WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bundesrepublik Deutschland (Federal Republic of Germany) v. RJG Engineering Inc.
Case No. D2001-1401
1. The Parties
Complainant is Bundesrepublik Deutschland (Federal Republic of Germany), represented by the "Bundesminister des Inneren" (Federal Minister of the Interior), in turn represented by the President of the "Bundesverwaltungsamt". Complainant’s address is Barbarastrasse 1, 50735 Köln (Cologne), Germany. Complainant’s representative in this case is RA Johannes Zindel, RAe Jones Day Reavis & Pogue, Grueneburgweg 102, 60323 Frankfurt am Main, Germany.
Respondent is RJG Engineering Inc, PO Box 6426, Lincoln, NE 68506, United States of America. Administrative Contact, Technical Contact and Zone Contact is Mr. Gerhard Lauck.
2. Domain Name and Registrar
The domain names at issue are <bundesinnenministerium.com>, <bundesinnenministerium.net>, <bundesinnenministerium.org> and <verfassungsschutz.org>.
The Registrar is Signature Domains Inc., 4021 Laguna St, Miami, Florida 33146, United States of America.
3. Procedural History
The World Intellectual Property Organization Arbitration and Mediation Center (the Center) received a Complaint from Complainant on November 27, 2001. An Acknowledgement of Receipt of the Complaint was issued on November 29, 2001.
Having verified that the Complaint complied with the formal requirements, the Center issued, on December 7, 2001, a Notification of Complaint and Commencement of Administrative Proceeding that was notified to the parties, the Registrar and ICANN. It was communicated to Respondent by post/courier (with enclosures), by fax (without enclosures) and by e-mail to <email@example.com> and to "postmaster" of the various domain names at issue. The e-mails to <bundesinnenministerium.org> and to <verfassungsschutz.org> could not be delivered. The fax transmission went through and the courier were delivered.
Having received no Response from Respondent, the Center issued a Notification of Respondent Default on January 3, 2002, which was communicated by e-mail to the parties.
Upon request, the Center received a Registrar Verification on December 6, 2001. In that Verification, the Registrar confirmed that
- a copy of the Complaint had been received by the Registrar
- Signature Domains Inc. is the Registrar of the domain names at issue, and that Respondent is the current Registrant of those domain names
- the Uniform Domain Name Dispute Resolution Policy applies to the domain names
- the current status of the domain names is: Registrar Lock
- English is the specific language of the registration agreement as used by the Registrant for each domain name, and
- the domain name Registrant in its Registration Agreement has submitted to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain names.
In respect of all the domain names at issue the Registrar Verification indicated as Registrant "RJG Engineering, Inc, PO Box 6426, Lincoln, NE 68506, United States" As Administrative Contact, Technical Contact and Zone Contact was in respect of all the domain names at issue indicated "Lauck, Gerhard" with the same mailing address as for Respondent and with e-mail address <firstname.lastname@example.org>; telephone and telefax numbers also indicated.
The Center invited Mr. Henry Olsson to serve as Sole Panelist in the case and received, on January 10, 2002, Mr. Olsson's Statement of Acceptance and Declaration of Impartiality and Independence. The same day the Center appointed Mr. Olsson as Sole Panelist and issued a Notification of Appointment of Administrative Panel and Projected Decision Date, which was communicated to the Parties. The Projected Decision Date was January 24, 2002.
The Sole Panelist considers that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
On the basis of the documents available relating to the notifications to Respondent, the Panel concludes that the Complaint has been duly communicated to Respondent and that there is, from this point of view, no obstacle to considering the case.
4. Factual Background
"Bundesinnenministerium" is the abbreviated German expression for "Ministry of the Interior". Similarly, "Verfassungsschutz" is the abbreviation for the "Office for the Defence of the Constitution". Both are public authorities of the Federal Republic of Germany.
No particular information is available concerning Respondent’s activities (in addition to what is submitted by Complainant and referred to below).
In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer the domain name that is the subject of the Complaint, to the jurisdiction of the courts at Miami, Florida, United States.
5. Parties' Contentions
First, Complainant states that the Federal Republic of Germany has not registered its marks/names but has common law service mark rights to the notions "bundesinnenministerium" and "verfassungsschutz." Those are well known in Germany to designate what is in English "The Ministry of the Interior" and "Office for the Defence of the Constitution." Both authorities render services, such as providing public information, under those names. According to Complainant, those abbreviations therefore meet the standards of Article 4, Paragraph 2, of the German Trademark Act from which provision follows that rights in trademarks and service marks may be established not only by registration but also by active use in public. Consequently, the notions "Bundesinnenministerium" and "Verfassungsschutz" enjoy trademark protection in the Federal Republic of Germany. In, for example, WIPO Case D2001-0470 was made clear that a mark does not need to be registered in order to come within the scope of paragraph 1 of the Policy.
Complainant contends that the disputed domain names are obviously identical to those service marks.
