WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Mast-Jgermeister AG v. GlazedDonuts

Case No. D2005-0034

 

1. The Parties

The Complainant is Mast-Jgermeister AG, Wolfenbttel, Germany, represented by Gramm, Lins & Partner, GbR, Germany.

The Respondent is GlazedDonuts, San Jose, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <jgermeister.net> is registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January12,2005. On January13,2005, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On January13,2005, Register.com 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 January18,2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February7,2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February8,2005.

The Center appointed Arne Ringnes as the sole panelist in this matter on February16,2005. 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. Due to exceptional circumstances, the decision was rendered on March7,2005.

 

4. Factual Background

The Complainant is producer of the herbal liqueur “Jgermeister” which is distributed world wide in currently more than 60 countries.

Complainant is owner of registered trademarks JGERMEISTER world wide and has given the following overview of its trademark registrations:

Country

Registration No.

Priority

JGERMEISTER

Germany

474 481

December07,

1934

Word

Germany

396 36 703

August26,

1996

Word-/Design

Germany

399 13 941

March10,1999

Word-/Design

USA

857,604

May16,1967

Word

USA

2,165,258

November13,

1996

Word-/Design

International Registered Trademark

Registration designating:

Egypt, Albania, Algeria, Armenia, Azerbaijan, Benelux, Bosnia-Herzegovina, Bulgaria, China, Denmark, Finland, France, Greece, United Kingdom of Great Britain and Northern Ireland, Ireland, Italy, Kazakhstan, Kyrgyzstan, Croatia, Cuba, Latvia, Liberia, Liechtenstein, Morocco, Macedonia, Monaco, Mongolia, Namibia, North Korea, Norway, Austria, Poland, Portugal, Romania, Russia, San Marino, Sweden, Switzerland, Serbia and Montenegro, Slovakia, Slovenia, Spain, Sudan Tajikistan, Czech Republic

663 995

August26,

1996/November20,2001 (Namibia: June,30,2004)

 

Community

Trademark

135202

April01,1996

Word

Community Trademark

2662443

April26,2002

Word-/Design

Australia

204,736

September02,1966

Word

Argentina

1.914.786

February08,

2002

Word-/Design

Japan

1.749.484

December15,

1984

Word

South Africa

76/4519

August30,

1976

Word

Uruguay

296030

October29,

1976

Word

Brasil

006820700

September21,1977

Word

Chile

501.612

December16,

1976

Word

Estonia

14547

December29,1992

Word

Hong Kong SAR of China

4270/1991

July26,1989

Word

Canada

276,672

November04,1981

Word

Mexico

495120

February07,1995

Word

Namibia

7829/66

September26,1966

Word

Singapore

96/13052E

December05,1996

Word

Ukraine

13908

26.06.1995

Word-/Design

It is further informed that Complainant uses the denomination “Jgermeister” as part of its company name “Mast- Jgermeister AG”, the short form of which is “Jgermeister”. The company was registered originally as “W. Mast GmbH, Jgermeister-Spirituosenfabrik” on January 1, 1947. The company changed to Mast- Jgermeister AG which was registered in the register for companies in the city of Wolfenbttel on June 11, 1987.

Complainant sent a warning letter to the Respondent on June2,2004, asking him to transfer the domain name to the Complainant. The Respondent answered with letter of June14,2004, via e-mail. In this letter, the Respondent states that as a fan of complainant’s beverage he intended to host a small benevolent fan site. Inter alia: “I am well aware of both your client’s product, the famous herbal liqueur named Jgermeister, and their stature in the world market. I am, in fact, quite a fan of your client’s beverage and had registered the Internet domain name <jgermeister.net> (tech. “XN—JGERMEISTER-L8A.NET”) in May of 2001, with hopes of hosting a small benevolent fan (enthusiast) site. Hence the Internet domain name was registered with the “net” top level domain (TLD). This was done in good faith without intent for commercial gain, denial of usage, to misleadingly divert customers, or to tarnish the trademark of your client.” He further promised to relinquish control of the domain name <jgermeister.net> if he was reimbursed with regard to the costs incurred in the registration of the domain name.

With e-mail of July13,2004, Complainant confirmed to be willing to compensate Respondent’s out of pocket expenses.

The Respondent replied on September16,2004, that he would provide information on his bank account and “set things in motion” to transfer the domain name. However, Respondent did not take any such steps.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name is identical or confusingly similar to Complainant’s trademark JGERMEISTER.

