The Complainant is Klöckner & Co SE of Duisburg, Germany, represented by Brigitte Joppich, Germany.
The Respondent is Klocke of America, Inc. of Fort Myers, Florida, United States of America, internally represented.
The disputed domain name <kloeckner.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2010. On March 26, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On March 26, 2010, Network Solutions, LLC transmitted by email to the Center its verification response, confirming 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 March 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2010. The Response was filed with the Center on April 18, 2010.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 22, 2010. 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 Complainant, it is a major and long established company in the steel and other metals industry, operating in Europe and North America and based in Germany. The Complainant is also engaged in the manufacture of plastics and packaging materials. The scale of its operations is that its sales in 2008 amounted to EUR 6,750 million. The Complainant's trademarks (registered for technical reasons under Klöckner & Co AG) include:
klöckner & co multi metal distribution, community Reg. No. 000686881,
priority date November 24, 1997, classes 6, 7, 17, 39, 40, 42;
klöckner & co multi metal distribution, German Reg. No. 30470359,
priority date December 10, 2004, classes 6, 7, 17, 19, 39, 40, 42;
klöckner & co multi metal distribution, German Reg. No. 39755658,
priority date November 20, 1997, class 19;
klöckner & co multi metal distribution, International Reg. No. 706867,
priority date September 28, 1998, classes 6, 7, 17, 19, 39, 40, 42;
klöckner & co multi metal distribution, International Reg. No. 865407,
priority date June 6, 2005, classes 6, 7, 17, 19, 39, 40, 42;
klöckner & co multi metal distribution, United States of America (USA) Reg. No. 2933534, priority date August 27, 2001, class 6;
KLÖCKNER DUISBURG with device, German Reg. No. 649238,
priority date June 30, 1952, classes 1, 2, 4, 6, 7, 8, 9, 19.
The Complainant owns the domain names <kloeckner.de>, <kloeckner.at>, <kloeckner.ch> and <kloeckner-stahl-und-metallhandel.de>.
According to the Respondent, it is involved in the packaging and related materials industry and is based in the United States (“USA”). Its name is Klocke of America Inc., and the Response was presented over the name of Carsten Klocke.
Both Parties refer to there having been litigation about 12 years ago concerning the Complainant's perception that the Respondent's name was similar to its trademark, and previous negotiations over the possible sale of the disputed domain name to the Complainant.
According to the WhoIs database provided in the Complaint, the disputed domain name appears to have been first registered on June 20, 2001 by Cambridge Capital Investment Ltd., of Florida, USA. By February 4, 2008, the disputed domain name appears to have been registered to KOA, and by December 25, 2009, was registered in the name of Klocke of America Inc., both of the same address in Florida, USA.
The Complainant has submitted copies of trademark registry information pages in support of its claim to ownership of the trademarks listed in section 4 above, and documentation of the succession from Klöckner & Co AG to Klöckner & Co SE.
The Complainant points out that its trademark is spelt KLÖCKNER, i.e., with the character “Ö”, which has an umlaut, and says that if “Ö” is not available on a keyboard, it is commonly replaced with “OE”.
The Complainant contends that the disputed domain name <kloeckner.com> is confusingly similar to the trademark KLÖCKNER in which it has rights, as the disputed domain name is composed exclusively of that trademark. The directory indicator in the disputed domain name and the additional graphical and textual elements in the trademarks should not obviate a finding of confusing similarity. The fact that the Complainant and the Respondent are in different lines of business is also irrelevant.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has not authorised the Respondent to use its trademark in a domain name.
The Complainant says there is no evidence of the Respondent's use or demonstrable preparations for the use of the disputed domain name for a bona fide purpose. It is used to divert visitors to the Respondent's website “www.klocke.com”. There is no evidence that the Respondent, Klocke of America, Inc., has been known by or has traded under the name of the disputed domain name or the name KLÖCKNER. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith.
The Complainant says that the Respondent was well aware of the Complainant when it acquired the disputed domain name because of a previous trademark dispute in which the Complainant tried to stop the Respondent from using the name “Klocke”.
The Complainant says that the two Parties engaged in unsuccessful negotiations for the sale and purchase of the disputed domain name in 2009, and that the Respondent asked for EUR 20,000.00. Certified translations of some of the emails exchanged in the matter are provided in evidence. The Complainant says there is evidence in the email of September 28, 2009 that the Respondent registered the disputed domain name to get compensation for legal fees incurred in the earlier trademark dispute.
