The complainant is Bundesrepublik Deutschland (“Complainant”), Berlin, Germany, represented by Friedrich Kurz, Berlin, Germany.
The Respondent is Namegiant Limited (“Respondent”), London, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <bundeskanzleramt.net> (“Domain Name”) is registered with Wild West Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2008. On December 2, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name and Wild West Domains, Inc. transmitted by email to the Center its verification response. This response stated that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 14, 2009.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on February 4, 2009. 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.
According to the Complaint the Federal Chancellery (in German: Bundeskanzleramt) is a supreme federal authority. It is the coordinating centre for government policy as a whole. The Chancellery is in constant contact with the Ministries and the other federal authorities, so as to keep the Chancellor constantly informed of their current projects. The Chancellery deals with departmental affairs in parallel with the Ministries. As the structure of the Chancellery's working units mirrors this, they are also known as the ‘mirror divisions'. The Chancellery also provides a range of public information services.
No particular information is available concerning Respondent's activities. Respondent has registered the Domain name on January 31, 2007. The Domain Name links to an active website. This website contains several hyperlinks related to finance, credit cards, investments and credit reports. These hyperlinks link to other web pages under the same domain, with German language hyperlinks related to business, cars, books, computer games and electronics.
Trade mark or service mark
Complainant states that it has not registered its trade marks or trade names, but it has common law rights to the designation “Bundeskanzleramt”. The word Bundeskanzleramt is well-known in Germany to designate the Bundeskanzleramt or the office of the German Federal Chancellery. The German Chancellor renders services, such as providing public information, under this name, e.g., via the internet under the website “www.bunderskanzleramt.de”. The domains <bundeskanzlerin.de>, <bundeskanzler.de> and <bundeskanzleramt.de> are the official Web appearances of the Federal Chancellor and the office of the Federal Chancellor. The websites offer information about the policy of the Federal Chancellor and the tasks of the chancellorship.
Subsequently, Complainant states that the notation “Bundeskanzleramt” is used in trade (Bundesrepublik Deutschland (Federal Republic of Germany) v. "Vertraulich", WIPO Case No. D2002-0599), like the designations of the ministries <bundesjustizministerium>, <bundesinnenministerium>, and <verfassungsschutz> (Bundesrepublik Deutschland (Federal Republic of Germany) v. RJG Engineering Inc., WIPO Case No. D2001-1401 and Bundesrepublik Deutschland (Republic of Germany) v. RJG Engineering Inc./Gerhard Lauck, WIPO Case No. D2002-0110).
The designation, as Complainant argues, meets therefore the standards of §4 No. 2 German Trademark Act. According to §4 No. 2 German Trademark Act, service and trade mark rights are established by active use in public which is a use in the course of trade as well as by registration. As decided in the decisions WIPO Case No. D2001-1401 and WIPO Case No. D2002-0110, supra, Complainant believes that the designation “bundeskanzleramt” meets the standards of §4 No. 2 German Trademark Act. Complainant concluded that “bundeskanzleramt” is a common law mark which is protected under German law.
Complainant states that, as has been decided in Government of Canada v. David Bedford aka DomainBaron.com, WIPO Case No. D2001-0470, trade marks need not be registered to come within the scope of paragraph 4(a) of the UDRP.
Complainant contends in conclusion that the Domain Name is obviously identical to the service mark BUNDESKANZLERAMT.
No rights or legitimate interests
Complainant states that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant argued that there is no evidence of Respondent's use of or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services.
Complainant alleges subsequently that Respondent has not been commonly known by the Domain Name.
Complainant contends in conclusion that Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
Registered and being used in bad faith
Complainant further contends that Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15 of the Rules 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.
In the case of default by a party, paragraph 14 of the Rules prescribes that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case Respondent has not submitted any Response and has consequently not, despite the opportunity given, contested any of the contentions by Complainant. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.