In this respect Complainant refers to its trademark registrations, as set out in Para 4 above. Further Complainant has provided evidence to substantiate that the herbal liquor “Jgermeister” is one of the most successful spirits in the world and has a strong brand recognition.

With respect to the condition that the Respondent has no rights or legitimate interests in respect of the domain name, Complainant points out that holding the Internet domain name <jgermeister.net> in order to host the fan site is not a legitimate reason.

Complainant further contends that the domain name was registered and is being used in bad faith. In this respect Compliant submits that Respondent was well aware of Jgermeister as a famous liquor. Complainant refers to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, in which it was held that under certain circumstances inactivity by the Respondent may imply bad faith use under the Rules. Complainant submits that it amounts to bad faith that Respondent has not transferred the domain name despite his promise to do so in correspondence with Complainant. The Complainant has further argued that as the word “Jgermeister” is outstanding and unique and does not have any descriptive meaning, and that any use by the Respondent would mislead the public. Also, Respondent’s registration of the domain name <jgermeister.net> interferes with the Complainant’s use of its trademark in the sense that the Complainant is unable to register the domain name in its name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, Respondent has in his letter of June14,2004, held that the domain name “…is not yet “active” as internet domain names using extended characters of US-ASCII, ISO-8859-*, Unicode, or any other encoding schemes are not yet universally recognized by Domain Name System (DNS) servers, in this case specifically with regards to the character “”.”

 

6. Discussion and Findings

A. Identical or Confusingly Similar

Under the Rules Paragraph 4(a)(i), Complainant shall prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has right.

Complainant has submitted copies of a number of trademark registrations in several countries for the word mark Jgermeister. The domain name in dispute – <jgermeister.net> – is identical to Complainant’s trademark. Thus the condition under the Rules Paragraph 4(a)(i) is fulfilled.

B. Rights or Legitimate Interests

Under the Rules Paragraph 4(a)(ii), Complainant shall prove that Respondent has no rights or legitimate interests in respect of the domain name.

In its letter of June14,2004, Respondent states that he is well aware of Compliant’s products “the famous herbal liquor named Jgermeister, and their stature in the world marked”. The Respondent has also claimed that he was planning to set up a fan site. However, there is no evidence for “demonstrable preparations” to use the domain name as a fan site, and a mere allegation of intention to use the domain name in this way cannot on its own create a valid defence against an UDRP complaint, see e.g. Freddy Adu v. Frank Fushille WIPO Case No. D2004-0682: “Panelists in disputes under the Policy have consistently found that noncommercial fan sites qualified as legitimate use. In this proceeding, though, there is no fan site. There is no evidence of Respondent’s use of the Disputed Domain Name for this or indeed any other purpose, or of “demonstrable preparations” to do so. Respondent’s factual assertions, if true, demonstrate only that he intended to use the Disputed Domain Name for a fan site. Intentions are not “demonstrable preparations” to use a domain name. Under Paragraph 4(a)(ii), once Complainant has established his prima face case, “concrete evidence”, not intentions, is necessary to overcome that presentation”.

Thus, the Panel concludes that second condition of the Rules is proved by the Complainant.

C. Registered and Used in Bad Faith

As the third condition under the Rules, Complainant shall prove that the domain name was registered and is being used in bad faith, cfr. the Rules Paragraph 4(a)(iii).

Firstly, the Panel points out that none of the circumstances mentioned in the Rules Paragraphs 4(b)(i)-(iii) are applicable in this matter. Hence, the Respondent has not requested Complainant to pay in excess of his out of pocket costs. Further, there is no evidence that Respondent has engaged in a pattern of preventing an owner of a trademark from reflecting the mark in a corresponding domain name. Furthermore, there is no evidence showing that that domain name is registered primarily for the purpose of disrupting the business of a competitor.

The fourth circumstance under Paragraph 4(b)(iv) is that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant’s mark.

As mentioned above, Respondent has claimed that he was planning to set up a fan site. Even if it is to be assumed that such fan site, if ever to be established, would be non-commercial, a mere allegation of future intention to use the domain name in this way cannot create a valid defence against the Policy, see above. The fact that the Respondent has registered a domain name which is similar to a very well known trademark internationally, and even not fulfilled his promise to transfer the domain name, shows bad faith on the part of the Respondent.

Based on the above, Paragraph 4(b)(iv) of the Policy is met.

The Panel concludes that the Complainant has shown that the Respondent has registered and used the domain name in bad faith.

 

7. Decision

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 <jgermeister.net> be transferred to the Complainant.


Arne Ringnes
Sole Panelist

Dated: March23,2005