WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Praktiker AG v. web4COMM SRL Romania
Case No. DRO2003-0001
1. The Parties
Complainant is Praktiker AG, Am Tannenwald 2, 66459 Kirkel, of Germany, represented by Norton Rose Vieregge, of Germany.
Respondent is web4COMM SRL Romania, Str. Calusei, Nr. 64A, Ap.2, Sector 2, Bucharest, of Romania. Respondentīs authorized representative in this case is advocate Andrei Buliga-Neagu, Lawyers Office Lia Pardau, Bucharest, Romania.
2. The Domain Name and Registrar
The disputed domain name <praktiker.ro> is registered with Romanian National R&D Computer Network (RNC.ro.), Bucharest, Romania.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 18, 2003. On February 18, 2003, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the domain name at issue. In its Verification Response the Registrar confirmed that Respondent is listed as the Registrant and provided the contact details for the administrative, billing, and technical contact. The Registrar also confirmed that the Uniform Dispute Resolution Policy applies to the domain name registration, that the domain name will remain locked during the proceeding and that the Registration Agreement was in Romanian and English.
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 February 20, 2003. In accordance with the Rules, Paragraph 5(a), the due date for Response was March 12, 2003. The Response was filed with the Center on March 12, 2003.
The Center appointed Henry Olsson as the Sole Panelist in this matter on March 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. The Projected Decision Date was April 3, 2003.
4. Factual Background
Complainant has been operating do-it-yourself stores in Germany under the sign "Praktiker" since the end of the 1970s. The annual turnover in Germany is EURO 2,1 billion and, with the inclusion of the turnover from foreign countries, the turnover amount is around EURO 2,5 billion. Markets are established in Germany, as well as in Greece, Austria, Poland, Hungary, Turkey and Romania.
According to the Complaint, Complainant invests annually around EURO 68 million in overall marketing expenses including media expenses.
According to the Response, Respondentís main activity is software design and programming/web design.
In accordance with Paragraph 3(b)(xiii) of the Rules, the Complainant has submitted, with respect to any challenges that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of the Complaint, to the jurisdiction of the courts of the location of the principal office of the concerned Registrar in Bucharest, Romania.
5. Partiesí Contentions
Complainant first submits that the Registration Agreement relating to the domain name at issue is in English and that therefore, according to Paragraph 11.1 of the Rules, the language of the administrative proceeding should be English. Furthermore, the Registration Agreement incorporates the Policy and states, in its Article 6, that: "you agree that, if the registration or reservation of your domain name is challenged by a third party, you will be subject to the Dispute Policy in effect at the time of the dispute." Furthermore, the Policy of the Registrar states: "When a mutual resolution is not successful, the complainant is the subject of the Uniform Domain Name Dispute Resolution Policy endorsed and approved by ICANN."
Complainant also alleges that "Praktiker" is a well-known notion and that, according to a market survey in Germany in 2001 concerning the knowledge of the trademark/company name "Praktiker", a total of 84,9 % of German consumers are familiar with the trademark/company name at issue and relate that sign to Complainant.
Complainant is the holder of three trademark registrations in Germany of trademarks containing the sign "Praktiker" alone or in different variations in an extensive range of goods and services (including classes 1 to 9, 11 to 14,16 to 22, 25, 27-28 and 31 to 34). Complainant has also registered a range of trademarks including the sign "Praktiker" alone or in variations also outside Germany. Those registrations include registration as Community trademarks and as International trademarks under the Madrid Agreement and the Madrid Protocol with effect in Romania as from August 1997 and June 2001. Also, an application for registration of "Praktiker" in Romania has been submitted in 2002 according to a letter from a trademark agency in Bucharest, dated April 1, 2002. Complainant has submitted extensive documentation in support of its statements about the trademark rights.
Complainant also contends that it is the registrant of, among others, a number of domain names, such as <praktiker.de>, <praktiker.com>, <praktiker.org>, <praktiker.net> etc. Its principal website is, however, operated at "praktiker.de" which website contains information on Complainant, its products and also an electronic shop.
As regards Respondent, Complainant alleges that the domain name "praktiker.ro" is not yet functional and that Respondent is also the Registrant of a large number of domain names relating to other well-known companies and infringing their trademark rights (see further below).
