WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motorenwerke AG. v. Dariusz Herman, Herman DOMCREATE et co.
Case No. DNAME2004-00001
1. The Parties
The Complainant is Bayerische Motorenwerke AG, München, Germany, represented by Aimee Gessner, In-house Counsel.
The Respondent is Dariusz Herman, Herman DOMCREATE et co, Nürnberg, Germany.
2. The Domain Names and Registrar
The disputed domain name <mini.name> is registered with Key-Systems GmbH, Saarpfalz-Park 7, Bexbach Germany.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 3, 2004, by email, a hardcopy of the Complaint was received on February 6, 2004. On February 4, 2004, the Center transmitted by email to Key-Systems GmbH a request for registrar verification in connection with the domain name at issue. On February 13, 2004, the Registrar 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 Eligibility Requirements Dispute Resolution Policy for .NAME ("ERDRP"), the Rules for Eligibility Requirements Domain Dispute Resolution Policy ("ERDRP Rules"), and the WIPO Supplemental Rules for Eligibility Requirements Domain Dispute Resolution Policy (the "WIPO Supplemental ERDRP Rules").
The Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 13, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on March 15, 2004.
The Center appointed Gerd F. Kunze as the Sole Panelist in this matter on March 18, 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.
4. Factual Background
The Complainant manufactures and distributes motor vehicles sold, amongst others, under the brandname "MINI." It is the owner of registrations for the mark (trademark and service mark) MINI in many countries all over the world and in particular of the following registrations:
- Registration No. 969678, dated January 5, 1971, in the United Kingdom for "motor cars" (cl. 12);
- Community Trademark registration No. 143909 of December 8, 1999, for goods and services in classes 12, 28, 36 and 37.
The ownership of the Complainant of these trademark registrations has been evidenced by copies of the registration certificates and transfer documents from the former owners to the Complainant.
On January 14, 2004, the Respondent has registered the domain name <mini.name> as a personal name registration.
5. Partiesí Contentions
The Complainant submits that (i) the name corresponding to the registered name <mini.name> is not the legal name of the Respondent; (ii) the name corresponding to the registered name is not the name of a fictional character in which the Respondent has trademark or service mark rights; (iii) the Respondent has not been commonly known by the name corresponding to the registered name.
The Complainant furthermore submits that it meets the Eligibility Requirements for Phase I Defensive Registrations in Paragraph 2(b) of the .NAME Registration Restrictions, in particular that the name corresponding to the registered name is identical to a valid and enforceable trademark or service mark registration having national effect that was issued prior to April 16, 2001, of which the Complainant is the owner.
The Respondent did not reply to the Complainantís contentions. It has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of Complainantís submissions, and all inferences that can reasonably be drawn there from.
6. Discussion and Findings
The Complaint has brought this Complaint under paragraph 4(a)(i) of the ERDRP, on the ground that the Respondent does not satisfy the Eligibility Requirements for a Personal Name domain name registration.
Paragraph 4(b) of the EDRP lists three elements that the Complainant must prove to succeed in a challenge brought under the EDRP:
(a) the name corresponding to the registered name is not the legal name of the Respondent;
(b) the name corresponding to the registered name is not the name of a fictional character in which the Respondent has trademark or service mark rights;
(c) the Respondent (as an individual) has not been commonly known by the name corresponding to the registered name.
A. Respondentís legal name
According to the Registrar, the registrant of the domain name is "Dariusz Herman." In the absence of any evidence to the contrary, the legal name of the Respondent must therefore be assumed to be "Dariusz Herman". Also the additional name indication of the Respondent "Herman DOMCREATE et co" is not related to the domain name <mini.name>. The Panel is therefore satisfied that the Complainant has submitted sufficient evidence to proof that the domain name is not the Respondentís legal name.
B. Fictional character in which the Respondent has rights
The Complainant has submitted that "MINI" is not a fictional character in which the Respondent has rights. In the absence of any evidence of the Respondent to the contrary the Panel is satisfied that this submission is correct.
C. Name by which the Respondent is commonly known
The Complainant submits that the Respondent is not commonly known under the name "MINI." In the absence of any evidence of the Respondent to the contrary the Panel is satisfied that this submission is correct.
The Panel is satisfied that the Complainant has proven each of the three elements of paragraph 4(b) of the ERDRP in relation to the domain name <mini.name>. Therefore, the Respondent does not comply with the Eligibility Requirements of the ERDRP and the Remedies of paragraph 5(f) of the ERDRP apply.
7. Complainantís Eligibility for the Registered Name as a Defensive Registration
The Complaint requests that the contested Registered Name be registered in its name as Defensive Registration. For this remedy to be available the Complainant must satisfy the requirements of paragraph 5(f)(i)(C) ERDRP. This means that the Complainant must meet the Common Defensive Registration Eligibility Requirements.
According to Paragraph 2(b) of the Eligibility Requirements for Phase I Defensive Registrations of the .NAME Restrictions, the name must correspond to a valid and enforceable trademark or services mark registration having national effect that issued prior to April 16, 2001, in which the Complainant has rights. This means in particular that the name is identical to the textual or word elements of the Complainantís trademark or service mark. The Complainant has submitted evidence of its rights in registrations in the United Kingdom and in the European Community of the wordmark "MINI," both having been registered before April 16, 2001. This wordmark is identical to the domain name at issue. Consequently, the Complainant satisfies the requirements of paragraph 5(f)(i)(C) of the ERDRP. Alternatively, the Complainant may request a Phase II I Defensive Registration as it fulfills requirements of the Paragraph 2(b) of the Eligibility Requirements.
For all the foregoing reasons, in accordance with Paragraphs 4(b) and 5(f)(i)(C) of the ERDRP, the Panel orders that the Registered domain name <mini.name> be cancelled and registered as a Defensive Registration in the name of the Complainant, blocking the challenged name, provided that upon cancellation of the Registered Name the Complainant pays any applicable registration fees and satisfies other applicable Common Defensive Registration Eligibility requirements.
Gerd F. Kunze
Dated: March 29, 2004