WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Voigtländer GmbH v. Scott Hall
Case No. D2002-0013
1. The Parties
Complainant is Voigtländer GmbH, Furth. Germany.
Respondent is Scott Hall c/o Strategic Orient Sourcing Limited, Hong Kong.
2. The Domain Name and Registrar
The domain names at issue are <voigtlaender.com> and <voigtlaender.net>.
The Registrar is Register.com, New York, USA.
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on January 7, 2002, and subsequently in hard copy on January 14, 2002. The WIPO Center sent an Acknowledgement of Receipt of Complaint to the Complainant on January 8, 2002. The Complaint was later amended.
On January 9, 2002, a Request for Registrar Verification was transmitted to the Registrar., and on the same day the Registrar confirmed that they were in receipt of the Complaint sent to them by the Complainant and that the domain names <voigtlaender.com> and <voigtlaender.net> were registered with them and were in "active" status. The Registrar forwarded at the same time the requested WHOIS details.
Also on January 9, 2002, The WIPO Center received a telefax from the Respondent in which he explained his position. The WIPO Center referred him to send a Response in accordance with the UDRP Policy and Rules.
A Formal Requirements Compliance Checklist was completed by the WIPO Center on January 17, 2002. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), as approved by ICANN on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy (the "WIPO Supplemental Rules"), in effect as of December 1, 1999. The Complainant paid on time and in the required amount the fees for a single-member Panel.
On January 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent by the required means, setting a deadline of February 6, 2002, by which the Respondent could file a Response to the Complaint.
On February 8, 2002, having received no Response from the designated Respondent, the WIPO Center transmitted to the Respondent a Notification of Respondent Default.
On February 12, 2002, the WIPO Center invited Knud Wallberg to serve as a Panelist in the case, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received Knud Wallberg’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted on February 15, 2002, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was March 1, 2002.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and WIPO Supplemental Rules.
The Administrative Panel has issued its Decision based on the Complaint, the Policy, the Rules, the WIPO Supplemental Rules, but without the benefit of a formal Response from the Respondent. Since Complainant was informed of the Respondents informal response the Panel has decided to take allow it as part of the procedure in accordance with the Rules, Art. 10(d).
4. Factual Background
The Complainant is owner of the trademark VOIGTLAENDER, which is registered and used in several countries around the including Hong Kong. The trademarks are registered and used for "optical and photographical apparatus, instruments and utensils" among others.
Further, VOIGTLÄNDER is the well-known company name of the Complainant.
According to the information that was annexed to the Complaint by way of a printout of the website of the Respondent, Respondent is a buying agency specializing in consumer goods.
5. Parties’ Contentions
The following is taken from the Complaint and has not been contested by Respondent.
The contested domain names are Identical or Confusingly Similar to the Complainants Mark
The Company name and trademarks VOIGTLÄNDER are identical to the domain names <voigtlaender.com> and <voigtlaender.net>, wherein the umlaut "Ä" is not allowed in domain names and is replaced by "AE".
Respondent has no Rights or Legitimate Interests in the contested domain names
The Respondent has no rights or legitimate interests in respect of the domain names that are the subject of the Complaint. The Respondent is using the domain <www.sosasia.com> for presenting their business. A printout of the homepage of Respondent was provided as an annex. The Respondent does not sell any products under the mark VOIGTLAENDER nor owns any similar trademark.
Respondent Registered and Used the contested domain names in Bad Faith
The domain names had been registered and are used in bad faith. The domain names in dispute had been registered earlier by a VL Group residing in Hong Kong acting as domain grabbers. The former domain grabber and the Complainant agreed to transfer the domain names to Complainant. When requesting transfer of the domains, the Complainant surprisingly noted that the domain names became free and had been registered by Respondent immediately after the Complainant received an e-mail notice of the former owner of the domains for preparing the transfer and immediately before Complainant’s attempt for registration.
The appointed representatives of Complainant had sent warning letters of August 27, 2001, and October 24, 2001, to the Respondent.
