WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Notar Eiendom AS v. LIPnet
Case No. D2000-1070
1. The Parties
The Complainant is Notar Eiendom AS, a real estate company, organized and existing since 1986 under the laws of Norway, with business address at Osloveien 19, 7003 Trondheim, Norway.
The Respondent is LIPnet, a division of Magenta Computer AG, with address at Moltkestrasse 17, Detmold, 32756, Germany.
2. The Domain Name and the Registrar
The domain names at issue are "notar.com" and "notar.org" (hereinafter the "Domain Names"). The registrar is Network Solutions, Inc. (hereinafter the "Registrar").
3. Procedural History
On August 15, 2000, the Complainant filed by e-mail a complaint (hereinafter the "Complaint") with the WIPO Arbitration and Mediation Center (hereinafter the "Center"). The Center received a hardcopy of the Complaint on August 21, 2000. A copy of the Complaint was notified to Respondent on September 15, 2000.
The Center proceeded to verify whether the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "ICANN Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "WIPO Rules"), including the payment of the requisite fees. In the course of the verification of compliance with the formal requirements, the Center requested the Complaint to identify the registrar with which the Domain Names were allegedly registered at the time the Complaint was filed, and to send a copy of the Complaint to the Registrar.
On August 25, 2000, the Complainant informed the Center that the Registrar of the Domain Names in dispute is Network Solutions and confirmed that it sent a copy of the Complaint to the Registrar.
On September 10, 2000, the Registrar confirmed that the Domain Names had been registered via Network Solutions' registration services, that LIPnet (NOTAR4-DOM) was the current registrant of the Domain Names and that the Domain Names were in "active" status. The Registrar also confirmed that Network Solutions' 4.0 Service Agreement is in effect for "notar.com" and Network Solutions' 5.0 Service Agreement is in effect for "notar.org".
On September 15, 2000, the Center confirmed that the Complaint, as amended, satisfies the formal requirement and informed the Respondent of the commencement of the proceedings as of September 15, 2000, and of Paragraph 5 (a) of the ICANN Rules requiring Respondent to file a response to the Complaint within 20 days, i.e. before October 4, 2000, (hereinafter the "Response").
The Respondent sent an e-mail in German to the Center on October 4, 2000, generally denying Complainant's rights to the word "Notar" and informing the Center that LIPnet is a division of Magenta Computer AG and that he was sending a power of attorney by normal post to the Center.
On October 11, 2000, the Center granted to Respondent a further period for filing a Response in English until October 20, 2000. Respondent timely filed the Response.
On November 6, 2000, the Complainant filed additional remarks commenting on the Response.
On November 15, 2000, the Center informed the Parties that an administrative panel (the "Panel") has been appointed and transferred the file to the Panel. The Panel finds it was properly constituted in compliance with the ICANN Rules and the WIPO Rules and the panelist issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The administrative panel (hereinafter the "Panel") has reviewed the documentary evidence provided by the Complainant and the Center and agrees with the Center's assessment that the Complaint, as amended, complies with the formal requirements of the ICANN Rules.
4. Factual Background
The Complainant is a real estate company with more than 220 employees and a legal department including 30 lawyers. It provides services in four main areas: legal advice, real-estate agency, debt collection and financial consulting (Attachment 7 to the Complaint). The firm was first registered on August 4, 1986.
The Complainant owns a trademark registration featuring the design of a scale and the word NOTAR in Norway with priority of 4 July 1996, which is registered for the services in Int. Classes 35, 36, 38, 41, 42; (the whole content of each class).
The Complainant further owns a trademark registration of the word mark NOTAR in block letters in Sweden with priority of February 14, 1997 which is registered in block letters in Int. Class 35 notably for consulting services, in Int. Class 36 notably for real estate affairs, in Int. Class 38 for telecommunications, in Int. Class 41 notably for seminars and conferences and in Int. Class 42 for professional consulting services and legal services. Copies of the corresponding registration certificates are attached to the Complaint as Attachments 5 and 6.
The Respondent is a division of Magenta Computer AG, a provider of Internet services located at Moltkestr. 17, 32756 Detmold, Germany. The Respondent registered the Domain Names "notar.com" and "notar.org" on February 24, 1999 and July 31, 1997, respectively.
5. Parties' Contentions
- that the Domain Names at issue are identical or confusingly similar to its registered trademarks in Norway and Sweden;
- that the Respondent has no rights or legitimate interests in respect of the Domain Names because according to its own home page ("www.lip.net"), the Respondent is a computer company providing general Internet services. Furthermore, Complainant contends that the Respondent is not named "Notar", does not provide any particular services named "Notar", and the Domain Names have not been and are not being used by the Respondent;
- that the Respondent has registered the Domain Names for the sole purpose of reselling them. Complainant alleges, without providing evidence, that an earlier employee of the Respondent called Mr. Waldemar stated that the Respondent has tried to resell the Domain Names to several German companies and alleges that this indicates Respondent's lack of legitimate interest regarding the Domain Names and bad faith;
- that the Complainant attempted several times, through e-mail, mail or telephone, to discuss the matter and reach a friendly settlement. In a letter dated September 22, 1999, Complainant claimed the violation of his trademark rights (Attachment 9 of the Complaint). On March 4, 2000, the Respondent asked the Claimant to "make an acceptable offer" regarding the transfer (Attachment 12 of the Complaint). On March 8, 2000, the Claimant offered a compensation of US$ 1,250 for the costs of registration and maintenance. The Respondent refused to answer and, subsequently, informed the Claimant that he was not willing to discuss a friendly settlement (Attachments 14, 15 of the Complaint); the Claimant alleges that that Respondent's refusal to reach a friendly settlement constitutes a proof of bad faith;
- that according to German regulations, which allegedly differ from the Norwegian ones, only notaries public authorized by the government have the right to use the name "Notar" in Germany and that, therefore, the Respondent, as a German Internet company, cannot have the legal and legitimate rights to use the Domain Names at issue.
