WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Heimbs Kaffee GmbH & Co. KG v. Ho Kyoung Trading Co, Ltd., Heui-il Kang
Case No. D2011-1407
1. The Parties
The Complainant is Heimbs Kaffee GmbH & Co. KG of Braunschweig, Germany, represented by JonesDay Rechtsanwälte Patentanwälte, Germany.
The Respondent is Ho Kyoung Trading Co, Ltd., Heui-il Kang, of Seongnam, Republic of Korea (“Korea”).
2. The Domain Name and Registrar
The disputed domain name <allegretto.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2011. On August 19, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On August 19, 2011, eNom 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 August 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2011. The Response was filed with the Center on September 9, 2011.
Based on the Respondent’s designation of a three-member Panel, the Center appointed Petter Rindforth, Angelica Lodigiani and Hae-Chan Park as panelists in this matter on October 3, 2011. The Panel finds that it was properly constituted. Each member of 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.
Change of Registrar
On August 26, 2011, the Respondent informed the Center that the disputed domain name was no longer registered at the eNom Registrar, but had been transferred to the Korean-based Registrar, Korea Information Certificate Authority, Inc. d/b/a DomainCA, and that as the Respondent could not understand English well, and the Registration Agreement is Korean, the Respondent asked to proceed the case in the Korean language.
DomainCA confirmed to the Center on August 23, 2011 that it was the current Registrar, that the disputed domain name was locked and that the preferred language of the dispute was Korean.
The Center, referring to paragraph 8(b) of the Policy, on August 29, 2011 requested eNom to explain the circumstances of the transfer of the disputed domain name - in apparent breach of paragraph 8(b) of the Policy - from eNom to DomainCA and if possible restore registrar and registrant details to those previously confirmed by eNom pursuant to paragraph 3 of the Policy.
On August 29, 2011, the eNom informed that the transfer was possible due to a technical error unlocking the disputed domain name, and that – if agreed by DomainCA – eNom would be willing to reverse the transfer and reset the registrant data to its previous details.
Upon the Center’s request of August 30, 2011, on September 6, 2011, the DomainCA confirmed its willingness to conduct the requested transfer.
The current public WhoIs database indicates that the disputed domain name has been transferred back to the eNom registrar.
Language of the Proceedings
The language of the proceeding is the language of the registration agreement, unless both parties agree otherwise, or the panel determines otherwise under paragraph 11 of the Rules.
The Panel concludes that, although the Respondent made an attempt to transfer the disputed domain name to DomainCA with Korean as the language of the Registration Agreement, at the time the Complaint was filed with the Center and upon confirmation by the concerned Registrar, eNom, on August 19, 2011, the disputed domain name <allegretto.com> appeared to be registered at eNom with English as the registration agreement. Also the Panel notes that the Respondent submitted its Response in English.
The Panel therefore decides that the proper language of the proceeding in this case is English.
The Complainant filed a Supplemental Filing on September 14, 2011. The Rules provide for the submission of the Complaint by the Complainant and the Response by the Respondent. No express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Panel. Paragraphs 10 and 12 of the Rules grant the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either Party.
It is this Panel’s view that unsolicited Supplemental Filings from either party may be accepted in rare cases, when such Supplemental Filings really add specific information that would otherwise have forced the Panel to specifically ask either party for further specification and/or clarification.
However, in this specific case, the unsolicited Supplemental Filing did not add any specific and otherwise by the Panel required clarification. Therefore, the Panel will not consider the Complainant’s Supplemental Filing. See Viacom International Inc. and MTV Networks Europe v. Rattan Singh Mahon, WIPO Case No. D2000-1440, see also PRL USA Holdings, Inc. v. J. Schwarz, WIPO Case No. D2006-0147, and The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (“…additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.”).
Accordingly, the Administrative Panel shall issue its Decision based on the Complaint, the Response, the Policy, the Rules, and the Supplemental Rules.
4. Factual Background
The Complainant - a wholly owned subsidiary of Alois Dallmayr KG - is a coffee roastery, founded in Braunschweig, Germany, in 1880.
