of any exceptional circumstances.
The Panelist has independently determined and agreed with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.
4. Factual Background
Complainant submitted as Annex 6 to the Complaint a declaration ("Affidavit") dated January 29, 2003, by Peter Moor, Managing Director of Ditting Maschinen AG, Bramenstrasse 11, CH-8184 Bachenbulach, Switzerland confirming the following.
Complainant was founded in 1928, by Adolf Ditting; initially the core of Complainantís business was car-body manufacturing, however it expanded into the production of slicing machines in 1944.
Originally commercial coffee grinders were sold under the trademark "Ditting"; in 1984, the new logo "Ditting Swiss" was adopted and since then it has continuously been used in several European countries and in the United States and since 1985/1986, also in several Arab countries.
Complainant provided evidence of trademark registrations for the words "Ditting Swiss" for a number of different countries (see Annex 7 and 8) including the State of Israel, in which Respondentís activity is currently concentrated.
The above trademark was registered for coffee grinders under International class No. 7 including "electrical coffee grinders, flour mills, spice mills, grinding discs as individual components of the aforesaid grinders and mills, parts and fittings of the aforesaid goods".
Complainant yearly spends about USD 20,000.00 on advertising and promoting the "Ditting Swiss" mark (see Annex No. 6).
In 2002, Complainantís global sales for coffee grinders labelled "Ditting Swiss" amounted to about USD 52,000.00 in Israel/Palestine and to about USD 300,000.00 in the Arab countries.
In the past Respondent has been the exclusive distributor of Complainantís products in Israel, West Bank and Gaza Strip according to a Representative Agreement executed early 1988 (see Annex No. 9) and terminated on March 31, 1990 (see Annexes No. 10 and 11).
Respondentís current place of business is Jerusalem/Israel and its business activities are carried out in the Israeli and Palestinian territories.
5. Partiesí Contentions
Complainant contends that:
- Complainantís name is reputed and well-known world-wide; in fact Complainantís products are commonly sold in over sixty countries in all five continents;
- in the conduct of its business, Complainant has registered and has been using since 1954 the trademark "Ditting" and since 1984 the new trademark "Ditting Swiss" (see Annexes No. 7 and 8);
- Respondent is currently a competitor of Complainant (see Annex No. 15 and 16);
- Respondentís Domain Name is identical or at least confusingly similar to Complainantís trademarks;
- Respondent has no rights or legitimate interests in the Domain Name;
- Respondent has registered the Domain Name in bad faith in order to prevent Complainant from reflecting its registered trademarks in a corresponding domain name;
- the Domain Name was registered by Respondent on June 2, 2002; at that time, Respondent was perfectly aware of the existence of Complainantís trademark "Ditting Swiss" both on a world-wide level and in connection with the Israeli market, in which Respondent carries out his business;
- the registration in bad faith amounts also to bad faith use, it being a positive action which has negative results on Complainantís use of its trademark;
- in any case there is no evidence that Respondent is making or intends to make a legitimate non-commercial or fair use of the disputed domain name since it is still keeping an "under construction" web-page.
Based on the above, Complainant requests the transfer of the Domain Name.
No Response has been filed by Respondent.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panelist to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to the Complainantís trademark or service mark;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(iii) the Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a) (iii) shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to 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) 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 respondent has engaged in a pattern of such conduct;
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondentís web site or on line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation or endorsement of the respondentís web site or location or of a product or service on the respondentís web site or location.
Paragraph 4(c) sets out in particular but without limitation three circumstances which, if proved by respondent, shall be evidence of the respondentís rights to or legitimate interest in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to the respondent, the respondentís use of, or demonstrable preparation 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) the respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) 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.
A. Identical or Confusingly Similar
The Domain Name is <dittingswiss.com>. Complainant owns several trademark registrations for the words "Ditting Swiss" combined together.
Considering that the Domain Name exactly matches Complainantís trademark, the Panelist holds that the Domain Name is identical to Complainantís trademarks according to paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in the Domain Name.
In this regard, it should preliminarily be noted that, as far as the burden of proof is concerned, the well-known principle under the WIPO case law is that "once a Complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to Respondent to rebut the showing" (see among others, Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022 (March 4, 2003); Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784 (October 1, 2001)).
Complainant has asserted and proved (see Annexes 6, 10, 11 and 15) that Respondent has no authorisation from Complainant for registering or using the Domain Name, to start carrying on activities under Complainantís trademark and name or to open web-sites or register a domain name with a view to increasing Complainantís business. Complainant has also stressed that Respondent has not been commonly known by the Domain Name.
