WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Urlaub Viagens e Turismo Ltda Me v.s Stephan Tratter
Case No. D2002-0820
1. The Parties
The Complainant is Urlaub Viagens e Turismo Ltda Me, Av. Rio Branco 223, Rio de Janeiro, 12į andar, BR 20090-090, Brazil, represented by Mr. Alexander Schubert, Onvolite Inc., 12121 Wilshire Boulevard # 900, Los Angeles, CA 90025-1176, United CA 90025-1176, United States States of of America.
The Respondent is Mr. Stephan Tratter, Tigergasse 3/19, 1080 Vienna, Austria, represented by Mr. . Meinhard Meinhard Ceresa, Donau-City-Strasse 1+8, 1220 Vienna, Austria.
2. The Domain Name and Registrar
The domain name at issue is <urlaub.info> ("the Domain Name").
The Registrar is Register.com, Inc.
3. Procedural History
The Complainant filed a complaint ("the Complaint") with the World Intellectual Property Oganization, Arbitration and Mediation Center ("the Center") electronically on August 25, 2002, and in hard copy on September 6, 2002.
On September 11 and 16, 2002, the Complaint was amended by email respectively by hard copy.
On September 2, 2002, the Center acknowledged receipt of the Complaint and sent a request for registrar verification in connection with this case to the Registrar. On September 6, 2002, the Registrar Register.com, Inc. responded to the Centerís request and confirmed that it is the Registrar of the Domain Name <urlaub.info>. . It also confirmed that the Domain Name was registered in the name of Mr. Stephan Tratter being also the administrative contact.
On September 17, 2002, the Center verified that the Complaint met the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The undersigned has reviewed the documentary evidence provided by the Complainant and the Center and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the Supplemental Rules.
The administrative proceeding commenced on September 17, 2002, when the Center notified the Complaint to Respondent.
On October 7, 2002, the Respondent submitted its rResponse.
On September 22 and October 1, 2002, the Center received emails from the Respondent and the Complainantís representative.
Upon receipt of the necessary declaration of independence and impartiality, the Center appointed the undersigned on October 16, 2002, to serve as Sole Panelist in this administrative proceeding.
4. Factual Background
The Complainant does not give any indication on its companyís activity, size, staff, territory, customers or turnover. . Based on its company name, the Panel assumes that Complainant is active in the field of tourism.
The Domain Name at issue was registered on July 30, 2001.
The Complainant asserts that he has a valid trademark with the name "Urlaub" and submits to the Panel the copy of an excerpt from the Brazil trademark register showing Complainant as registrant of the wordmark "Urlaub" in the class 38.30 as of September 8, 1999.
Currently, the Domain Name resolves to a website called <reisemarkt.com> which offers travel- related services. . The linking of the Domain Name to this website must have been done recently, since the Respondent indicated in its Response dated October 4, 2002, that its Domain Name is still locked and that only when it will be released, Respondent will use it to establish a website focused on holidays.
5. Partiesí Contentions
The Complainant indicates that the Domain Name was first registered on July 30, 2001, as a Sunrise domain. Since the first owner had no trademark, the Complainant asserts that it was possible for the Respondent to file a Sunrise Challenge. . The Complainant further indicates that the Respondent had no valid trademark himself, so that he should have challenged for cancellation of the Domain Name. . However, according to the Complainant, the Respondent violated the Sunrise Challenge Rules and challenged for transfer. . After having won the challenge, the WIPO gave him a transfer code with the warning message "do only use this transfer code if you are owner of the trademark "Urlaub" valid and registered before October 2, 2002". . Pursuant to Complainantís submission, the Respondent used the transfer code without being allowed to and transferred it to himself showing hereby bad faith.
Moreover, the Complainant asserts that the Respondent won the Domain Name about half a year ago in January 2002, but still does not use it.
It concludes that the Domain Name was acquired for the sole purpose to sell it later. . Respondent feels its trademark rights violated and asks for the transfer of the Domain Name.
The Respondent sets out that "Urlaub" is the German word for holiday. . It is generic and has to be kept free from any trademark registration. . Moreover, pursuant to the Respondent, the word "Urlaub" is not distinctive for at least 100 million German-speaking people.
The Respondent indicates that it has legitimate interests in the Domain Name, since it is doing web services for tourism and runs already the following websites and portals : <wellnesshotel.info>, <dolcevitahotel.com>, <alpenwellness.cd>, <dolomiten.info> or <wellnessreisen.it>. . The Respondent also submits that it planned to start a portal in the internetInternet with a focus on holidays and to link this domain to his other domains mentioned before. . If it did not establish a website under the Domain Name so far, this is because the Domain Name is still locked.
The Respondent rejects Complainantís assertion of bad faith and indicates that the Domain Name was not registered or acquired primarily for the purpose of selling, renting or otherwise transferring the Domain Name registration to the Complainant. . The Respondent indicates that it did not expect that there is a trademark "Urlaub" anywhere in this world.
Moreover, Complainant asked Respondent by phone to transfer the disputed Domain Name to Complainant for US$ 1í000.-, but Respondent denied because it wants to establish a tourist related portal under this Domain Name. . This fact has been confirmed by an email of Complainantís representative addressed in copy to WIPO and dated October 7, 2002.
Finally the Respondent indicates that it never heard about Complainant or the trademark owner before the Respondent was called by Mr. Alexander Schubert, a German who would be the director of a California based company, which wants to claim rights in the name of a Brazilian company which does not even exist. . The Respondent does not submit any evidence to this respect, but concludes that in its opinion this amounts to a reverse domain name hijacking.
6. Discussion and Findings
To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy is satisfied, namely that
(i) The Domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in the Domain Name; and
(iii) The Domain Name has been registered and used in bad faith.