The Complainant is the owner of the trademark ALLEGRETTO, filed and registered as:
German National Trademark Registration No:
301 15 785 ALLEGRETTO (word); filed on March 9, 2001; Classes 11, 30 and 43
304 09 455 ALLEGRETTO (fig.); filed on February 19, 2004; Classes 11, 30 and 43
306 36 063 ALLEGRETTO COFFEE CONNECTION (word); filed on June 8, 2006; Classes 30, 35, 36 and 43
German Pending National Trademark Application No:
302011004906 ALLEGRETTO (word); filed on January 27, 2011; Classes 11, 30 and 43
302011005020 ALLEGRETTO (fig.); filed on January 28, 2011; Classes 11, 30 and 43
Community Trademark Registration No:
003666583 ALLEGRETTO (word); registered on December 13, 2007; Classes 11, 30 and 43
Madrid Protocol International Registration No:
1 075 323 ALLEGRETTO (word); registered on January 27, 2011; Classes 11, 30 and 43; Designating European Union, Switzerland, China, Croatia, Kazakhstan, Montenegro, Serbia, Russian Federation, Turkey and Viet Nam.
(Annex 3 of the Complaint showing copies of Certificates of Registrations, although the copies of the national German certificates are not translated from German to English, the language of this proceeding).
The disputed domain name <allegretto.com> was created on July 29, 2002.
According to the Certificate for Business Registration (Annex 1 of the Response), the Respondent is a “manufacturer of underwear, garments, baby garments, on-line information son consulting data base activities and on-line information provision services” located in Korea.
5. Parties’ Contentions
The Complainant refers to that its parent company Alois Dallmayr KG is a well-known delicatessen company in Germany and worldwide and enjoys reputation in particular for its coffee business. In addition to the Complainant’s trademark registrations for ALLEGRETTO, the mark is also used on the website “www.heimbs.de”.
The Complainant states that the disputed domain name is identical or at least highly similar to the Complainant’s trademark ALLEGRETTO.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of <allegretto.com>. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the disputed domain name. Furthermore, the Respondent is not known under the disputed domain name and the Respondent does not use <allegretto.com> as trade or business name.
Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith. Here, the Complainant refers to the fact that the Respondent has offered <allegretto.com> for sale at “professional domain name buying and selling website”, asking a price of GBP 100,000 for the disputed domain name (printout of the website attached as Annex 5 of the Complaint). On January 31, 2011, representatives of the Complainant contacted the Respondent and offered to buy the disputed domain name for EUR 5,000. The Respondent replied that the disputed domain name was for sale for EUR 100,000. After further negotiations, the Respondent stated that its best offer was USD 136,920 and that the Complainant was to be responsible for the escrow charges (Annex 8 and 9 of the Complaint).
The Complainant states that the Respondent’s action to use a parking page to offer the disputed domain name for sale puts the Respondent in breach of paragraph 4(b)(i) of the Policy - for the purpose of selling or renting the disputed domain name.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent, requesting the Panel to deny the remedies requested by the Complainant, states that <allegretto.com> is a common dictionary word domain name and the meaning of allegretto is “fairly quickly or briskly.” “Allegretto” is a globally well-known musical term and is a quicker tempo than andante but not as fast as allegro. In this respect, the Respondent refers to dictionary references related to the word “allegretto”.
The Respondent concludes that the word “allegretto” is not a meaningless word made or invented by the Complainant, and that the Complainant is not the only one in the world who can have <allegretto.com> exclusively.
According to the Respondent, its president learned the word “allegretto” in about 1970’s at music study of his middle school ages.
The Respondent refers to the fact that the Complainant’s trademark protection in Germany dates back to March 2001, while the disputed domain name was registered in July 2002, and that the Complainant has proceeded with registrations outside of Germany many years later. Further, the Respondent claims that the Complainant’s trademark ALLEGRETTO is not famous even in Germany, and that the <allegretto.de> domain name is registered in the name of a company not related to the Complainant.
The Respondent states that the Respondent did not know about the Complainant and its trademark ALLEGRETTO before the receipt of the Complaint. The Complainant and the Complainant’s trademark ALLEGRETTO are not known in Korea, and the Complainant’s website is totally created in the German language, not supporting the English language.
The Respondent also lists a number of national and generic domain name registrations including ALLEGRETTO, registered in the name of holders not related to the Complainant.
The Respondent states that it was founded in January 1992, as a night wear and jeans manufacturer and distributor. The Respondent has then expanded its business to “business consulting areas”, providing information on Chinese hygienic license to Korean cosmetics manufacturing companies. The Respondent concludes that it is maintaining totally different business than the Complainant. The Respondent claims to have never heard of the Complainant before this dispute.
On August 23, 2011, the Respondent filed a Korean trademark application for ALLEGRETTO (fig.) in Class 35 (copy of the Official Confirmation as Annex 5 of the Response).
According to the Respondent, the Respondent never initiated any offer or attempt to sell <allegretto.com> to the Complainant, but only replied to the Complainant’s purchase offer.
