WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Diebold, Incorporated v. Olaf Wittbrodt
Case No. D2010-1878
1. The Parties
The Complainant is Diebold, Incorporated of North Canton, Ohio, United States of America, represented by Walker & Jocke, United States.
Respondent is Olaf Wittbrodt of Osnabrueck, Germany, represented by CR Rechtsanwälte Ciftci Richter, Germany.
2. The Domain Name and Registrar
The disputed domain name <mosler-safe.com> (hereafter the “Domain Name”) is registered with InterNetWire Communications GmbH, Munich, Germany.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2010. On November 8, 2010, the Center transmitted by email to InterNetWire Communications GmbH a request for registrar verification in connection with the Domain Name. On November 8, 2010, InterNetWire Communications GmbH transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On November 11, 2010, the Center transmitted an email to the parties in both German and English regarding the language of proceedings. On November 13, 2010 Complainant filed a request for the language of the proceedings to be English. Respondent did not object or reply in this regard.
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 Respondent of the Complaint, and the proceedings commenced on November 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2010. On December 13, 2010, Respondent filed a request for a 10-day extension of the Response due date. On December 14, 2010 the Center granted extension to the Respondent to file Response till December 15, 2010. The Response was filed with the Center on December 16, 2010, with a subsequent communication being sent on December 20, 2010.
On December 21, 2010, Complainant filed a supplemental filing and requested the Center for permission to do so. The Center informed the Complainant “that it is in the sole discretion of the Panel to determine whether to consider and/or admit the supplemental filing in rendering its decision”.
The Center appointed Bernhard Meyer as the sole panelist in this matter on December 29, 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.
4. Factual Background
On August 6, 2001, Mosler Inc., a United States company and integrator of security systems and services, declared bankruptcy. With an Asset Purchase Agreement of October 17, 2001, the Complainant assumed parts of the Mosler Inc. business, including the registered MOSLER trademarks. At present, Complainant owns 79 trademark registrations in 45 countries – amongst others in the United States, United Kingdom of Great Britain and Northern Ireland and Germany – for the trademark MOSLER, mainly for use with safes, vaults and other physical security products. These registrations go as far back as 1937.
The Registrar could not confirm the date of registration of Domain Name. According to InterNic the Domain Name was created on November 19, 2007. As the Domain Name’s expiration date was November 19, 2010, the Registrar has confirmed that it is currently in registrar lock status and will remain in such status until the UDRP proceedings are concluded.
5. Parties’ Contentions
Complainant argues that the Domain Name <mosler-safe.com> is confusingly similar to its MOSLER trademarks, as they are mainly used in connection with safes, vaults and other physical security products.
Complainant states that Respondent has no rights or legitimate interests in respect of the Domain Name. The common law rights to the MOSLER mark for use with safes, vaults and other security products that Complainant owns originated in the 1800s. Complainant owns registrations for the MOSLER mark in several countries, whereby some were issued as early as 1937. Thus, all rights lie with Complainant and none with Respondent.
In its supplemental filing, Complainant shows that it and/or its licensee have continuously used the MOSLER trademarks ever since Complainant acquired the MOSLER trademarks in the bankruptcy of Mosler Inc. In particular, Complainant uses the MOSLER trademarks for security products such as safes, pneumatic tube system parts and supplies, and other products.
Complainant alleges that the Domain Name was registered and is being used in bad faith. The history stated on Respondent’s website is actually that of the United States company, Mosler Inc., whose assets were purchased by Complainant. Obviously, Respondent is pretending to be the successor to the United States company Mosler Inc. which he is not. Thus, by using the Domain Name, Respondent intentionally attempted to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s product on Respondent’s website.
Respondent brings forward that the disputed term “Mosler” has not been used since the bankruptcy of the original proprietor, Mosler Inc., in 2001. Complainant only uses its own company name “Diebold” to sell products in connection with security products. Moreover, Complainant uses its trademarks MOSLER rather in deliberate obstruction to prevent third parties to make use of the term “Mosler” in connection with goods and services in the field of security since 2001. Thus, Respondent is the only active company connected to security goods and services using the term “Mosler”.
Furthermore Complainant oversees that the disputed term “Mosler” is not only used in connection with security goods and services but also with non-identical or similar goods such as hospital beds, minibar refrigerators, hotel TV and video screens.
Respondent points out that the trademarks are not only subject to expiration due to nonuse but may also be cancelled due to national competition law. In particular, national cancellation requests have already been placed against several of Complainant’s trademarks.
Respondent argues that it has legitimate interests in using the Domain Name. Regardless of the fact that Complainant’s trademarks are subject of cancellation because of nonuse, the Domain Name is also not used for identical or confusingly similar goods and services, i.e., hospital beds. Respondent unfolds no business activity in the area of application of Complainant’s trademarks.
Respondent states, that the Domain Name was neither registered nor used by Respondent in bad faith. The history of the company was an unfortunate mistake and has been revised so that further a/or any confusion will be reliably prevented for the future.
The Domain Name was not registered in order to prevent Complainant from reflecting the trademark in a corresponding domain name, because Complainant itself makes no use of its trademark MOSLER at all. Therefore the registration of the Domain Name is not qualified for disrupting Complainant’s business.
