WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GfE Gesellschaft für Elektrometallurgie mbH v. Grace Express
Case No. D2003-0932
1. The Parties
The Complainant is GfE Gesellschaft für Elektrometallurgie mbH, Nürnberg, Germany, represented by Rau, Schneck & Hübner, Germany.
The Respondent is Grace Express, San Francisco, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <gfe.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 24, 2003. On November 25, 2003, the Center transmitted by email to Network Solutions, LLC, a request for registrar verification in connection with the domain name at issue. On December 3, Network Solutions, LLC, 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 December 4, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2003. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondentís default on January 6, 2004. However, before doing so there were some email correspondence between the Respondent and the Center (and partly also the Complainant). Part of this correspondence was of substance in regard to the contested domain name, other parts was on formalities, but since the Center made it clear to the Respondent, that they should file a formal response, and since this requirement was not met, the Panel will disregard this communication.
The Center appointed Knud Wallberg as the Sole Panelist in this matter on January 8, 2004. 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 complaint is based on German trademark 2 094 730 Word GfE GESELLSCHAFT FÜR ELEKTROMETALLURGIE MBH and device.
A copy of the trademark and an actual online printout of the German Trademark Register was enclosed.
The trademark is amongst others used for chemical products like vanadium chemicals, e.g. for catalysts in the chemical industry, and ignoble metals and alloys thereof, like the cited metallic high-performance materials, master alloys, e.g. for titanium and super-alloys, functional materials, e.g. magnetic alloys for AlNiCo magnets in speedometers and powders, e.g. titanium powder for coating medical prosthesis or metal hydrate powder for hydrogen storage.
5. Partiesí Contentions
1. The domain name is identical to Complainants trademark
As can be seen from the enclosed Internet website of the Complainant the domain name <gfe.com> is identical to the characterizing and imprinting part "GfE" of the word and device trademark, as "Gesellschaft für Elektrometallurgie mbh" is a mere descriptive term for the purpose of the Complainantís undertaking and the legal status. The imprinting character of the portion "GfE" for the Complainant is further shown by the fact that "GfE" is used as abbreviation for the Complainant, e.g. in Annex 4, and is the common portion of different subsidiary companies, namely "GfE Metalle und Materialien GmbH," "GfE Umwelttechnick GmbH" and "GfE Medizintechnik GmbH." The Complainant itself is a 100% subsidiary of Safeguard International, Inc., a private equity fund specialized in high-tech companies in America and Europe.
2. The Respondent has no rights or legitimate interests in respect of the domain name
First, the Complainant has not licensed or otherwise permitted the Respondent to use the above-mentioned trademark nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating the characterizing portion "GfE."
Secondly, the Complainant could not find any indications or evidence of the Respondentís use of, or demonstrable preparations to use, the domain name <gfe.com> in connection with a bona fide offering of goods or services. Especially when entering the Internet with <gfe.com> one gets a message that "the requested URL could not be retrieved" (see Annex 5). Further on, when using the so-called "Internet Archive Wayback Machine" and checking the domain name <gfe.com> for activations in the past, one gets the result that this domain name was never activated (see Annex 6).
Furthermore, the Respondent only appears as a business called "Grace Expressed" to the Complainant by the domain name registration. No indications can be found that the Respondent is commonly known by the domain name or that the Respondent has required any trademark or service mark rights for "GFE."
3. The domain name was registered and is being used in bad faith
The facts and circumstances of the present case concerning registration and use of the disputed domain name in bad faith are in line with the principles of the decision in WIPO Case No. D2000-0003:
The Respondent conceals its true identity using a company name "Grace Express" which does not exist in any company register or data bank. For example when searching for "Grace Express" in the Google search machine there is no hit meeting this company "Grace Express."
The Complainant tried to contact Grace Express with the enclosed letter via DHL-courier. According to a telephone information of this courier service the business name and address is a "bad address" as there is no company "Grace Express" in this specific address. Furthermore, the telephone number given in the WHOIS database does not exist.
Finally, and as already mentioned above, the domain name <gfe.com> was never used in connection with a bona fide offering of goods and services. When entering the Internet with <gfe.com> the message "The requested URL could not be retrieved." appears (again see Annexes 5 and 6).
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a Complaint 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 the Complainant must prove each of the following:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
As set out in paragraph 4(a) of the Policy, the onus is on the Complainant to establish each of the required elements of that paragraph.
A. Identical or Confusingly Similar
The contested domain name contains the dominant part of Complainant's German trademark and of the trademark and business identifier used by Complainant. For the purpose of these proceedings the domain names can be considered confusingly similar to Complainantís trademarks.
The prerequisites in the Policy, paragraph 4(a)(i), are therefore fulfilled.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark.
There are indications in the email correspondence between the Respondent and the Center that the domain name is an acronym for Grace Foreign Exchange, but since no other compelling evidence has been presented in the case, the Panel concludes that the prerequisites in the Policy, paragraph 4(a)(ii), cf. 4(c) are considered fulfilled.
C Registered and Used in Bad Faith
As noted above, the onus is upon the Complainant to show registration and use in bad faith. In the opinion of the Panel, it has failed to do so.
The Panel has accepted for the purpose of this proceeding, that Complainant has trademark rights in the mark GFE. However, Complainant has only demonstrated to have such rights registered in Germany, and it has not demonstrated to have any rights to the mark elsewhere including in the country of residence of the Respondent.
It has therefore not been established that Respondent, when registering the domain name in October 1995, would have had any knowledge of Complainantís trademark rights.
Also, in the opinion of the Panel, Complainant has failed to show any evidence of use of the domain name in bad faith. The domain name is not presently in use; it has not been offered for sale to Complainant or to any other person; there is no evidence of Respondent's use of the domain name to attract users to its website for commercial gain by creating a likelihood of confusion with Complainant's mark; nor is there any evidence that he has registered the domain name primarily for the purpose of disrupting the business of a competitor. Mere failure to use the domain name is not evidence of bad faith.
The Panel therefore finds that Complainant has failed to show that the domain name has been registered and is being used in bad faith. Reference is made to the following WIPO decisions: "21" Club Inc. v. 21 Club, WIPO Case No. D2000-1159, Deutsche Lufthansa SA v. Mr. Paul Greenwald, WIPO Case D2001-1456 and Su Hardy v. Lou Crawford, WIPO Case No. D2002-1123. The Panel finds, unlike the Complainant, that Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, does not cover a situation that is similar to the present case. As an example, it is possible to conceive plausible active use of the three letter domain name <gfe.com> in the USA by the Respondent, as opposed to in the Telstra case where no such use by the Australian was plausible.
For all the foregoing reasons, the Complaint is denied.
Dated: January 21, 2004