WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Schloss Elmau GmbH & Co. KG v. Michael Kurz, Infogruppe Rosenheim

Case No. D2014-1711

1. The Parties

The Complainant is Schloss Elmau GmbH & Co. KG of Elmau, Germany, represented by von BOETTICHER Rechtsanwälte, Germany.

The Respondent is Michael Kurz, Infogruppe Rosenheim of Rosenheim, Bayern, Germany.

2. The Domain Name and Registrar

The disputed domain name <schloss-elmau.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2014. On October 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 7, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 10, 2014.

The Center verified that the Complaint together with the amendment to 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 13, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2014. On October 15, 2014, the Center received an additional statement from the Complainant.

The Center appointed Brigitte Joppich as the sole panelist in this matter on November 5, 2014. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is a member of the Leading Hotels of the World Ltd. and runs a luxury spa hotel named “Schloss Elmau” in Elmau, Germany. The building, in which the hotel is operated, was built in 1914 – 1916. The hotel has been honored with a large variety of national and international awards, inter alia the “Tatler Spa Award 2014” and the “GEO Saison Top 100 - Best Wellness Hotel in Europe 2012”. The hotel’s restaurant “Luce d’Oro” has repeatedly been awarded with one Michelin Star and has also achieved sixteen points Gault Millau. The hotelier Mr. Müller-Elmau himself has also been honored by Gault Millau as “Hotelier of the Year 2013”. The Complainant spends an approximate annual amount of EUR 500,000 in advertising and marketing, using print, Internet and television among other advertising media, and its annual turnover amounts to approximately EUR 22 million in 2013. The hotel will be the venue for the 41st summit of the Group of the Eight (“G8”) in 2015.

The Complainant has filed an application for the registration of the trademark SCHLOSS ELMAU on September 12, 2014.

The disputed domain name was registered on January 24, 2014, one day after the press release of the Federal Government of Germany in which the Complainant’s “Schloss Elmau” was publicly announced as the venue for the 41st summit of the G8. The disputed domain name is being used in connection with a noncommercial website addressing messages against the G8/G7 summit to be held at the Complainant’s hotel in 2015. The WhoIs information which is used in connection with the disputed domain name appears to be false.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.

(1) The disputed domain name is virtually identical or at least confusingly similar to the Complainant’s unregistered mark “Schloss Elmau” as the addition of the generic Top-Level Domain (“gTLD”) “.org” does not diminish the nearly identical nature of the disputed domain name and the mark “Schloss Elmau”;

(2) The Respondent has no rights or legitimate interests in the disputed domain name as it has not been commonly known by the name “Schloss Elmau”, as the Complainant has never been affiliated with the Respondent, as the Complainant never granted to the Respondent any rights to use its “Schloss Elmau” mark, as the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, and as the Respondent is not making a legitimate, noncommercial fair use of it. With regard to bona fide offering of goods and services, the Complainant argues that there is no commercial offer at all under the disputed domain name. As regards the Respondent’s potential legitimate noncommercial or fair use of the disputed domain name, the Complainant contends that the sole purpose of the Respondent’s website is to mobilize aggressive protest movements against the upcoming G8/G7 summit to be held at “Schloss Elmau” and that this purpose of damaging the reputation and business of the Complainant by violently disrupting the upcoming G8/G7 summit does not create any legitimate right or a fair use.

(3) The disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant argues that the Respondent was aware of the Complainant and its hotel when registering the disputed domain name as the content of the Respondent's website available at the disputed domain name expressively refers to the hotel premises of “Schloss Elmau” with further reference to the G8 summit. With regard to bad faith use, the Complainant states that the Respondent creates a likelihood of confusion with the Complainant and targets the Complainant and that such an illegitimate use has been repeatedly considered as registration and use in bad faith. Furthermore, the Complainant argues that the Respondent's campaign is very likely to cause a disruption of the Complainant's business as well as damage to the reputation of “Schloss Elmau”.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Procedural Matter: Additional submission of Complainant

The first point to be dealt with is the admissibility of the Complainant’s supplemental submission which refers to the identity of the Respondent. The Rules do not allow the parties to file supplemental submissions on their own volition, and paragraph 12 of the Rules provides that a panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence. Grounds justifying new submissions are generally those regarding the existence of new pertinent facts that did not arise until after the complaint was filed. In the present case, the Complainant only received the Respondent’s contact data registered in the WhoIs database after such information had been disclosed by the concerned registrar after the Complaint was filed. Therefore, the Complainant was not able to conduct any research with regard to the underlying owner of the disputed domain name before filing the Complaint. Under these circumstances, the Panel elects to accept the Complainant’s supplemental submission and has relied on it in reaching this decision.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

B. Identical or Confusingly Similar

The disputed domain name fully includes the name of the Complainant’s hotel and is identical to such name.