Complainantís legal representatives in Romania made repeated demands to Respondent to transfer the domain name at issue to Complainant but those efforts failed. Consequently, an amicable mutual dispute resolution between the Parties has not been possible.
Identity or confusing similarity
In this respect, Complainant first stresses that the relevant part of the domain name at issue is the expression "Praktiker" which is clearly identical to Complaintís trademarks as included in registrations or applications for registration. Thus, in the view of Complainant, the registration of the domain name leads to the conclusion that it has been registered by a branch or subsidiary of Complainant something that creates confusion for the relevant public.
Rights or legitimate interests
Complainant alleges that it has not licensed nor otherwise permitted Respondent to use any of the trademarks or to apply for, or use, any domain name incorporating any of those marks. The registration of the domain name apparently, according to Complainant, seeks to create the false and misleading impression that Respondent acts in accordance with Complainant. Complainant invokes the knowledge of German consumers of the mark "Praktiker" and its connection to Complainant and, Complainant stresses, no trader would legitimately choose this mark unless seeking to create an impression of association with Complainant.
Registration and use in bad faith
In this respect, Complainant first submits that it has been consistently expressed in various earlier administrative panel decisions that it is possible for inactivity by a Respondent to amount to a disputed domain name being used in bad faith; occupying an entry in the DNS is "use" in any event since it has a blocking function.
Additionally, Complainant argues, even absent the circumstances set out in Paragraph 4.b(i) of the Policy, the element of bad faith registration and use is established by the following facts.
According to Complainant, the trademark "Praktiker" is well-known in Germany and also in Romania and it is inconceivable that Respondent would not be aware of this fact. This is further supported by the fact that Respondent has registered a number of other domain names infringing third partyís trademark rights such as <thebodyshop.ro> <the-body-shop.ro>, <chrysler.ro>, <rexona.ro>, <volksbank-leasing.ro>, <wrigley.ro> and <beiersdorf.ro> as shown in a printout submitted by Complainant. Consequently in the view of Complainant, the domain name has been registered in bad faith according to Paragraph 4(b)(ii) and(iii) of the Policy.
Furthermore, the word "Praktiker" is a German word and does not have any meaning in the Romanian or English language and does not even exist in those languages, something that supports the fact that Respondent was well aware of Complainant, its activities and trademarks.
Because of the wide-spread use and reputation of the trademark "Praktiker" Internet users also in Romania and Germany would immediately believe that the disputed domain name was in some way associated with Complainant. This, as well as the previous allegation, shows, in the view of Complainant, bad faith registration by Respondent according to Paragraph 4(b)(ii),(iii) and (iv) of the Policy.
Complainant furthermore alleges that any realistic use of the domain name at issue must misrepresent an association with Complainant and its goodwill resulting in passing off, breaching of German unfair competition law and trademark infringement and consequently in bad faith registration and use according to Paragraph 4(b)(ii) and (iii) of the Policy.
Complainant adds that the domain at issue is not functional and there is no evidence that the website or other on-line presence is in the process of being established which will use the domain name, and there is no evidence of advertising, promotion or display to the public of the domain name. Also in this context Complainant refers to some earlier cases where it has been found that inactivity by a Respondent would amount to a domain name being used in bad faith. Consequently, according to Complainant the domain is used in bad faith by Respondent.
Furthermore, Complainant suggests that the list of other domain names registered by Respondent point to the fact that the domain name at issue was registered primarily for the purpose of selling it to Complainant, establishing bad faith registration and use under Paragraph 4(b)(i) of the Policy.
In summary, Complainant stresses that there is thus evidence of registration and use of the domain name at issue in bad faith under Paragraph 4.b(i),(ii),(iii) and (iv) of the Policy.
For the reasons set out above, Complainant requests the Administrative Panel to issue a decision to the effect that the domain name at issue be transferred to Complainant.
In its Response, Respondent first stresses that, according to the Romanian Constitution, the official language in Romania is the Romanian language and that, under Article 127 of the Constitution: "Judicial procedure must be conducted in Romanian language." The only applicable laws in jurisdictional relations between Respondent and the Register is Romanian. Although Complainant has not submitted the Complaint in Romanian, Respondent has, nevertheless, decided to submit a Response in order to minimize the material and moral interests damages to Respondent.