Furthermore, Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain names and does not conduct any bona fide business or makes any other legitimate non-commercial use of the disputed domain names. In fact, according to Complainant, Respondent directs, through hyperlinks, Internet traffic to a website of a US Nazi Group operated by Mr. Gerhard Lauck who is the President of Respondent. Respondent has registered the domain name <nazi-lauck-nsdapao.com>. Complainant has submitted copies of the contents of the website operated under that domain name. Due to action by Complainant the provider of the domain name <verfassungsschutz.org> has "shut the doorway." The disputed domain name <bundesinnenministerium.org> does not, according to Complainant, seem to be in use.
Complainant contends that Respondent has registered, and is using, the disputed domain names in order to deceive Internet users and mislead Internet traffic to the above-mentioned home-page the contents of which is illegal under German law. According to Complainant, Respondent indicates on his website that the disputed domain names will probably only be working for a short time and has, on another website given instructions on how to save blocked addresses. According to a printout submitted by Complainant: this other webpage is www.diegruenen.net; and the Panel notes that another WIPO Panel issued a decision - against the same Respondent as in the present case - in the relation to the domain name < diegruenen.net>.
On the basis of these contentions, Complainant requests that the Administrative Panel issue a decision that the disputed domain names be transferred to Complainant.
Respondent who has, as indicated above, been duly communicated the Complaint, has not submitted any Response and is in Default.
6. Discussions and Findings
Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.
In the case of Default by a Party, Paragraph 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case Respondent has not submitted any Response and has consequently not, despite the opportunity given, contested any of the contentions by Complainant. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.
From the Registrar Verification it follows that the Policy is applicable to this case. Consequently, Respondent is required to submit to a mandatory administrative proceeding as now initiated in respect of the domain names at issue.
Paragraph 4a of the Policy directs that Complainant must prove each of the following:
- that the domain names registered by Respondent are identical or confusingly similar to a trademark or a service mark in which Complainant has rights
- that Respondent has no rights or legitimate interests in the domain names, and
- that the domain names have been registered and are being used in bad faith.
In the following parts of this decision the Panel discusses each of those elements.
Identity or Confusing Similarity
Complainant has, according to Paragraph 4a(i) of the Policy, to prove that the domain names at issue are identical or confusingly similar to a trademark or a service mark in which Complainant has rights.
The domain names at issue are <bundesinnenministerium.com>, <bundesinnenministerium.net> <bundesinnenministerium.org> and <verfassungsschutz.org>.
The first question is whether the notions "bundesinnenministerium" and "verfassungsschutz" enjoy protection as service marks under German trademark law.
Provisions on the protection of trademarks in the Federal Republic of Germany are contained in the Law on the Protection of Trademarks and Other Signs (Trademark Law) of October 25, 1994. That Law in English translation is published, as last amended by a Law of July 16, 1998) in WIPO's collection Intellectual Property Laws and Treaties, of April 1999.
The notion of a trademark for the purposes of the Law is defined in Article 3. item 1 of the Law where it is prescribed: "Any signs, particularly words, including personal names, designs, letters, numerals, sound marks, three-dimensional configurations, including the shape of goods or their wrapping as well as other packaging, including colors or combinations of colors, which are capable of distinguishing the goods or services of one undertaking from those of another undertaking, may be protected as trademarks"
It should be mentioned that the definition of a trademark in German law obviously corresponds with the definition of the same concept included in Article 2 of the European Directive of 21 December 1988 to approximate the laws of the Member States relating to trademarks (89/104/EEC), which, however, only deals with registered trademarks.
Article 4 of the German Trademark Law contains provisions on the coming into existence of trademark protection. That Article prescribes: "Trademark protection shall accrue
1. by registration of a sign as a trademark in the Register kept by the Patent Office
2. through the use of a sign in the course of trade insofar as the sign has acquired a secondary meaning as a trademark within the affected trade circles; or
3. by notoriety as a trademark within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property (Paris Convention)".
According to the above-mentioned Article 3 of the German Trademark Act a trademark can consist of "any signs, particularly words….." that have a distinctive character. The Panel concludes that in fact both the word "bundesinnenministerium" and the word "verfassungsschutz" are signs which have a distinctive character and may per se be signs that could constitute a trademark.
The Panel furthermore concludes that nothing prevents a public authority from being the holder of a trademark right as such an authority would be covered by the word "undertaking" as a designation for those who can be holders of trademark rights provided that it is engaged in activities such as offering of goods or services.
The Panel also concludes that the notions "Bundesinneministerium" and "Verfassungsschutz" are well known in the Federal Republic of Germany as representing the Ministry and the Office in question and that the notions indicate a clear connection with the activities of those two bodies.