In order to succeed in its request for an order to transfer the Domain Name to Complainant, the Complainant has the burden of proof that each of the elements set out in paragraph 4(a) of the Policy are present. These are as follows:
(i) Respondent's Domain Name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect to the Domain Name;
(iii) Respondent's Domain Name has been registered and is being used in bad faith.
Complainant has, accordingly to paragraph 4(a)(i) of the Policy, to prove that the domain name is identical or confusingly similar to a trade mark or a service mark in which Complainant has rights.
The principal question is whether the designation “bundeskanzleramt” enjoys protection as a mark.
Administrative panels in earlier cases ( WIPO Case No. D2001-1401, WIPO Case No. D2002-0110 and WIPO Case No. D2002-0599, supra) considered that designations of government institutions could in certain particular circumstances qualify as a mark and thus protected under German law as such.
In this Panel's view, the name of a government entity does not of itself necessarily meet the usual requirement under the Policy for rights in a trade or service mark. Something more would be required. Trade marks for example typically distinguish between the goods and services of different undertakings. In the present case, it does indeed appear that the German Chancellery's functions could be said to include the provision of information services to the public under the name “Bundeskanzleramt”. Whether the Federal Chancellery could be said to be a trade-related undertaking in the broader sense is a different question. However, in light of the intended purpose of the UDRP the Panel considers that there is little valid reason in the circumstances for making a dogmatic distinction between what may be a government entity's broader functions and particular services provided by such government entity under a specific name, provided there is satisfactory argument and evidence that the name has acquired sufficient distinctiveness and/or secondary meaning in connection with such services. Moreover, the Panel considers it likely that under German law the German government could oppose use of the name of the government entity in a similar way as a trade mark owner, including the owner of unregistered mark rights, could oppose use of his trade mark. For these reasons the Panel is satisfied that Complainant should in the particular circumstances of this case enjoy a similar level of protection for the name “Bundeskanzleramt” against a domain name grabbing as a more typical trade mark owner.
The Panel agrees with Complainant that it is clear that a trade mark or a service mark does not have to be registered in order for the Policy to apply.
The Panel concludes that the Domain Name and the name “Bundeskanzleramt”, in which Complainant has succeeded in the circumstances of the present case in showing rights for the purpose of the Policy, are identical or confusingly similar.
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.
Complainant has stated that there is no evidence that Respondent used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services. Subsequently, Complainant stated that Respondent has been commonly known by the Domain Name and that Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
Despite the opportunity given, Respondent has not contested or commented upon the contentions by Complainant.
The Panel concludes that, on balance, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name, which Respondent has not rebutted. The Panel accordingly finds for Complainant under the second element of the Policy.
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) sets out some circumstances which, in particular but without limitation, shall, if found by the Panel to be present, be considered as evidence of registration and use of a Domain Name in bad faith.
Complainant has contended that Respondent has registered the Domain Name to attract commercial gain, by creating a likelihood of confusion with the name and/or service mark of Complainant. The Panel notes that the Domain Name is currently being used to post pay-per-click advertising from which revenue is presumably derived. The Panel finds it inconceivable in the circumstances that Respondent would have registered a domain name such as that in dispute here without knowing of Complainant. The prospect for confusion between Complainant's name and service mark “Bundeskanzleramt”and the Domain Name is readily evident. The Panel believes that in the circumstances and noting in particular the content on Respondent's website that Respondent intended to create a likelihood of confusion and to attract Internet users to its website for monetary gain. Subsequently, Respondent apparently has a pattern of such behavior as Respondent was also Respondent in Marvel Characters, Inc. v. Namegiant Limited, Namegiant Domain are either owned by us or Client Managed, WIPO Case No. D2007-1252 and Recruitech, Inc. v. Mark, Segal, Namegiant Limited, WIPO Case No. D2008-1282.
As is the case in respect of other contentions by Complainant, Respondent has not, despite the opportunity given, contested or commented upon the contentions by Complainant.
On the basis of the foregoing, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith.
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 <bundeskanzleramt.net> be transferred to the Complainant.
Willem J. H. Leppink
Dated: February 18, 2009