6. Discussion and Findings
As set out in paragraph 11 of the Rules1, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has discretion to decide otherwise, having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties, taking into consideration matters such as command of the language, time, and costs. It is important that the language finally chosen by the Panel for the proceeding is not prejudicial to the parties in their ability to articulate the arguments for the case. International Data Group, Inc. v. Lingjun, WIPO Case No. D2004-0398; Danfoss A/S v. d7r9e1a1m/淄博丹佛斯测控仪表有限公司, WIPO Case No. D2007-0934; Société nationale des télécommunications: Tunisie Telecom v. Ismael Leviste, WIPO Case No. D2009-1529.
In the case at hand, the Registrar confirmed that the language of the registration agreement for the Domain Name was German. Complainant, on the other hand, maintains that the language of the registration agreement for the Domain Name was English or English and German. Be it as it is, Respondent did not object to the language used by Complainant and filed its Response also in English. On this basis, the Panel understands that the parties agreed to a proceeding in English and decides that English shall be the applicable language in this case.
Acceptance of late Submissions
The Center duly transmitted the Complaint and notification of commencement of the proceeding to Respondent, but Respondent failed to submit its Response within the - even extended – deadline set by the Center. Instead, it filed its Response one day after the deadline. However, Complainant did not object to the late filing and submitted supplemental material which was equally outside of any deadlines set by the Center. Finally, a further totally unsolicited submission was made by Respondent on January 20, 2011, eight days after the announced decision date which was January 12, 2011 (see email of the Center to the parties of December 29, 2010).
In the interest of fairness and equality, the Panel decides to accept the late filings of both, the Respondent and the Complainant, which were submitted prior to the announced decision date. On the other hand, there must be an end to every proceeding and Respondent’s second filing, submitted long after the announced decision date, is too late and can not and has not been considered by the Panel.
Paragraph 4(a) of the Policy
According to paragraph 4(a) of the Policy, in order to succeed with its claim, Complainant must prove that each of the three following elements is present:
(i) Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence of its registration of several trademarks MOSLER, amongst others in Germany. Respondent claims nonuse of the German MOSLER trademarks and allegedly even placed national cancellation requests against them. Complainant, however, provided material which seems to evidence continuing use of the MOSLER trademarks in Germany and for the purposes of this proceeding the Panel determines that Complainant’s rights in the trademarks MOSLER are intact and proven even in Germany.
The term “Mosler” is the dominant element of the Domain Name and the suffix “safe” is merely descriptive. Moreover, the trademark MOSLER is mainly used is in connection with safes. As such, for the purpose of the Policy, the Domain Name is confusingly similar to Complainant’s trademark and the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
B. No Rights or Legitimate Interests
Complainant must show that Respondent has no rights or legitimate interests with respect to a disputed domain name. Respondent may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) That it has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(b) That it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) That it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Complainant states that Respondent or “The Mosler Safe Company”, the entity whose content is on the website at the Domain Name, does not have any rights to the MOSLER mark. The common law rights to the MOSLER mark for use with safes, vaults and other security products that Complainant owns originated in the 1800s.
Respondent argues that it has legitimate interests in using the Domain Name since Complainant’s German trademarks MOSLER are subject to cancellation due to nonuse. Furthermore, the Domain Name is said to be used by Respondent for goods that are neither identical nor confusingly similar to Complainant’s goods and services. Respondent maintains to be the only active company in the area of security goods and services using the term “Mosler”. However, Complainant submitted, in its supplemental filing, pictures of depository safes manufactured by it under the said trademark and did prove, in a sufficient manner for this proceeding, constant use of the MOSLER trademark also in Germany.
Respondent sells safes, thus, unfolds business activities in the area of Complainants trademarks. In the Panel’s view, this may be sufficient to mislead consumers or may tarnish the trademark in which only Complainant has proven rights. In addition, Respondent did not submit any tangible evidence for a genuine business activity of the entity called “The Mosler Safe Company”, displayed on Respondent’s website, and even less for his personal connection with and personal rights to such business.
Thus, the Panel notes that Respondent failed to demonstrate any of the criteria mentioned in paragraph 4(c) of the Policy and the requirements of paragraph 4(a)(ii) of the Policy are satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of bad faith conduct. In the case at hand paragraph 4(b) (iv) of the Policy seems to be relevant:
“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 web site or location.”
Respondent’s website originally showed the history of Mosler Inc. whose assets, including the trademark rights, were partly acquired by Complainant. Respondent declared this to have been a mistake and corrected it. However, this correction clearly shows that Respondent knew about the company, Mosler Inc., its business, its goods and its reputation in the security business when it registered the Domain Name. Respondent does not deny having had knowledge of Complainant’s trademarks and, in fact, contests their validity for lack of use. But, having known the history of Mosler Inc. and its trademarks, Respondent could not have legitimately incorporated the term “Mosler” into its Domain Name for the use it has made. Respondent must have known, or even intended to create an impression of an association with Mosler Inc., and thereby with Complainant’s trademarks. This leads the Panel to conclude that the Domain Name was registered by Respondent and used by Respondent in bad faith with the intent to create an impression of or an association with Complainant’s trademarks, products and services, and to profit therefrom. See Danfoss A/S v. d7r9e1a1m/淄博丹佛斯测控仪表有限公司, WIPO Case No. D2007-0934.
Hence, Complainant satisfies also paragraph 4(a)(iii) of the Policy.
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 <mosler-safe.com> be transferred to Complainant.
Dated: January 21, 2011
1 “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”