As to the parking contents, the Respondent denies that this was done by instructions of the Respondent, who claims to have no relationship with third party advertisers.
The Respondent summarize that the disputed domain name was registered and is being used in good faith, and further claims that the Complaint is a case of Reverse Domain Name Hijacking.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of the ALLEGRETTO trademark, registered in Germany, internationally and in the European Union.
The relevant part of the disputed domain name is “allegretto”, as it is well established in previous UDRP cases that the added top-level domain – being a required element of every domain name – is irrelevant when assessing whether or not a mark is identical or confusingly similar.
As the disputed domain name consists of the Complainant’s trademark ALLEGRETTO, the Panel finds that <allegretto.com> is identical to the Complainant’s registered trademark ALLEGRETTO.
B. Rights or Legitimate Interests
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228 (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The Respondent is not an authorized agent or licensee of the Complainant’s products or services and has no other permission to apply for any domain name incorporating the trademark ALLEGRETTO.
The Panel notes that the disputed domain name is, or at least have been, pointed to a parking page, offering the disputed domain name for sale. From what has been shown by the Respondent, it seems that <allegretto.com> is by now also used / directed to the Respondent’s official website.
The question is, whether the - at least up to the date of filing of the Complaint - used parking page generate rights or legitimate interests in the disputed domain name. As stated by panels in previous UDRP cases, such use may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services.”
The Respondent states that <allegretto.com> is a common dictionary word domain name and the meaning of allegretto is “fairly quickly or briskly.” However, the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning. (See Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462).
In this case, the disputed domain name appears to have only been used “for sale”, and the Panel is not totally convinced by the Respondent’s stated business-related plans, as the disputed domain name obviously by now has been registered for more than 9 years and is still offered for sale, rather than actively and genuinely used by the Respondent.
The Panel notes that the Respondent filed the Korean national trademark application for ALLEGRETTO (fig) in Class 35 on August 23, 2011, the same day as the Respondent also transferred <allegretto.com> to a new Registrar. The Panel cannot draw any other conclusion than these actions, initiated after the date of the filing of the Complaint, were not basically done as a result of the Respondents serious business activities but rather indicating a goal to make a dispute resolution case more difficult to handle for the Complainant (in particular related to the language of the proceedings).
Altogether, the Panel cannot draw any other conclusion than that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
To successfully prove the requirement under paragraph 4(a)(iii) of the Policy, the Complainant must prove that both registration and use of the disputed domain name are in bad faith.
As to registration in bad faith, the Panel notes that the Complainant is a German-based company, and the Respondent is based in Korea. At the time of the registration of the disputed domain name in 2002, the Complainant had only local German national trademarks, and there is nothing stated or proved in the Complaint that the Complainant’s trademark at that time was well-known outside Germany, much less indicating that the Respondent should have been aware of the Complainant’s trademark rights already at the date of the registration of <allegretto.com>. As also stated by the Respondent, the word “allegretto” is not the kind of word/trademark that can be said to be obviously related to one specific company or goods/services – especially not when the parties are so geographically separated as in this case.
Thus the Panel concludes that the Complainant failed to prove that the disputed domain name was registered in bad faith.
As to use in bad faith, the Panel is not convinced by the Respondent’s arguments related to the use of the disputed domain name. The disputed domain name seems to have been used only at the parking site, in order to find someone interesting to buy <allegretto.com>. This is however not per se bad faith use. The Complainant has failed to demonstrate that the Respondent is deriving a financial interest through any pay-per-click link on the parking page.
Where a respondent registers a domain name consisting of a “dictionary” term because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities rather than its specific trademark value, the use of the domain name consistent with such good faith belief may be considered use in good faith. (See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. See also Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964, indicating that the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark).
Therefore, the Panel herewith concludes that the Complainant has also failed to prove that the disputed domain name is being used in bad faith.
Reverse Domain Name Hijacking
The Respondent suggests that the Complainant is guilty of Reverse Domain Name Hijacking. Reverse Domain Name Hijacking is defined in paragraph 15(e) of the Rules as filing the complaint “in bad faith, for example in an attempt […] to harass the domain-name holder”.
In this present case, the Complainant 1) has in fact a valid trademark registration for ALLEGRETTO dated earlier than the registration of the disputed domain name, and 2) found the disputed domain name identical to its trademark, and used only on a website indicating that the domain name was for sale. It is the Panel’s view that the Complainant, not having all facts and arguments, had understandable reasons to file the Complaint.
The Panel therefore states that this is not a case of Reverse Domain Name Hijacking.
For all the foregoing reasons, the Complaint is denied.
Dated: October 17, 2011