WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Voigtländer GmbH v. John Voigtlander
Case No. D2003-0900
1. The Parties
The Complainant is Voigtländer GmbH, of Fürth, Germany, represented by Gramm, Lins & Partner, GbR, Germany.
The Respondent is John Voigtlander, of Pensacola, Florida, United States of America.
2. The Domain Names and Registrar
The disputed domain names are:
being all registered with Network Solutions, Inc. ("the Registrar"), of Herndon, Virginia, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") on November 11, 2003, by email and on November 13, 2003, by hard copy.
The Center acknowledged receipt of said Complaint on November 12, 2003.
On November 12, 2003, the Center transmitted by email to Network Solutions, Inc. ("the Registrar") a request for registrar verification in connection with the domain names at issue.
On November 13, 2003, the Center received the Registrar’s verification response, confirming the particulars of the Registrant, the administrative contact, the billing contact and the technical contact.
On November 14, 2003, the Center requested a clarification from the Complainant as regards the remedies requested in the Complaint. The Complainant replied on November 17, 2003, to the request for clarification by indicating that the remedies requested were cancellation of the domain names in dispute.
On November 18, 2003, the Center’s Formal Requirements Compliance Checklist was effected.
The Center verified that the initial Complaint, together with the respective clarification 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 November 19, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2003.
The Center appointed António L. Sampaio as the Sole Panelist in this matter on December 22, 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 Voigtländer GmbH is a private limited company registered under the registration number HRB8005 at the local court of Fürth, Germany and an effective domicile in Fürth, Germany.
The Complainant Voigtländer GmbH exists and is acting at least since 1952, that is, more than half century ago.
The Complainant is the owner of trademark rights regarding the word "voigtländer" in many countries all over the world. The trademarks mentioned in the schedule (annex 5) attached to the Complaint are all registered in favor of the Complainant, namely in respect of optical and photographic apparatus, instruments, and utensils.
The trademark "voigtländer" has been used for decades in many jurisdictions throughout the world.
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 their photo products under said domains.
In accordance with the Registrar’s (Network Solutions, Inc.) verification response to the Center, John Voigtlander is the listed registrant of the disputed domain names <onlyvoigtlander.com>, <onlyvoigtlander.org> and <onlyvoigtlander.net>.
The Complainant recently filed a Domain Name Dispute regarding the domain name <voigtlander.com> against Respondent – Voigtländer GmbH v. John Voigtlander, WIPO Case No. D2003-0095 – wherein said domain name was transferred to the Complainant, Voigtländer GmbH, by decision of the Panel. Furthermore, this domain name <voigtlander.com> was formally registered in favor of John O’Keefe, Ohio, as per the excerpt of the WHO IS data base dated October 1, 2002, annexed to the present Complaint.
The owner of the referred domain name <voigtlander.com> was initially identified as John O’Keefe. However, subsequently said domain name owner changed its name to John Voigtlander, as per annex 11 of the Complaint (the WHO IS print dated December 5, 2002).
As it may be seen at the home page excerpt dated October 1, 2002, the domain name owner John O’Keefe announced a "future home of the best voigtlander site on the Internet" under the domain name <voigtlander.com> showing a camera objective.
Counsel for the Complainant sent a warning letter still to John O’Keefe, by email and airmail on October 7, 2002, informing him about the company name and trademark rights of the company Voigtländer GmbH.
After receiving the confirmation of the referred warning letter sent by airmail, the WHO IS entry of the domain name <voigtlander.com> was changed and the home page was amended by the inclusion of a disclaimer saying that "Only Voigtlander is in no way affiliated with the Voigtlander camera company of Germany" and by a further announcement that "Only Voigtlander is the future home page of John Voigtlander, photographer." However, the style of the home page remained unchanged.
After the electronic filing of the Complaint at WIPO, as regards the domain name <voigtlander.com> from where a copy was sent by email to email@example.com the Respondent immediately registered the domain names in dispute in this case, namely <onlyvoigtlander.com>, <onlyvoigtlander.org> and <onlyvoigtlander.net>, on February 12, 2003.
Finally, it should be mentioned that shortly before the three domain names in dispute in the present case were filed, but after becoming aware of Complainant’s claims, for the name "Voigtländer" and similar domain names composed of the well known trademark "VOIGTLÄNDER," or similar signs as for example, voigtlander, Respondent tried to establish its own interest in respect of the term "onlyvoigtlander" by effecting the registration of a business effected on February 6, 2003.
5. Parties’ Contentions
The Complainant is a German corporation active in the photographic camera production not only in Germany, but worldwide for more than half century.
The Complainant is the registered owner of a great number of trademarks "VOIGTLÄNDER" in a world wide basis.
The trademark "VOIGTLÄNDER" is a very famous mark and should deserve the well-known status, having in mind the renown quality of the products identified by it.
The Complainant defends and proves that the Respondent John Voigtlander was in fact known and previously registered as John O’Keefe. The change of name from John O’Keefe to John Voigtlander only took place when the Respondent was confronted with the invocation of the trademark and corporate name rights of the Complainant.
The three domain names onlyvoigtlander have been registered and are used in bad faith.
The trademarks of the Complainant are used for cameras all over the world for decades.
"VOIGTLÄNDER" is the mark of a very famous product used by experienced photographers that led to the existence of may fan clubs, which may be simply proved by typing the term voigtlander in the search engine "www.yahoo.com."