The Complainant says that the Respondent has intended to rely deliberately on initial interest confusion between the disputed domain name and the trademark KLÖCKNER in order to attract visitors to the Respondent's website. Furthermore the Respondent prevents the Complainant from having an Internet presence under the important “.com” domain and that the Complainant's business is thereby disrupted.
The Complainant requests the transfer of the disputed domain name.
The Respondent denies the Complaint. The Response was submitted by way of an email letter and is arranged informally.
The Respondent says that it registered the disputed domain name after the prior owner relinquished it.
The Respondent says that it is correct that in the USA many in its industry confuse the names Kloeckner and Klocke. It is confirmed that the Parties were previously in dispute and that legal costs were incurred by the Respondent.
The Respondent says it has a legitimate interest in the disputed domain name. It is used to forward visitors to a webpage of the Klocke Group. Reasons for doing this include:
a. customers searching for the Respondent may be confused with the name Kloeckner;
b. the Respondent's business is using thermoforming material from Kloeckner Pentaplast in the USA and in Germany, and it is of benefit to potential customers of both the Respondent and Kloeckner Pentaplast to reach the disputed domain name [this paragraph of the Response refers variously to Kloeckner Pentaplast and Klockner Pentaplast, which the Panel believes may both be intended to refer to Klöckner Pentaplast];
c. the Respondent uses Kloeckner packaging machines in the USA and Germany, which it says are still known in the industry as Kloeckner machines, although the names Kloeckner MediSeal and Kloeckner Medipack have been changed to Koerber Mediseal and Koerber Medipack. The Respondent has the potential to develop adaptations of these machines and might need to use the name Kloeckner jointly in the future.
The Respondent says that Klöckner & Co SE, the Complainant, is not doing business in the USA under the Kloeckner name but as Namasco. As “.com” is primarily a USA domain and the Complainant's German headquarter is already using <kloeckner.de>, there should be no urge to take over the disputed domain name.
The Respondent asserts strongly that it did not acquire the disputed domain name in order to sell it to the Complainant. The Complainant made the first offer. The Respondent was aware that the Complainant also had a legitimate interest in the disputed domain name, as would others. The Respondent agreed to accept EUR 15,000.00, but the Complainant withdrew the offer and then offered EUR 10,000.00.
The Respondent would consider allowing other companies including the Complainant to be mentioned on the website to which the disputed domain name resolves.
The Respondent says that if it must lose the disputed domain name, it should go to Kloeckner Pentaplast, which is a world leader in pharmaceutical packaging material, and which would have prior rights to the domain name as it was part of the “old” original Klockner Group.
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Complainant is required to prove that it has rights in a trademark. The Panel is satisfied on the evidence that the Complainant is the holder of registered trademarks for KLÖCKNER & CO MULTI METAL DISTRIBUTION (styled and in lower case) and for KLÖCKNER DUISBURG (styled with device). In both types of trademark the key name KLÖCKNER incorporates the character “ö” (or “Ö”) with an umlaut.
The Complainant has the onus of proving to the satisfaction of the Panel that the disputed domain name <kloeckner.com> is confusingly similar to the trademark element KLÖCKNER. Clearly they are spelt differently as the disputed domain name contains “oe” where the trademark contains “ö” with an umlaut.
Computer keyboards made for use in the German language have a key for “ö” and “Ö”, but of course not all keyboards may have this function. The Complainant says that if the character “ö” is unavailable on a keyboard, it is commonly replaced with “oe”, and therefore the claim to confusing similarity is founded upon the basis that “kloeckner” in the disputed domain name and KLÖCKNER in its trademark are equivalent and phonetically similar.
The issue of confusing similarity between a trademark spelled with an “ö” and a domain name incorporating that trademark but spelled with an “oe” has arisen before. Whilst previous decisions under the UDRP are not binding, it has usually been held that the replacement of “ö” with the phonetically similar “oe” may be sufficient for confusing similarity to be found in the terms of paragraph 4(a)(i) of the Policy (for example, Deutsche Börse AG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0786; Mövenpick Holding AG v. Olive Tree Products, WIPO Case No. D2000-1540; Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936).
The Panel finds confusing similarity between the disputed domain name and the element KLÖCKNER of the Complainant's trademarks.
The Complainant is required to prove that the Respondent does not have rights or legitimate interests in the disputed domain name, and has asserted prima facie that it has not authorised the Respondent to use its trademark in the disputed domain name.