These three elements will be considered below.
A. Identity or Confusing Similarity
The Complainant submits an excerpt from the Brazil Trademark Register, showing that it is the holder of a trademark "Urlaub" in class 38.30 as of September 8, 1999. Consequently, the Administrative Panel has no doubt that the domain name <urlaub.info> is identical with the aforementioned trademark in the sense of Artparagraph. 4(a) (i) of the Policy.
B. Rights or Legitimate Interests
The Complainant indicates that the Respondent does not have any legitimate rights in particular since it did not set up a website since he acquired the Domain Name in January 2002. . In this respect, the Respondent indicates that it only planned to start a portal in the internetInternet with a focus on holidays and to link this Domain Name to its other domain names. . It confirms that it did not establish a website under <urlaub.info> so far. . However, as mentioned above, the Domain Name is currently linked to the website <reisemarkt.com> run however not by the Respondent, but by a so called "Add Partner
Stellenmarkt-AG" in Frankfurt, Germany. . Consequently, the Panel cannot see how the Respondent itself made any use 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 before any notice to it of the dispute (see Artparagraph. 4(c)(i) of the Policy).
Indeed, the fact that the Domain Name is now linked to a third partyís website does not show that the Respondent itself made any demonstrable preparations to use or uses the Domain Name for a website. . The Respondent does not assert otherwise in its Response. . Moreover, the Respondent has not an individual business or other organization which has been commonly known by the Domain Name, (Artparagraph. 4 (c)(ii) of the Policy). . Finally, the Panel does not have any evidence that Complainant has licensed or otherwise permitted Respondent to use its trademark or to apply for the Domain Name incorporating this mark. . In addition, the Respondent does not claim any such right in its Response.
Consequently, the Panel is of the opinion that the Respondent lacks legitimate interests in the Domain Name in the sense of the Policy and is thus of the opinion that Complainant has satisfied the second element of the Policy.
C. Domain Name Registered and Used in Bad Faith
The third element Complainant has to prove to succeed in its Complaint is registration and use of the Domain Name in bad faith.
The Complainant does not submit any indication as to the importance of its activity and its trademark. . The Administrative Panel therefore concludes that the trademark in question is not a notorious one. . This is supported by the fact that it is only registered since 1999 and restricted to the territory of Brazil. . The term "Urlaub" which is a German word for holiday is a weak trademark, since it is a generic term and descriptive for services in the field of tourism. . Hence, the Respondent who is domiciled in Austria, when registering the Domain Name could not seriously doubt that the word "Urlaub" was not already protected as a trademark and certainly not in South America, since "Urlaub" is a German word.
The Complainant mentions that the Respondent obviously acquired the Domain Name for the sole purpose of selling it later making hereby allusion to Artparagraph. 4(b) (i) of the Policy. . However, as the Complainant admits itself, it offered 1í000.- US$ to the Respondent who refused this offer because it wanted to keep the Domain Name for commercial use in the field of tourism. . Hence, there is no indicia that the Respondent showed any bad faith from this point of view.
The Complainant - without invoking any particular clause of the Policy -, indicates alleges that the Respondent would havehad been acting in bad faith during and after the Sunrise Challenge.
The Panel is of the opinion that this issue is outside the scope of the present UDRP procedure. . The bad faith argument in the sense of Art.paragraph 4 (b) of the Policy does not refer to such situations but relates to the Complainantís trademark rights. . As set out above, the Respondent did not show act in bad faith when it registered the Domain Name since it had no reason to believe that the Complainantís mark existedit may exist nor did it have any obligation, in the present context, to carry out a worldwide trademark search. . Hence, there was no bad faith in relation to the trademark and its registration and there is no reason to investigate further regarding the Sunrise Challenge argument put forward by the Complainant.
However, even assuming, that the latter argument were of any weight in the present proceeding, the Panel notes that the Complainant does not submit any evidence for its Sunrise Challenge allegation and the Panel has also doubts regarding this submission. . Indeed, according to the WIPO database, the Domain Name <urlaub.info> registered by a certain John Hard was transferred by a WIPO decision to a certain Klaus Ladurner (DINFO 02001--00358-0001). . It therefore seems that a third party not considered in this administrative proceeding became owner of the Domain Name through the Sunrise Challenge. . Hence, it was not the Respondent who filed the Sunrise Challenge as indicated in the Complaint. .
Accordingly, the Panel finds that the Complainant failed to show that the Domain Name has been registered and is being used by the Respondent in bad faith.
7. Reverse Domain Name Hijacking
The Respondent asserts in its Response that it was called by a certain Alexander Alexander Schubert, indicating to be a German and director of a California based company and claiming the rights in the name of a Brazil company which, pursuant to the Respondent, does not even exist.
The Respondentís assertion is not clear in this respect and there is complete absence of any evidence corroborating its allegation. . Since it is not the role of the Panel to investigate in this regard, the Administrative Panel does not have sufficient indicia for a domain name hijacking by the Complainant. . A decision concluding on a domain name hijacking is too serious as that it could be hold made on the basis of such vague indications as the present ones.
In the light of the foregoing, the Panel decides that Complainant has failed to meet its burden of proving that Respondent has registered or used the Domain Name in bad faith as required by paragraph 4(a)(iii) of the Policy.
Accordingly pursuant to Rule 15, the Panel decides that the remedies requested by the Complainant are hereby denied and that the registration of <urlaub.info> shall remain with the Respondent.
The Panel denies the relief requested in the Response and finds that the Complainant has not acted in bad faith in bringing this proceeding.
Dr. Thomas Legler
Dated : October 30, 2002