Respondent also complains about certain earlier contacts between Respondent and Complainantís legal representative in Romania involving intimidations instead of efforts to solve the dispute in an amiable way.
Identity or confusing similarity
Respondent underlines that the exclusive right to use the <praktiker.ro> domain name was acquired through the registration and the payment of the related fees to the Register, by means of which Respondent became the exclusive user of the domain name at issue with no other conditions or special clauses whatsoever that would oblige Respondent to use the domain name. The only conditions that could apply would therefore be those under Romanian law as it was at the time of the registration of the domain name at issue.
Respondent furthermore alleges that Complainant has not provided any statistics about the notoriety of the trademark "Praktiker" in Romania where the business started quite recently; at the time of the registration of the domain name there was no "Praktiker" shop or supermarket and no advertising that would promote the trademark. There is no evidence that the German noun "Praktiker" would be assimilated by Romanians to the activities of Complainant.
Respondent adds that the trademarks owned by Complainant in Classes 1-28, 31 and 34 do not cover Internet domain names/services and there is no similarity between the activity of Respondent and that of Complainant. Respondentís main activity is software design and programming/web design and does not infringe upon any goods or services provided by Complainant.
Furthermore, according to Respondent - who has submitted printouts to support his allegations in this respect - there are a number of other Internet domain names registered by private persons or companies that are similar with the German word "Praktiker" such as <praktiker.at> and <praktiker.co.at>,<praktiker.hu>, <praktiker.ch>, <praktiker cz> and <praktiker.co.uk>. Respondent stresses that it is obvious that the holders of those domain names do not infringe any interests of Complainant in countries where the same rights in Complainantís trademarks apply as in Romania.
Rights or legitimate interests
In this Respect, Respondent first states that Romania is a multiethnic country where 0,5 % of the inhabitants are Germans, ranking them as the fourth Romanian minority. According to Respondent, a non-commercial website targeting the Romanian German ethnics is certainly not outlawed. The domain name at issue was acquired by Respondent according to a contract with a Romanian organization. Respondent works on the site which will be officially launched during the next quarter and will have "a non-commercial purpose at all." At this moment, according to Respondent, "www.praktiker.ro" is active, "as one can easily find out without too much expertise."
Respondent alleges also that a number of domain names held by Complainant, such as <praktiker.org>, <praktiker.net>, praktiker.lu> and several others are not functional and the question is whether this unavailability creates confusion among international or German customers. The reply is, according to Respondent, negative, as Complainant operates <praktiker.de> and <praktiker.com> and therefore no German customer would have any reason to search Complainantís goods or services at different Internet sites, such as "www.praktiker.ro".
Registration and use in bad faith
Respondent first alleges that the webpage that presents for the moment the Internet site "www.praktiker.ro" is under construction and does not have any resemblance with the sign/figurative trademark registered by Complainant and does not promote commercial goods/services that would infringe the mark as registered. In this respect, Respondent refers to a decision, submitted as an annex to the Response, in a case concerning an application for registration under the Romanian Trademark Act of 1994 of the trademark "Practick" where Complainant filed an opposition and where each party lost partly and won partly.
Respondent underlines that Complainant has registered <praktiker.co.ro> as from October 13, 2001, which is a date that precedes the registration of the domain name at issue by Respondent. Thus, Complainant already expressed its choice for this ".ro" Internet domain name.
Furthermore, according to Respondent, at the time of Respondentís registration of the domain name at issue, Complainant had no Romanian national trademark that would cover the notion "Praktiker." To support this, Respondent has submitted a copy of a letter from a Romanian trademark agency dated April 1, 2002, concerning the filing of an application for the trademark Praktiker in a number of classes (corresponding to those mentioned by Complainant and indicated above).
Respondent adds that under Romanian rules of registration <praktiker.com.ro> would be the right choice for Complainant as Complainant clearly stated that it intends to run a commercial website. Respondent did not register the corresponding domain name as it did not plan to run or administer a commercial website.