- that it intends to use the Domain Names at issue to provide third level domains, e-mail forwarding and web services for notaries public;
- that notaries public would benefit from sharing the Domain Names which reflect the name of their profession and allow them to share the service costs;
- that the German word "Notar" (which means notary public in English) cannot be monopolized as a trademark since it designates a profession and it is not a protectable as such. In support of this statement, the Respondent provides the definition of the Notary Public according to the German Ministry of Justice (Attachment 1 of the Response), which indicates that "Notar" is an independent officer authorized to certify documents and to perform other acts of administration of justice;
- that it did not register the Domain Names with the intention to resell them;
- that Claimant put pressure on the Respondent but that Respondent refused to sell the Domain Names and stopped further communications.
6. Discussion and Findings
Subsequent to the filing of the Complaint and the Response, Complainant filed a supplementary submission. Supplemental filings are not provided for under the Policy and the ICANN Rules and, therefore, this Panel must decide whether to admit it or not. The Policy and the ICANN Rules demonstrate a strong preference for single submissions by the parties absent extraordinary circumstances (Rollerblade, Inc. v. CBNO and Ray Redican Jr., D2000-0427). Prior WIPO decisions state that supplemental filings should only be permitted where there exist "new, pertinent facts that did not arise until after the submission of the complaint" (Gordon Summer, p/k/a Sting v. Michael Urvan, D2000-0596). In fact, the proposed supplemental submission does not allege new pertinent facts which occurred after the submission of the Complaint but merely reargues the facts already alleged by the Complainant. Therefore, this panel does not admit the Complainant's supplementary submission.
To have the disputed Domain Names transferred to it, Complainant must prove each of the following (Policy, paragraph. 4(a)):
(i) that the 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 domain name; and
(iii) that the Respondent's domain name has been registered and is being used in bad faith.
Identity or Confusing Similarity
Complainant's Norwegian trademark registration features the design of a scale in a circle and the word NOTAR. The term used in Norway that corresponds to the English word notary public is "notarius publicus".
Complainant also owns a Swedish registration of the word mark NOTAR in block letters. The Swedish term for notary public is also "notarius publicus". The word "Notar" does not have a dictionary meaning in Swedish. Complainant has shown that it owns registrations of the trademark NOTAR and that its Swedish trademark and the word element of its Norwegian trademark are identical to the Domain Names at issue. It is not necessary to decide whether these trademarks are sufficiently distinctive for the services for which they are registered because, as shown below, Complainant has not shown bad faith registration and use of the Domain Names by Respondent.
Legitimate Rights or Interests
Registration of a generic term as a domain name is possible under the ".com" TLD and such domain names often have a significant commercial value. In contrast, a generic term cannot be monopolized as a trademark for the goods or services indicated by its common dictionary meaning. The difficulty lies in the fact that a domain name like "notar.com" may be descriptive or even generic in relation to certain services in a certain language but may be a distinctive trademark in another language or for other goods or services (Allocation Network GmbH v. Steve Gregory, Case No. D2000-0016).
The word "Notar" means notary public in the German language, i.e. an officer who attests or certifies writings (as a deed) to make them authentic and performs other acts of administration of justice. Respondent stated that it intends to use the Domain Names to establish a shared site for notary publics in order to provide third level domains, e-mail forwarding and web services for the members of this profession. As of the date of this decision, Respondent has not yet made any use of the Domain Names. However, it is not necessary to decide whether Respondent has rights or legitimate interests in the Domain Names because, as discussed below, Complainant has not shown that Respondent registered and used the Domain Names in bad faith.
Registration and Use in Bad Faith
Complainant has not provided any evidence of facts which might indicate that Respondent knew or should have known that the word NOTAR is registered as a trademark by Complainant in Sweden and Norway. (Allocation Network GmbH v. Steve Gregory, Case No. D2000-0016). Considering that "Notar" is the generic word in German for notary public, that Respondent is a German company, and that Complainant’s trademark is not widely known, Respondent could not reasonably expect that the registration of the Domain Names might infringe the trademark rights of a third party (LIBRO AG v. NA Global Link Ltd., Case No. 2000-0186).
Further, Complainant has not submitted evidence that Respondent attempted to sell the Domain Names for financial gain. Rather, it was Complainant who offered to purchase the Domain Names for US$ 1,250, and Respondent refused this offer. Complainant's allegation that Mr. Waldemar stated that Respondent attempted to sell the Domain Names is not supported by any evidence and is mere hearsay. Therefore, this Panel finds that Respondent has not registered and used the Domain Names in bad faith.
For all of the foregoing reasons, this Panel decides that Complainant has not demonstrated that the Domain Names were registered and used in bad faith.
Accordingly, this Panel decides that the Complaint is denied because Complainant has not succeeded in proving the evidence required by paragraph 4(a) of the Policy.
Dated: December 8, 2000