WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. August Oetker Nahrungsmittel KG v. GATE24.COM Inc.
Case No. D2003-0202
1. The Parties
The Complainant is Dr. August Oetker Nahrungsmittel KG, a limited partnership incorporated under the laws of Germany and having its registered office and principle place of business at Bielefeld, Germany.
The Respondent is GATE24.COM Inc. of Seoul, South Korea.
2. The Domain Name and the Registrar
The domain name at issue is <oetker.net> (the "domain name"). The registrar is Tucows Inc., 96 Mowat Avenue, Toronto, ON, Canada, M6K 3M1 (the "Registrar").
3. Procedural History
On March 14, 2003, the Complainant filed a Complaint (the "Complaint") by e-mail with the WIPO Arbitration and Mediation Center (the "Center"). The Center received a hard copy of the Complaint on March 14, 2003.
On March 17, 2003, the Center requested the Registrar to verify the domain name in dispute. The Registrar confirmed on March 18, 2003, that it is the registrar of the domain name, that the Respondent is the registrant of the domain name, that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is applicable to the domain name, that the domain name remains locked during these proceedings and that English is the applicable language for the registration agreement.
On March 18, 2003, the Respondent sent e-mails to the Complainant confirming receipt of the Complaint directly sent by the Complainant and expressed its disappointment that the Complainant had filed a Complaint instead of buying the domain name from the Respondent for an allegedly agreed upon price. The Complainant responded that no final agreement on the conditions had been reached and that it was, therefore, entitled to file the Complaint with the Center. Copies of these e-mails were forwarded to the Center.
The Center proceeded to verify whether the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "ICANN Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "WIPO Rules"), including the payment of the requisite fees. On March 20, 2003, the Center concluded that the Complaint satisfied all of these formal requirements.
On March 20, 2003, the Center sent a copy of the Complaint to the Respondent and to its technical contact. The Center indicated this date as the formal date for the commencement of the administrative proceedings and April 9, 2003, as the last day for the Respondent to file a Response to the Complaint.
With an e-mail of March 21, 2003, the Respondent informed the Center and the Complainant that it shall not anymore be regarded as the registered owner of the domain name and that Mr. Sinho Kim shall be treated as such owner. On March 24, 2003, the Center responded that during these administrative proceedings the Respondent remains the sole owner of the domain name as confirmed by the Registrar.
On April 11, 2003, the Center notified the Respondent that it has failed to meet the deadline to file a Response and was, therefore, in default. The Respondent answered on April 13, 2003, that it does not wish to receive such information.
On April 30, 2003, the Center informed the parties that an administrative panel (the "Panel") had been appointed and transferred the file to the Panel.
The Panel finds it was properly constituted in compliance with the ICANN Rules and the WIPO Rules and the Panelist issued a Statement of Acceptance and Declaration of Impartiality and Independence on April 29, 2003.
Having reviewed the communication records in the case file, the Panel finds that the Center has discharged its responsibility under paragraph (2)a of the ICANN Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel shall issue its decision without the benefit of any Response from the Respondent.
4. Factual Background
The Complainant is active in the business of manufacturing and selling various food products including baking powder, baking ingredients, baking mixes, custard powder, other desserts, frozen pizza and frozen snack products.
The Complainant is the owner of OETKER and DR. OETKER trademark registrations in various countries including Germany and South Korea. These trademarks are registered in the International Classes 1, 29, 30 and 31. Copies of the registrations for Germany and South Korea are attached to the Complaint in Annex C6, C7 and C8.
The Complainant has further registered the domain names <oetker.de> and <oetker.com> and operates its homepages under these domain names.
In Dr. August Oetker Nahrungsmittel KG v. Resrved for Client, WIPO Case No. D2002-0371, the domain name has already been the subject of dispute between the Complainant and another Respondent. Such dispute has been decided in favour of the Complainant with the consequence that the domain name should have been transferred to the Complainant at that time. But as the registration of the domain name expired before the transfer could be ordered, said domain name was registered by the Respondent due to a "backordering system" it had activated.
The Respondent registered the domain name on August 1, 2002. The website posted under the domain name stated that the domain name might be available for purchasing or leasing on a monthly basis from the Respondent as evidenced by Annex C12 and C13 to the Complaint. However, the web page now reached through the domain name shows e-mail correspondence between the Complainant and the Respondent about the possible purchase of the domain name by the Complainant from the Respondent and a letter from Mr. Sinho Kim stating that the Complaint constitutes a false accusation and that he never intended to offer the domain name for sale.
Because of the Respondent's default, nothing further is known about the Respondent.
5. Parties’ Contentions
A. The Complainant
The Complainant contends:
- that the sales of the Complainant and its affiliated companies in the food sector amounted to 989 million Euro in 2001.