For these reasons and on the basis of evidence submitted to support its allegations, Respondent alleges that the domain name at issue has not been registered or used in bad faith.
6. Discussion and Findings
Rule 15 prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.
From the Registrar Verification follows that the Policy is applicable in this case. Consequently there is an obligation for Respondent to submit to a mandatory administrative proceeding as now initiated in respect of the domain name at issue.
Paragraph 4.a. of the Policy directs that Complainant has to prove each of the following:
- that the domain name registered by Respondent is identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights
- that Respondent has no rights or legitimate interests in the domain name, and
- that the domain names has been registered and is being used in bad faith.
In the following parts of this decision the Panel discusses each of those elements.
Before going into a discussion on the substance of the issue, the Panel has to consider the issue of the language of the proceeding. Respondent has indicated that both Respondent and the Registrar are Romanian entities and that Romanian is the official language in judicial proceedings in Romania. The issue before the Panel is, however, not a dispute between the two Romanian Parties but between a German entity and Respondent and, furthermore, according to the Registrar Verification, the Registration Agreement is in Romanian and English. Paragraph 11(a) of the Rules prescribes that the language of the proceedings shall be that of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
On the basis of the provision in Paragraph 11(a) of the Rules and in view of the circumstances in the case, the Panel decides that the language of the proceeding before the Panel shall be English.
A. Identical or Confusingly Similar
In this respect, Complainant has, according to Paragraph 4.a (i) of the Policy, to prove that the domain name at issue is identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights.
The domain name at issue is <praktiker.ro>.
Evidence presented before the Panel indicates that Complainant has, or has applied for, trademark rights in the sign "Praktiker" in different combinations, in Germany and also in other countries and that the sign is a well known mark at least in Germany in relation to Complainant and its activities.
The domain name includes the sign "Praktiker" with addition of the country-code Top-Level Domain ".ro" In a number of earlier cases it has been found that the addition of such a domain indication does not remove the likelihood of confusion. Furthermore, from the specific point of view of similarity as such between the domain name and a trademark it is without significance if the trademark applies to goods or services other than the ones of the domain name holder or whether the trademark at issue was known in Romania. This are issues of relevance primarily in conflicts between trademark rights and not conflicts between trademark and domains incorporating a trademark.
The Panel can not accept Respondentís allegation to the effect that, as holder of the domain name at issue, Respondent is bound only by Romanian laws and of the limitations on the use of the domain name which that law could contain. Obviously the ownership of a domain name does not allow the holder to use it in violation of intellectual property rights that other persons may have in notions used in that domain name.
Respondent has submitted that there are a number of domain name registrations incorporating the notion "praktiker" in other countries which, according to Respondent, do not infringe Complainantís interests where the same trademarks are protected as in Romania. The Panel can not accept this argument, first because it is not known whether action is taken against those other domain name registrations and, if so, which the outcome has been or will be. Furthermore, what is of relevance in this case is the relations between Complainantís mark and Respondentís domain name, something that has to be decided on its own merits.
On the basis of these considerations, the Panel finds it to be established that there exists a confusing similarity between the trademark in which Complainant has rights and the domain name at issue.
B. Rights or Legitimate Interests
In this respect, Complainant has, according to Paragraph 4.a(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name at issue.
Complainant has submitted that it has not licensed or otherwise permitted Respondent to use any of its trademarks or to use any domain name incorporating any of those marks, but that Respondent tries to create the impression of acting in accordance with Complainant. Respondent has not specifically responded to Complainantís allegations in this respect and the Panel therefore accepts them as there are no circumstances to the contrary.
Respondent, on the other hand, has invoked that a domain name targeting Romanian ethnic Germans in not outlawed and has also invoked that other domain names registered by Complainant are not functional.
In the view of the Panel it is certainly allowed to register a domain name targeting a certain group of the population but that this does not mean a freedom to violate the rights that other persons may have in the names or notions incorporated in the in the domain name. Also, it is of no significance for this case whether or not Complainant has used other domain names that it has registered, as this does not affect his rights in the trademark and its relations to the domain name at issue.
