WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kadematic Seenotrettungsgeräte GmbH v. Bergkotte Trading B.V.
Case No. D2004-0449
1. The Parties
The Complainant is Kadematic Seenotrettungsgeräte GmbH, Hamburg, Germany, represented by Meissner, Bolte & Partner, Germany.
The Respondent is Bergkotte Trading B.V., Rotterdam, the Netherlands, represented by Michael De Clerck, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <nautomatic.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2004. On June 17, 2004, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. On June 17, 2004, Tucows Inc. 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 June 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2004. The Response was filed with the Center on July 13, 2004.
The Center appointed Gunnar Karnell as the sole panelist in this matter on July 22, 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. The due date for a decision was August 5, 2004.
After the constitution of the Panel, the Center brought to the attention of the Panel a Complainant’s supplementary filing of July 19, 2004, together with additional remarks of July 20, 2004, to the Response. The texts have been communicated to the Respondent. No further comments have been filed. The Panel decides to consider the content of the texts mentioned, invoking in support of its decision paragraph 10(d) of the Rules.
4. Factual Background
The Complainant requests that the contested domain name be transferred to the Complainant, basing its claim on its rights as owner of the German word mark No. 1 171 695 NAUTOMATIC, registered on February 5, 1991, also registered as Community trademark No. 002851640 on December 2, 2003. It also holds the domain name <nautomatic.de>, since July 20, 1998.
The Respondent’s domain name <nautomatic.com> was registered on May 3, 2001.
5. Parties’ Contentions
For 25 years, Complainant has manufactured and marketed maritime lifesaving products, in particular life saving jackets and inflation devices, globally but primarily based in Europe. Under the label NAUTOMATIC lifejackets and inflation devices are marketed especially in the Netherlands.
The Complainant submits that the domain name is identical to its trademarks and that the Respondent has no rights, nor any legitimate interests in respect of the domain name, which was never used to offer goods or services. It is not apparent that this shall occur in the future. On June 14, 2004, the domain was publicly offered for sale on line with a reference to a telephone number and an e-mail address, at EUR 1,750. Up to a few weeks before then, even this content did not exist. The registration took place in full knowledge of Complainant’s parallel domain name <nautomatic.de>, apparently only for the purpose of making a sales offer to the Complainant.
The domain name was registered and is being used in bad faith. Respondent’s registration of the domain name <nautomatic.com> took place about three years after Complainant’s registration of <nautomatic.de>. It is inconceivable that the Respondent would not have been aware of the parallel German domain name at the time of registration. It can be assumed that the Respondent was familiar with Complainant’s marketing activities in the Netherlands, including its domain registration. On May 3, 2004, the Respondent approached the Complainant via e-mail, without being solicited to do so, to start negotiations concerning sale of the domain name. The unsolicited approach proves that the registration was made in bad faith, merely with the intention to sell the domain name to the Complainant at a later date. In reply to the Respondent, on May 12, 2004, the Complainant wrote, by its representative, inter al that by virtue of its trademark rights it had a “rightful claim to the assignment of the domain name to its firm”, but that it was nevertheless willing to pay EUR 350 for it. This offer was rejected by the Respondent on May 27, 2004, indicating that since the Complainant had announced that it intended to take legal steps against the Respondent, the Respondent had put the name on offer to a broad public for EUR 1,750 “to provide a buffer for transfer activities”, such as “outlays for the use of other domain names that fit our strategy and are just as valuable as the name you claim”. On June 4, 2004, the Complainant replied by its representative that it “believed that an agreement could be reached on this basis” and the Respondent was asked to reserve the domain name until the representative had consulted its client. This demand was intended to prevent the Respondent from selling the domain name to another party before the Complainant would have been able to lock the domain name by the present proceedings. The sums demanded by the Respondent exceed considerably any possible out-of-pocket expenses, related to the registration of the domain name. Such expenses do not concern any “marketing costs”, nor shall they provide any “buffer”, as mentioned. The Respondent’s statements about information on Rumania etc. are not credible. No contents have been placed on a site using the domain name. And “why has the Respondent prepared his supposed own usage of conflict domain and at the same time approached the Complainant to offer the sale of same”.
(Note; In the following summary of the Respondent’s arguments, the Panel decides to leave out, as irrelevant, the Respondent’s arguments about what the Complainant might have done to assure a more elaborate protection of its interests.)
The Respondent was not aware of the Complainant’s trademark, since the Respondent has no affinity to the Complainant’s field of activities, nor had the Respondent any bad intentions when it registered its domain name. Before the Respondent was made aware of the present dispute, it was preparing a legitimate use of the domain name without any bad intentions. The registration was aimed for an informational site about Romania, so as to inform people, primarily from the Netherlands, interested in holidays “around or with water, near a lake steam or river” by giving them “automatic” access to desired information. The Respondent has also registered, to this effect, very many important names of places in Romania with the added gTLD “.nl” and one “.info”. It registered since September 14, 2002, domain names primarily associated with Romania and with “a ship’s name SS Rotterdam”. The Respondent is located in Rotterdam. Since the Complainant offered only EUR 350, the Respondent had to sell the domain name to another party to compensate for the costs for acquiring and marketing another domain name. The price of EUR 1,750 represents the minimum necessary to invest in another name that “fits the marketing plan”.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name <nautomatic.com> is confusingly similar to the Complainant’s (prior to the domain name registration) registered German trademark NAUTOMATIC, notwithstanding the added gTLD “.com”. Under the Policy, the right to the German mark can validly be adduced against the registration of the domain name at issue.
B. Rights or Legitimate Interests
Evidence provided by the Complainant, together with what has been adduced by the Respondent in defence of its possession of the domain name at issue, show that the Respondent has no rights, nor any legitimate interest, in respect of its domain name.
C. Registered and Used in Bad Faith
The only use made credibly known to the Panel which the Respondent has made of its domain name is to offer it, without having been solicited to do so, to the Complainant (as well as to the general public) for valuable consideration in excess of out-of-pocket costs directly related to the domain name. The Panel finds no indication that such use as mentioned is not currently envisaged by the Respondent. The Panel establishes that circumstances relating to the registration and to the use mentioned of the domain name make evident the Respondent’s acting in bad faith in both respects.
For all the foregoing reasons, the Panel orders that the domain name <nautomatic.com> be transferred to the Complainant.
Date: August 2, 2004