WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Liebherr-International AG v. Domain For Sale!
Case No. D2003-0824
1. The Parties
The Complainant is Liebherr-International AG, of Bulle, Switzerland, represented by Mr. Christian Schwellinger, of Biberach, Germany.
The Respondent is Domain For Sale! Yanisco Limited, of Nicosia, Cyprus.
2. The Domain Name and Registrar
The disputed Domain Name is <liebherr.org> and it is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 16, 2003. On October 17, 2003, the Center transmitted by email to Tucows Inc., a request for registrar verification in connection with the disputed Domain Name. On the same day, Tucows Inc., transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and also as the administrative, billing, and technical contact. In response to two notifications by the Center on October 21, 2003, that the Complaint was administratively deficient, the Complainant filed amendments to the Complaint on October 22, 2003. The Center verified that the Complaint, together with the amendments to 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 October 24, 2003, and on the same day Tucows Inc., informed the Center that the disputed Domain Name had been placed on Register lock. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2003.
On October 24, 2003, the Center received the following message from the Respondent:
"I do not wish to contest this complaint and I am therefore willing to transfer ownership of the domain name to the complainant. Please write to inform me of the appropriate procedure.
The Center forwarded this message to the Complainant on October 28, 2003, who replied on the same day that it was not interested in direct settlement proceedings but was agreeable to a 2 week suspension of the proceedings. On October 31, 2003, the Complainant sent an e-mail to the Respondent asking him immediately to take steps to transfer the disputed Domain Name to itself. On the same day the Respondent replied as follows:
"We have sent a fax to Mrs Sandra Cooper at opensrs.com requesting immediate transfer of the domain name to your company."
Like the earlier message, this too was signed by "Tom Arnold".
Tucows Inc., responded by asking "Tom Arnold" to confirm immediately his association with the Respondent. No reply was received to this request and on November 10, 2003, the Complainant wrote to the Center saying that it had not received any confirmation that the disputed Domain Name had been transferred and requesting the "immediate resuscitation of the proceedings".
The proceedings were re-instituted by the Center on November 11, 2003.
The Respondent did not submit any response by the due date and, accordingly, the Center notified the Respondent’s default on November 14, 2003.
The Center appointed David H. Tatham as the sole panelist in this matter on November 20, 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.
4. Factual Background
The Complainant is the parent company of the worldwide Liebherr-Group which was founded in 1949. The Liebherr-Group is engaged in the manufacture and sale of various types of cranes, earth moving machines, mining equipment, rope excavators , concrete mixing equipment, machine tools and material flow technology, transport technology, aerospace technology, domestic appliances, and components such as diesel engines, hydraulic cylinders, slewing rings and several more. The Complainant filed a copy of a company brochure in which all of these activities are described and illustrated.
The word "Liebherr" is (part of) the Complainant’s trading name and company name, and it is said by the Complainant to be registered (or applied for) as trademark in more than 60 countries. However the Complainant filed only a copy of its European Community trademark No. 215061 which was registered for a variety of goods in Classes 7 and 11 on July 31, 1998. The Complainant states that this trademark is registered and used for the all of the above mentioned products.
5. Parties’ Contentions
The Complainant contends as follows:
- that the disputed Domain Name is identical in spelling and pronunciation with its company name, trading name and trademarks;
- that the Respondent has no rights to or interests in respect to the disputed Domain Name because it is the company name, trade name and trademark of the Complainant;
- that the disputed Domain Name has no connection with the Respondent who cannot even be properly identified as its name is "Domain For Sale!";
- that at no time has the Complainant authorized the Respondent to use its company name, trade name or trademark;
- that the Respondent has no legitimate interest in the disputed Domain Name because he is offering it for sale. The homepage "www.liebherr.org" only contains an offer to sell this Domain Name and no further information, such as an offer for the sale of goods manufactured or distributed by the Respondent;
- that the name of the Respondent (Domain For Sale!) is evidence enough that there is no interest or willingness to use the disputed Domain Name in a legitimate way. It shows that the Respondent is not using the disputed Domain Name for any use other than the possibility of making it available for sale, and this is evidence of bad faith;
- that the Respondent is preventing the Complainant from using its trade name, company name and trademark "LIEBHERR" in a corresponding Domain Name;
- that if the Respondent had undertaken a trademark search before applying for the registration of the disputed Domain Name he would have discovered the numerous registrations of the "LIEBHERR" trademark, a name which is well-known, if not famous, all over the world. The word "Liebherr" has no meaning in any language in the world and it can be assumed that the Respondent was aware of the company name, trade name and Trademark "LIEBHERR" and so usurped it intentionally. This is supported by the fact that the Respondent has never been authorized by the Complainant to use the name "Liebherr" neither as an agent nor as a licensee.