The circumstances thus present in the case lead the Panel to the conclusion that in fact Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
In this respect, Complainant has, according to Paragraph 4.a(iii) of the Policy, to prove that the domain name has been registered and is being used in bad faith. Furthermore, Paragraph 4.b of the Policy sets out some circumstances which, in particular but without limitation, shall, if found to be present by the Panel, be considered as evidence of registration and use in bad faith.
An important element in the considerations in this respect is in the view of the Panel, that, according to evidence presented in the case, Respondent has registered a number of other domain names including fairly well-known marks, such as <thebodyshop.ro>, <the-body-shop.ro>, <chrysler.ro>, <rexona.ro>, <wrigley.ro> and others. In fact the list submitted by Complainant shows that Respondent has registered more than 100 domain names of which a great number contains internationally known trademarks. Respondent has not commented on why such a number of registrations of domain names incorporating fairly well known trademarks have been made, despite the fact that this is an important element in determining whether bad faith exists in respect of the particular domain name at issue in this case.
As Respondent itself remarks, Complainant registered the domain name <praktiker.co.ro> since October 13, 2001, a date that precedes the date of the registration of the domain name at issue. The Panel wishes to stress that the fact that Complainant made its own registration of a slightly different domain name does not deprive it of its rights to contest, on the basis of its trademark rights, the domain name at issue.
Respondent also alleges that at the time of the registration of the domain name, Complainant did not have any Romanian trademark that would cover the name "Praktiker." Even if this may be the case, Respondent must have been aware of Complainant and its trademark at the time of the registration of the domain name at issue, both because of Complainantís earlier registration of another similar domain name and possibly also because it obviously had become known in Romania.
The Panel consequently agrees with Complainant to the effect that it is inconceivable that Respondent was not aware of Complainant and its trademark at the time of the registration of the domain name at issue; in addition, as Respondentís other domain name registration show, Respondent is fairly familiar with the international trademark scene.
It is not clear in the case why Respondent registered the domain name at issue. It may be that Respondent, as Complainant alleges, intended to sell the domain name to Complainant, but there is no evidence to this effect other than the circumstantial one of the registration of a considerable number of domain names incorporating other well known trademarks. The only element that Respondent itself suggests is that the domain name was registered as part of an agreement with a Romanian organization for the purpose of targeting ethnic Germans in Romania by means of a non-commercial website.
The Panel can not understand how a website under a website incorporating Complainantís very commercial German trademark could be particularly appropriate for a non-commercial website targeted at ethnic Germans in Romania. The only conceivable reason for the registration would be that, by using Complainantís trademark, ethnic Germans would be attracted to the website in the belief that it was in some way associated with Complainant.
In considering the circumstances, the Panel comes to the conclusion that Respondent most likely registered the domain name at issue with knowledge both of Complainantís previous registration of a similar domain name and of Complainantís trademark. Furthermore, the Panel considers that the registration of the domain name at issue was most likely done either in order to attract, in particular, ethnic Germans in Romania to a possibly non-commercial site or to benefit from Complainantís trademark in order to attract customers to a website for a purpose yet to be determined.
Respondent is a company dealing with software and website design and is obviously operating on a commercial basis; consequently the agreement with a Romanian organization under which the domain name was registered must have been commercial in nature. In the context of the commercial character of Respondentís activities the Panel also can not fail to note once more the fact that Respondent registered a considerable number of other domain names incorporating well known marks.
These circumstances lead, in the opinion of the Panel, to the conclusion that the use that Respondent has thus made of Complainantís trademark by incorporating it in the domain name at issue amounts to registration in bad faith in the sense of Paragraph 4.b of the Policy.
The Panel notes that domain name at issue was registered on March 11, 2002, and has been "under construction" since then. The Panel considers that inactivity to use the domain name at issue for such a comparatively long time would amount to a use in bad faith, the more so as Respondent was aware of the fact that Complainant had, for Romania, registered another similar domain name.
On the basis of the foregoing the Panel finds it to be established that the domain name at issue is confusingly similar to the trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and is being used in bad faith. Complainantís request for a transfer of the domain name shall, therefore, be approved.
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 <praktiker.ro> be transferred to the Complainant.
Date: March 25, 2003