The main question in this case is rather whether the two notions can be said to be used "in the course of trade" as required for protection without registration under Article 4, item 2 of the German Trademark Law. In this respect Complainant offers little information, but refers mainly to the rendering of services such as providing public information under the names "Bundesinnenministerium" and "Verfassungsschutz" The Panel has, however, to assume that the services offered by the Ministry in question correspond to those offered by similar Ministries in other countries. On the other hand the activities of the "Verfassungsschutz" are more unclear. The Panel therefore has to base its considerations mainly, but not exclusively, on whether the issuing and dissemination of publications and other public information under the notions in question is sufficient to conclude those are being used "in the course of trade." In this respect the Panel finds that these activities are a form of trade directed towards the German people and that the notions, because they are, as found by the Panel, well known in Germany have come to be associated with the services offered by the Ministry of the Interior and the Office for the Defence of the Constitution. Consequently, the Panel considers that the notions at issue have been used as signs in the course of trade and have thus acquired a secondary meaning as trademarks/service marks in the minds of the German population, i.e. the "affected trade circles."
On the basis of this conclusion the Panel finds it to be established, for the purposes of this dispute, that the notions "bundesinnenministerium" and "verfassungsschutz" enjoy trademark protection under Article 4, item 2 of the German Trademark Law.
The Panel agrees with the Complainant to the effect that a trademark or a service mark need not to be registered in order for the Policy to apply.
The domain names at issue contain the trademarks/service marks with the addition of the notions "com." "org." or "net." These are, in the view of the Panel, insignificant distinctions that do not remove the likelihood of confusion.
These considerations lead the Panel to the conclusion that there exists a confusing similarity between the domain names at issue and Complainant’s protected trademarks/service marks.
The Panel reaches the above conclusion on the record of the present case. It has, however, taken note of previous WIPO decisions that directly or indirectly address the issues discussed above. Considering their circumstances, the Panel has in particular taken note of the decisions in favour of complainants reached in the following cases: Government of Canada v. David Bedford a.k.a. DomainBaron.com (WIPO case no. D2001-0470), Skattedirektoratet v. Eivind Nag (WIPO case no. D2000-1314), and The State of the Netherlands v. Goldnames Inc. (WIPO case no. D2001-0520).
Rights or Legitimate Interests
In this respect Complainant has, according to Paragraph 4a(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain names at issue.
To support its contentions in this respect, Complainant has invoked a number of circumstances, supported by documentary evidence, principally that Respondent, taking advantage of the public knowledge of the notions "bundesinnenministerium" has redirected Internet traffic to the website operated by Mr. Lauck who is also the President of Respondent.
Despite the opportunity given, Respondent has not contested or commented upon the contentions by Complainant.
On the basis of these circumstances the Panel is satisfied that the evidence submitted by Complainant sufficiently supports its contention that Respondent has no rights or legitimate interests in the domain names at issue.
Without entering into a discussion whether and how a different record might have justified different findings, the Panel notes that the facts before it clearly indicate that the domain names at issue are used to include information that could be argued to serve a purpose of "free speech"; indeed, again, no argument to this effect has been advanced by the Respondent.
Registration and Use in Bad Faith
In this respect, Complainant has, according to Paragraph 4a(iii) of the Policy, to prove that the domain names have been registered and are being used in bad faith. Paragraph 4.b then sets out the circumstances which in particular but without limitation shall, if found by the Panel to be present, be considered as evidence of registration and use of a domain name in bade faith.
Complainant has contended that Respondent has registered the domain names at issue with the intent to deceive Internet users and mislead Internet communications intended for Complainant to a home-page with criminal contents under German law. Complainant has also contended – and supported its contentions in this respect by written evidence as referred to above – that Respondent on its website states that the disputed domain names will probably only be working for a short time and on another website gives instructions on how to save blocked addresses. In this respect the Panel notes at on the website "NSDAP/AO" contains a notice which in German reads: "Wichtiger Hinweis. Wer diese Website durch eine "alternative url" wie z.B <http.verfassungsschutz.org> oder <http:// bundesinnenministerium.com> erreicht hat, soll sicherheitshalber unsere "wirkliche" URL-Adresse notieren: <http://www.nazi.lauck-nsdapto.com> notieren! Wir wissen aus Erfahrung, dass eine derartive "alternative url" vielleicht nur sehr kurtzfristig funktioniert.- Siehe alternative url." In English the last sentence reads: "Alternative url" addresses sometimes suddenly cease to function. Se alternative url." The Website in question contains mainly information on and advertisements for various kinds of Nazi activities.
As is the case in respect of the other contentions by Complainant, Respondent has not, despite the opportunity given, contested or commented upon the contentions by Complainant
On the basis of these circumstances the Panel is satisfied that the evidence submitted by Complainant sufficiently supports its contention that Respondent has in fact registered the domain names at issue, and is using them, in bad faith.
On the basis of the foregoing, the Administrative Panel concludes that it has been established that the domain names at issue are confusingly similar to the trademarks/service marks in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain names at issue and that those domain names have been registered and are being used in bad faith.
In accordance with Complainant’s request and with reference to Paragraph 4.i of the Policy, the Panel requires that the domain names <bundesinneministerium.com>, <bundesinnenministerium.net>, <bundesinnenministerium.org> and <verfassungsschutz.org> be transferred to Complainant.
Dated: January 23, 2002