The Complainant asks that the disputed Domain Name be transferred to itself.
The Respondent did not reply to the Complainant’s contentions and nothing is known about it.
6. Discussion and Findings
In order to prove its case under paragraph 4(a) of the Policy, the Complainant must establish:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no 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.
A. Identical or Confusingly Similar
The Complainant has established, to the satisfaction of the Panel, that it has substantial rights in the name and trademark "LIEBHERR". There is no doubt that the disputed Domain Name is identical to this trademark – disregarding the .com suffix as is customary in dispute proceedings.
The Panel therefore finds that the Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant claims that the word ‘Liebherr’ has no meaning in any language and so far as the Panel can ascertain, this is correct. Indeed, it would seem to be true that the word ‘Liebherr’ has no significance or meaning other than as the company name, trading style and trademark of the Complainant. A brochure supplied by the Complainant lists its 69 subsidiaries in 23 countries all but three of which contain the word "Liebherr" in their titles.
In paragraph 4(c) of the Policy there are set out several circumstances which, if present, could prove that the Respondent did have a legitimate interest in a disputed Domain Name. However in this case, the disputed Domain Name has not been used "in connection with a bona fide offering of goods or services" nor has the Respondent "been commonly known by the domain name" or "made a legitimate noncommercial or fair use of the domain name".
Furthermore, since the Respondent is not connected in any way with the Complainant it can have no legitimate right or interest in the disputed Domain Name which is identical to the Complainant’s famous and unique name and trademark.
The Panel therefore finds that the Complainant has satisfied its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
On receipt of the Complaint a Mr. Tom Arnold wrote to the Registrar from the Respondent’s e-mail address offering to transfer the disputed Domain Name to the Complainant without asking for any monetary compensation (although this could have been raised later) but, when challenged as to his links with the Respondent, he failed to produce evidence of any connection, so the Panel has not taken this incident into account.
Paragraph 4(b) of the Policy itemizes four circumstances as evidence of a domain name having been registered and used in bad faith. The Complainant alleges that two of these are present in this case. He contends firstly that the Respondent is preventing him from using his trade name, company name and trademark "LIEBHERR" in a corresponding Domain Name, but in fact paragraph 4(b)(ii) also requires that if this were the case the Respondent must also "have engaged in a pattern of such conduct". There is no evidence that this is the case, so the only one of the four circumstances that is relevant in this case, and which the Complainant also contends, is paragraph 4(b)(i) –
"circumstances indicating that you have registered or you have 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;"
Whilst there has been no direct offer from the Respondent to the Complainant to sell the disputed Domain Name, the Respondent’s name is actually "Domain for Sale!" and the website to which a visitor is directed when typing in the disputed Domain Name carries a prominent legend, partly in colour, reading: "4 sale, Domain Name For Sale!" which is followed by the words: "The domain name (web address) that you entered to come here is available for purchase or lease" and a visitor is enjoined to send an enquiry to an e-mail address which is identical to that of the Respondent.
This is fairly conclusive evidence that the Respondent’s only purpose in registering the disputed Domain Name was to sell it to the highest bidder.
The Panel therefore finds that the disputed domain name has been registered in bad faith.
It should not be overlooked that paragraph 4(a)(iii) of the Policy requires both registration AND use in bad faith. It has, for example, been established from the very outset of the introduction of the Policy, that in given factual situations, non-use and inaction can constitute bad faith registration and use. The WIPO case of Telstra Communications v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 20, 2000) was one of the earliest Panel decisions, and it established (at paragraph 7.9) that "the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith." Since this Decision was published the concept has been followed by numerous Panels.
The question that must always be asked in this type of case is: what are the ‘certain circumstances’ referred to in Telstra, and this can only be answered by reference to the facts of a specific case, and to the Respondent’s behaviour.
At least four of the five circumstances referred to in the Telstra case probably also apply in the present case, namely:
- the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use throughout the world;
- the Complainant has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;
- the Respondent has taken active steps to conceal it true identity, by operating under a name that is not a recognized business name;
- it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being passing off or infringement of the Complainant’s rights under trademark law.
Given this, the Panel finds that the disputed domain name has also been used in bad faith, and that the Complainant has entirely satisfied its burden under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <liebherr.org> be transferred to the Complainant.
David H. Tatham
Dated: November 25, 2003