The Complainant appears to argue that the Respondent does not have rights and legitimate interests in the disputed domain name utilising the spelling “kloeckner”, because of the phonetic similarity to KLÖCKNER, and points to its own registration of <kloeckner-stahl-und-metallhandel.de>, <kloeckner.de>, <kloeckner.at> and <kloeckner.ch>. Furthermore the Complainant clearly believes the element “Klocke” in the Respondent's trademark to be so similar to KLÖCKNER that some 12 years ago it initiated litigation to try to stop the Respondent from using the name “Klocke”. The Respondent concedes that in the USA, many in its industry confuse the names “Kloeckner” and “Klocke”. Thus if, as the Complainant implies, the similarity of “kloeckner” to its trademark gives it the right to register domain names containing “kloeckner”, then it might appear superficially, by the same reasoning, that the Respondent may be said to have a comparable right .
The Panel distinguishes, however, between the narrow question of whether <kloeckner.com> is confusingly similar to the Complainant's trademark under the Policy, which has been answered above in the affirmative; and whether an entity whose name is essentially “Klocke” may be found to have a right or legitimate interest in using a domain name <kloeckner.com> on that basis. Ultimately, however, because of its finding under the third element, the Panel need not reach a conclusion in this particular proceeding as to whether the Respondent does or does not have rights or legitimate interests in the disputed domain name.
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location.”
The Complainant says that the Respondent did all of those things envisaged under paragraph 4(b)(i) of the Policy. The Parties both say that they have bargained previously over the possible sale of the disputed domain name to the Complainant, and letters provided in evidence by the Complainant provide some of the background to this.
In an email of September 7, 2009, the Complainant referred to a previous communication on the matter, but declined the Respondent's asking price of EUR 25,000.00, and said (according to a certified translation) “What we would suggest would be in the range of EUR 15,000”. (The Panel can find no evidence regarding the nature of the commencement of these negotiations included in the provided record, i.e., establishing which party actually initiated the negotiations for sale of the disputed domain name.)
On September 28, 2009, the Respondent replied indicating that it would sell for EUR 20,000.00. The Panel can find nothing in this email to substantiate the Complainant's contended interpretation: “As clearly evidenced by the Respondent's email of September 28, 2009 [...], the Respondent registered the disputed domain name to get compensation for legal fees incurred during a conflict with the Complainant...” (referring to the litigation 12 years ago). On the contrary, the Respondent mentions anecdotally that in selling the disputed domain name it would like to recover at least part of those legal costs. There is no evidence in the Respondent's letter to suggest that the disputed domain name was registered specifically for the purpose of recouping legal costs.
On December 15, 2009 the Complainant made a reasonably clear offer to buy for EUR 10,000.00 and offered a quick settlement. The Complainant sent a reminder on January 21, 2010.
The Respondent refers to the Complainant as being unwilling to honour its own earlier offer to buy for EUR 15,000.00. In this Panel's view, whilst the Complainant's words “What we would suggest would be in the range of EUR 15,000” cannot be said to constitute a firm offer capable of acceptance or an intention to be bound (and if it had been, was evidently rejected by the Respondent's counter-offer to sell for EUR 20,000.00), the correspondence overall nevertheless reveals a succession of polite letters between both Parties and a phase of determined business negotiations. To this Panel, such preceding communications do not sit comfortably with the Complainant's decision then to seek to obtain the disputed domain name by means of a complaint under the UDRP. More particularly, they do not serve to persuade the Panel that the Respondent on balance acquired the disputed domain name specifically in order to sell it to the Complainant in violation of paragraph 4(b)(i) of the Policy.
To this Panel, the tone of the Respondent's submission, contained in a plain and conciliatory letter, does not project that of an abusive registrant and seems in keeping with a serious industrial enterprise. Although neither Party has demonstrated to the Panel any particular rights to the disputed domain name per se, the Panel has not been convinced that the Respondent on balance acquired it primarily for sale to the Complainant as envisaged by paragraph 4(b)(i) of the Policy.
There is no evidence before the Panel that the Respondent has engaged in a pattern of making blocking registrations. The Complainant's claim that the Respondent “prevents the Complainant from having an Internet presence under the important “.com” domain” is rejected because, as reasoned above, confusing similarity between the disputed domain name and the Complainant's trademark on the one hand, does not equate with any automatic right of the Complainant to register domain names incorporating the independent name “kloeckner”. There is no evidence that the Respondent has disrupted or intended to disrupt the business of the Complainant. There is no realistic evidence that the Respondent has attempted to attract customers away from the Complainant for commercial gain by confusion. The provisions of paragraph 4(b) of the Policy are without limitation and the Panel can find no other evidence that the Respondent either registered or has used the disputed domain name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman
Dated: May 28, 2010