Until now, the Respondent failed to answer to said letters. However, the Respondent does not use the domain names in question and is therefore preventing the Complainant to reflect the well known mark VOIGTLÄNDER and the similar company name in the very important TLDs <.com> and <.net>.
The domain names in dispute are not used, but offered for sale as can be seen in the printouts enclosed as an annex to the Complaint. Therefore, the domain names seem to be registered primary for the purpose of selling and are registered and used in bad faith. See WIPO Case No. D2000-0023 (Parfums Christian Dior v. QTR Corporation).
Voigtländer cameras are one of the famous cameras sold for decades in the world. The Complainant therefore owns respective trademarks in several countries including Hong Kong. The distributor for the products of Complainant in Hong Kong and China is Ricoh Photo Products (Asia) Ltd. residing in Wan Chai, Hong Kong. It is inconceivable that the Respondent had not been aware of the reputation of the mark and the wide spread use of the mark VOIGTLÄNDER for cameras for decades. After receipt of the several warning letters, Respondent should be aware of the trademark infringement. Therefore, the continuous blocking of the domain names in question is proof of bad faith as stated in WIPO Case No. D2000-0003 (Telstra Corporation Limited v. Nuclear Marshmallows).
As mentioned above in section 3, the Respondent has not filed a formal Response in accordance with the Rules, Paragraph 5. In his letter to the WIPO Center, which has been communicated to the Complainant, and which has been admitted by the Panel, Respondent claims that they had no knowledge of Complainants trademark rights and that they have had plans to market a series of outdoor hardware under the brand VOIGTLAENDER in the USA.
Respondent at the same time declared to be willing to transfer the domain names to Complainant against payment of an unspecified sum.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainant’s mark VOIGTLÄNDER is registered and has been used in numerous countries around the world including in Hong Kong. In addition the mark must be considered to be a well-known mark within the relevant sector of the public.
The domain names <voigtlaender.com> and <voigtlaender.net> contain a transcription of the trademark VOIGTLÄNDER. This exact transcription must be considered to be the most natural transcription of the trademark, which is necessitated by the restrictions in the domain name system of the signs that can be used as part of a domain name. Under these circumstances the domain name must be considered to be confusingly similar to the trademark in which the Complainant has rights
The prerequisites in the Policy, Paragraph 4(a)(i) are therefore fulfilled.
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.
Further, the Respondent has not demonstrated that he has any prior rights or legitimate interests in the domain name. The claim of the Respondent that they had plans to market a different range of products under the mark VOIGTLAENDER or VOIGTLÄNDER was not substantiated in any way. The Panel must therefore dismiss this claim.
The prerequisites of the Policy, Paragraphs 4(a)(ii) are also considered fulfilled.
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.
Respondent is engaged in general trade. Complainant’s mark is registered and used around the world including in Respondents home country Hong Kong. Under these circumstances and given the very special nature of the mark VOIGTLÄNDER the Panel finds it unlikely that Respondent was not fully aware of the existence of the Complainant and of their rights to the trademark VOIGTLÄNDER at the time he registered the domain name.
Subsequent to the registration of the domain names they were explicitly informed by the representative of the Complainant of the Complainant rights. The fact that Respondent nevertheless still hold the domain names prevents the Complainant from reflecting their mark in the corresponding domain names and this passive holding is done in bad faith. In this connection it should be noted that this panel finds that passive use is also use within the meaning of the Policy. See WIPO Case No. D2000-0003 (Telstra Corporation Limited v. Nuclear Marshmallows) and several subsequent decisions.
The Panel therefore concludes that the Complainant has proved that the Respondent was acting in bad faith pursuant to Paragraph 4(a)(iii) of the Policy.
In view of the above circumstances and facts the Panel finds that the domain names registered by the Respondent is confusingly similar to the trademark in which the Complainant has rights, that the Respondent does not have any rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith.
Consequently the Panel decides that the domain names <voigtlaender.com> and <voigtlaender.net> be transferred to the Complainant.
Dated: February 28, 2002