The Complainant, however, does not own any registered trademark rights in SCHLOSS ELMAU but has so far only applied for the registration of a German trademark including such term. It has been consistently held by panels in other UDRP proceedings that a trademark application is not sufficient evidence of rights in a mark, without other evidence of unregistered (i.e., common law) rights (cf. Mk-Net-Work v. IVE Technologies, WIPO Case No. D2004-0302; PRGRS, Inc. v. Pamela Pak, WIPO Case No. D2002-0077; Mayekawa Mfg. Co., Ltd. v. Modern Limited - Cayman Web Development, WIPO Case No. D2005-0745).

The Complainant relies on unregistered trademark rights in Germany in SCHLOSS ELMAU based on the use of such term in connection with its hotel services. It is well-established that common law trademark rights may be sufficient for the purposes of establishing rights under paragraph 4(a)(i) of the Policy (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7; UITGERVERIJ CRUX v. W. FREDERIC ISLER, WIPO Case No. D2000-0575; Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314; Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083; Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786; Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322). However, it is noteworthy that the requirements to establish such rights under the UDRP may differ from those necessary under national law. To establish unregistered trademark rights under the Policy, a complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. A conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice. In fact, specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.

In the Panel’s view, the evidence provided by the Complainant is sufficient to establish that the Complainant enjoys unregistered trademark rights under the UDRP in the term “Schloss Elmau”, which has been used intensively for decades in connection with hotel services, advertised with an annual expenditure of EUR 500,000 and which received several awards in the past.

Finally, it is well established that the specific gTLD is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

As a result, the Panel finds that disputed domain name is identical to the name of the Complainant’s hotel in which the Complainant owns unregistered rights under the Policy and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.,

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable 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; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the domain name will then shift to the respondent.

The Complainant has sufficiently alleged that the Respondent has no rights or legitimate interests in the disputed domain name as described in its contentions above. The Panel finds that the Complainant has adequately shown a prima facie case under paragraph 4(a)(ii) of the Policy.

The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.

Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is using the disputed domain name in connection with a protest website against the upcoming G8/G7 summit. However, the content available at the disputed domain name does not contain any criticism of the Complainant itself (Annex 22 of the Complaint). In principle, as the Panel sees its a domain name holder could only rely on free speech under paragraph 4(c)(iii) of the Policy if the content of the website addresses the trademark included in the domain name and did not seek to unfairly tarnish the reputation of a third party.

Under these circumstances, the Panel does not have to decide whether or not the right to criticize extends to registering and using a domain name that is identical or confusingly similar to a complainant’s trademark (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.4).

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and thus in bad faith under paragraph 4(a)(iii) of the Policy. The name of the Complainant’s hotel is used as such in its entirety and the content of the website available at the disputed domain name refers to the G8/G7 summit to be held at the Complainant’s hotel in 2015. It is therefore inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant. The Panel further notes that the disputed domain name was registered on January 24 2014, one day after the press release of the Federal Government of Germany, January 23, 2014, in which was publicly announced that “Schloss Elmau” would be the venue for the 41st summit of the G8/7.

With regard to bad faith use, the Panel also finds that the actual use of the disputed domain name constitutes bad faith use under the Policy. In this context, the Panel notes that – as the Respondent did not try to sell the disputed domain name, has apparently not engaged in a pattern of registering third parties’ trademarks as domain names, is apparently not a competitor of the Complainant, and as the disputed domain name is not used for commercial gain – none of the examples of paragraph 4(b) of the Policy is given in a literal sense. The Panel notes however that to the extent the Respondent seeks to tarnish the Complainant’s reputation, there is a commercial impact that may be relevant to this inquiry.

However, it is consensus view that the paragraph 4(b) instances are only illustrative of what may amount to bad faith. In the present case, the Panel finds that the Respondent uses the disputed domain name in bad faith for the following reasons:

- While the Panel recognizes the Respondent’s general right of free speech, the disputed domain name (an exact match to the Complainant’s mark) is not necessary for that purpose and neither directly related to the content available at the website nor to the Respondent’s criticism. Therefore, the most plausible reason for the Respondent’s use of the disputed domain name seems to be an intention to unfairly punish the Complainant for making available the venue of the 2015 G8 summit. Under such circumstances, the content of the website available at the disputed domain name might unduly damage and disrupt the Complainant’s business.

- The Respondent provided false contact information in the WhoIs database and attempted to hide his true identity by setting up a privacy shield for the disputed domain name. Even if the use of privacy services in general is not to be objected, the use in order to hinder legal proceedings is evidence of bad faith.

Consequently, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <schloss-elmau.org> be transferred to the Complainant.

Brigitte Joppich
Sole Panelist
Date: November 17, 2014