- that the domain name is identical to the name of the Complainant and its registered trademarks.
- that "Oetker" was the name of its founder, which is a very rare German family name and that it has no meaning in any language of the earth, especially not in the Korean language.
- that a risk of confusion is very likely as the domain name will be associated with the Complainant and its trademarks in the public mind.
- that a so-called "SnapBack backordering system" allowed the Respondent to register the domain name with the Registrar.
- that around August 2002, the Respondent started to offer the domain name for sale via the Internet.
- that the Respondent in the name of Mr. Sinho Kim was eventually willing to sell the domain name to the Claimant for an amount of €1,000.
- that the Respondent has no rights or legitimate interests in the domain name because the Complainant never authorized the Respondent to use its trademark.
- that the Respondent knew of the Complainant, its products and its trademarks prior to registering the domain name.
- that the Respondent registered the domain name exactly on the same day the registration of the previous holder expired and while the domain name should have been transferred to the Complainant according to the remedy ordered in Dr. August Oetker Nahrungsmittel KG v. Resrved for Client, WIPO Case No. D2002-0371.
- that the Respondent offered the domain name for sale immediately after registering it and that the registration primarily happened for this purpose.
- that the above constitutes evidence of registration and use in bad faith.
Complainant requests that the registration of the domain name <oetker.net> be transferred to the Complainant.
B. The Respondent
The Respondent did not file any Response to the Complaint. It did, however, communicate to the Center that it shall not anymore be treated as the registered owner of the domain name and that Mr. Sinho Kim shall be treated as such owner.
6. Discussion and Findings
To have the disputed domain name transferred to the Complainant, it must prove each of the following (Policy, paragraph 4(a)):
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the Respondent's domain name has been registered and is being used in bad faith.
(i) Identity or Confusing Similarity
The Complainant has shown that it owns trademark registrations of the mark OETKER or DR. OETKER in Germany and South Korea and asserts that such registrations exist in most countries of the world. The Respondent does not contest the existence of these trademark registrations by the Complainant.
It is obvious that the domain name <oetker.net> contains a word which is identical to the trademark OETKER registered by the Complainant. The top level ".net" of the domain name does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a trademark.
The Panel thus finds that the domain name at issue is identical to the Complainant’s trademark.
(ii) Legitimate Rights or Interests
As the Respondent did not file a Response to the Complaint and has no obvious connections with the domain name, it is sufficient for Complainant to prima facia show that the Respondent has no right or legitimate interest in the domain name (<sachsen-anhalt.com> Land Sachsen-Anhalt v. Skander Bouhaouala, D2002-0273; <volvovehicles.com> Volvo Trademark Holding AB v. Nicklas Uvelov, D2002-0521).
Before notice of the dispute, the Respondent did not show preparations to use or the actual use of the domain name in connection with a bona fide offering of goods or services. The Respondent, on the contrary, simply offered the domain name for sale or lease on a monthly basis on the website posted under the domain name. The Complainant did not authorize the Respondent to use Complainant’s trademarks. Moreover, the Respondent did not make a legitimate noncommercial or fair use of the domain name, as no other activity was performed with the respective website. In addition, the Respondent did not assert to own a trademark OETKER nor is there evidence that it was commonly known by the domain name. Also, the word OETKER does not have any meaning on its own, which might have given a ground for using the domain name according to its meaning.
Therefore, the Panel finds that the Respondent does not have legitimate rights or interests in the disputed domain name.
(iii) Registration and Use in Bad Faith
In Germany and in many other countries the trademark OETKER is very well known in connection with the food products that are being sold under this mark. The Respondent, thus, at the time of the registration must have been aware of the existence of this well-known trademark when he registered the domain name, and that his use of this domain name might be considered to be in bad faith depending on the way he would use it. Nevertheless, the only purpose of the website reached through the domain name was to offer it for sale or lease. In later e-mails with the Complainant he denied that the domain name was for sale. However, he negotiated with the Respondent a purchase price in the amount of €1,000, which is clearly above the out-of-pocket costs directly related to the registration of the domain name. It therefore appears that the Respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring it to the owner of the famous, identical trademark.
Furthermore, it must be taken into account that the Respondent has used a technical device or system that enables him to register certain domain names at the moment they become available due to expiration. This shows that the Respondent intended to register certain trademarks as his domain names, before the respective owner of the trademark is able to register such domain name itself. It can thus be inferred that the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.
The Panel, therefore, finds that the Respondent registered and used the domain name in bad faith.
For all of the foregoing reasons, this Panel decides that the domain name <oetker.net> registered by the Respondent is identical to the trademark "OETKER" owned by the Complainant, that the Respondent does not have rights or legitimate interests in respect of this domain name, and that the Respondent registered and used the domain name in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <oetker.net> be transferred to the Complainant.
Dated: May 20, 2003