Furthermore, the Respondent refers to Complainant’s well-known company name and well-known trademark when planning to establish "the best voigtlander site on the Internet." Therefore, Respondent had effectively knowledge of the trademarks rights and the company name of the Complainant’s before filing the applications of registration of the three domain names onlyvoigtlander.
In fact, once the Respondent’s domain name <voigtlander.com> became endangered, Respondent established an alternative by registration of the three domain names in dispute onlyvoigtlander. However, the intention of making use of Complainant’s well-known trademarks remained the same. Respondent emphasized himself as the only one regarding voigtlander products undoubtedly in the sense of being the only expert in the field of voigtländer cameras.
The Respondent is a photographer who, obviously, plans to use the home page under the three domain names onlyvoigtlander establishing therefore, a bad faith link to the real owner of the Voigtländer GmbH.
The Respondent did not reply to the Complainant’s contentions within the deadline given. At the date this decision is being taken, the Panelist has not received any belated response or any other kind of reaction from the Respondent, contrarily to what happened in the previous case between the parties – WIPO Case No. D2003-0095.
6. Discussion and Findings
The Policy aims to resolve disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that the Respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules, establish procedures intended to assure that the Respondent is given adequate notice of proceedings commenced against him, and a reasonable opportunity to respond (see paragraph 2(a), Rules).
In the present case all the requirements were fully met. The brief of the Complainant was filed according to the Rules. The Panel acknowledges that the Respondent was duly notified as foreseen in the Rules. However, no response was filed.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain the requested relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a Trademark or Service Mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a Complainant to warrant relief.
Let us consider the applicability, in detail, of what is stated in paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The three domain names in question:
are confusingly similar to all the marks "VOIGTLÄNDER" registered in the name of the Complainant.
In fact, the Panel considers that between "VOIGTLÄNDER" (registered marks) and "onlyvoigtlander" (domain names in dispute) the basic common element "voigtlander" coincides entirely. The initial word (only) joined to "voigtlander" on the three domain names in dispute should be considered irrelevant having in mind the current principles of trademark legislation worldwide.
On the other hand, the evidence of ownership by the Complainant of all the trademark registrations invoked is duly acknowledged.
B. Rights or Legitimate Interests
The Complainant has persuasively asserted that the Respondent has no rights or legitimate interests in the three domain names in question. The Respondent has failed to file any evidence rebutting those assertions.
The silence of the Respondent leads the Panel to consider that the Respondent has no rights or legitimate interests in respect of the three domain names <onlyvoigtlander.com>, <onlyvoigtlander.org> and <onlyvoigtlander.net>.
The Panel, lacking of other information, also considers that the personal name of the Respondent – John Voigtlander – does not establish any right or any legitimate interest, whatsoever, in respect of the expression onlyvoigtlander and, consequently, in respect of the three domain names <onlyvoigtlander.com>, <onlyvoigtlander.org> and <onlyvoigtlander.net>.
In fact, it is duly documented in the Complaint that the Respondent identified as John Voigtlander, was earlier identified by the name of John O’Keefe and that the name change occurred with no plausible justification.
C. Registered and Used in Bad Faith
Finally, we must address the delicate issue of bad faith. The Panel is perfectly aware that this is certainly an important aspect to base the decision.
The trademark "VOIGTLÄNDER" is an unquestionable well-known mark in a broad international perspective. The Complainant has well demonstrated the notorious implementation of said trademark in commerce in many jurisdictions. The Panel acknowledges under a personal viewpoint the accuracy of this decisive legal and factual realities.
As it is currently established, well-known marks deserve an even more special protection since they usually represent a very tempting target for those who do not pursue a correct behaviour in their economic activity.
The factual circumstances developed and proved in this case file render evident that the Respondent registered the three domain names in question while being fully conscious of damaging the rights of the Complainant as well as trying to wrongly confuse the Internet users regarding the true holder of the domains.
The Respondent, who is also a photographer, is likely to have had knowledge of the existence of a well-known trademark prior to registering the domain names.
Therefore, the Panel concludes that there was bad faith on registering the domain names <onlyvoigtlander.com>, <onlyvoigtlander.org> and <onlyvoigtlander.net>.
Furthermore, there are previous decisions rendered by Panelists of the WIPO Center establishing the principle that someone who has registered a domain name with bad faith and without any legitimate interest will, most probably, sooner or later use it also with bad faith.
Those who register a domain name with bad faith will use it with bad faith because said behaviour is associated with the idea that at the moment of registering the domain name there is the conscious of injuring, without any legitimacy, the rights of a third party.
On the same way, it was also previously decided in other cases that the combination of the two elements (well-known trademark on one side and, on the other side, no evidence of rights or legitimate interests of the Respondent) produces, almost automatically, the final result of bad faith.
Still in the context of use in bad faith it is also important to mention that the same Registrant, John Voigtlander, was previously identified as John O’Keefe in whose name a registration was made for <voigtlander.com> against which a successful Complaint was filed by the Complainant (WIPO Case No. D2003-0095).
For all the foregoing reasons, the Panel finds that the Respondent has engaged in abusive registration and use of the domain names <onlyvoigtlander.com>, <onlyvoigtlander.org> and <onlyvoigtlander.net> within the meaning of paragraph 4(a) of the Policy and, therefore, the Panel orders that the domain names <onlyvoigtlander.com>, <onlyvoigtlander.org> and <onlyvoigtlander.net> be cancelled, as requested by the Complainant and in accordance with the remedies set forth on paragraph 4(i) of the Policy.
António L. De Sampaio
Dated: January 5, 2004