In addition, according to Complainant, there is evidence that Respondent has not made "demonstrable preparations" to use the Domain Name in connection with a bona fide offer of goods or services. In fact, the Domain Name is not currently being used for any purpose whatsoever, being presently kept "under construction" (see Annex 2).
On the other hand, Respondent has not submitted a Response, therefore, it has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the Domain Name under the Policy.
Accordingly the Panelist concludes that Complainant has succeeded in proving the element under paragraph 4(b) of the Policy.
Under paragraph 4(a)(iii) of the Policy, Complainant must prove that the Domain Name was both registered and used in bad faith by Respondent.
According to Complainantís supported evidence (see Annex 16), Respondent is working in Israel as a dealer of coffee grinders, and from this point of view it is a direct competitor of Complainant as far as the Israeli market is concerned. For its business, Respondent primarily uses the domain name <salamehgroup.com>. On the other hand, the Domain Name is presently inactive and it is not being used for Respondentís commercial activities. From these facts and in the light of a recent WIPO decision issued in a case similar to the present one (Express Messenger Systems, Inc. v. Golden State Overnight, WIPO Case No. D2001-0063 (March 26, 2001), at paragraph 6) the Panelist reasonably infers that it is likely that Respondentís intention was both to disrupt Complainantís business and to prevent Complainant as holder of the trademark "Ditting Swiss" from reflecting the mark in a corresponding domain name.
Additionally, since Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (see also the more recent Redcats S.A. And La Redoute S.A. v. Tumay Asena, WIPO Case No. D2001-0859 (September 19, 2001)) it has been held that the "passive holding of a domain name may be sufficient to constitute bad faith use, taking into consideration the overall context of Respondentís behaviour". In the present case, the following circumstances should be taken into consideration: (i) Complainant's trademark is well known to Respondent; (ii) Respondent has not even alleged any good faith use of the Domain Name; (iii) Complainant has evidenced that Respondent is still using the words "ditting swiss" within the second level of his primary domain name, i.e. "www.salamehgroup.com/Ditting.htm" and as an email address such as "dittingswiss@salamehgroup", for non-authorised sales of Complainantís products (see Annex 16); (iv) Complainant has asserted that Respondent has registered several trademarks in Jordan by incorporating illegally Complainantís trademark (see Annex 15) and (v) Complainant has showed that while its business with Respondent ended in 1990 (see Annexes 10, 11), the relations between the two continue to be very tense (see Annex 15, under which it comes out that Complainantís agent in Israel, i.e. the European Palestinian International Services, sent a cease and desist letter to Respondent in order to prevent the latter from doing illegal promotion and advertisement by using the words "Ditting Swiss"; in the same letter Complainantís agent asserted that Respondent was even forging Complainantís original products (see paragraph 2 of said letter).
Further, it should be noted that pursuant to WIPO case law (see for instance Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022 (March 4, 2003); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 (December 21, 2000)) and under paragraph 2 of the Policy, a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In this regard, in the light of the following facts, i.e. the prior ownership by Complainant of the trademark registration for "Ditting Swiss", the fact that Respondent has been in the past the exclusive distributor of Complainantís products in Israel, West Bank and Palestinian territory and the circumstance that presently Respondent and Complainant are competitors in the field of coffee-grinders selling and both doing business in Israel, the Panelist finds that Respondent must have had Complainantís trademarks in mind when registering the Domain Name (see Freytag-Berndt und Artaria Kommanditgesellschaft v. Leimgruber A. & Co. OHG, WIPO Case No. D2002-1077 (January 23, 2003)).
Finally, WIPO case law has consistently established that the facts that Respondentís registration is identical or confusingly similar to Complainantís trademarks, that Respondent failed to reply to Complainantís timely cease and desist letter (which, in the present case, was sent by Complainant on September 17, 2002, i.e. less than three months after the Respondent had registered the Domain Name; Complainant has provided evidence of this letter - see Annex 12 to the Complaint), and that Respondent failed to file a Response to the Complaint, suggest that the Domain Name has been registered and is being used in bad faith (see amongst others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806 (October 16, 2002); Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000)).
In the light of the above, and in the absence of any Response, the Panelist finds that Complainant has evidenced bad faith in registration and use on the part of Respondent.
For all the foregoing reasons the Panelist orders that the Domain Name be transferred to Complainant.
Dated: April 30, 2003