WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Voigtlaänder GmbH v. /Modus Vivendi
Case No. D2002-0880
1. The Parties
The Complainant in this administrative proceeding is Voigtlaänder GmbhH based at Benno-Strauss-Strasse 39, D-90763 Fürth, Germany, represented by Stefan Risthaus, Theodor-Heuss-Strasse 1, D-38122 Braunsweig, Germany.
The Respondent is Modus Vivendi, at ul. Teczowa 11, PL-10-729 Olsztyn, Poland.
2. The Domain Name and Registrar
The domain name at issue is <voigtlander-camera.com> ("the Domain Name"). The Domain Name is registered with Network Solutions, Inc., at Herndon, VA 20170, United States of AmericaSA ("the Registrar").
3. Procedural History
Complainant filed a complaint ("the Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") electronically on September 23, 2002, and by hard copy on September 26, 2002.
On September 23, 2002, the Center acknowledged receipt of the Complaint.
On September 23, 2002, the Center transmitted to the Registrar a request for registrar verification in connection with this case so as to:
- confirm that the Domain Name at issue is registered with registrar;
- confirm that the person identified as the Respondent is the current registrant of the Domain Name;
- provide full contact details, i.e. postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the Registrar's Who is database for the registrant of the disputed Domain Name, the technical contact, the administrative contact, and the billing contact for the Domain Name
which information is was received on September 25, 2002. Frorm this information it became clear that the Domain Name was registered in the name of Modus Vivendi, at ul. Teczowa 11, PL-10-729 Olsztyn, Poland, and that the contact person is Lukasz Dominikowski.
On September 26, 2002, the Center verified that the Complaint met the formal requirements of the ICANN 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 panel has reviewed the documentary evidence provided by the Parties and the Center and agrees with the Center's assessment that the Complaint complies with the formal requirements of the aforementioned Rules.
The administrative proceeding commenced on September 26, 2002. The same day, the Complaint was notified to Respondent.
On October 25, 2002, the Center issued a Notification of Respondent’s Default. The Panel notes that and after that there has been some email correspondence between the Center and the Respondent which has no bearing on the case.
Upon receipt of the necessary declaration of independence and impartiality of the present panel, the Center appointed on October 25, 2002, Prof. Dr. Charles Gielen as sole panelist.
4. Factual Background
According to Complainant it owns several registrations of the trademark VOIGTLÄäNDER amongst others for goods in classes 16, 24, 25 and 26. . Complainant filed copies of an International registration and German and Canadian registration of this mark mainly for optical and photographical products. . Complainant states that this mark is well known in a number of countries.
Respondent operates a website in the Polish language on which the Panel could see that reference is made to photography and also depicting a Voiglaänder camera.
After having contacted Respondent by letter of July 19, 2000, with an invitation to get in touch in order to settle the matter friendly, Respondent answered by fax of November 3, 2000, offering to transfer the Domain Name to the Complainant against payment of US $ 679, which offer apparently has not been accepted.
5. Parties' Contentions
Complainant alleges that the Domain Name is identical to the trademark registered and used by Complainant and that there is confusing similarity. . He points out that Respondent does not carry any legitimate business under the Domain Name, that Respondent operates its business under the domain name "<modusvivendi.com>." and that Respondent does not use the word Voigtländer as mark for camera'scameras. . Furthermore, the Domain Name is registered and used in bad faith. . Complainant points out that the Respondent in view of the reputation of the mark must have known of it. . In particular he invokes at article 4 (b) (iv) of the Policy. . Respondent only used the Domain Name to attract consumers by using the mark of the Complainant simply adding a descriptive name ("camera") and cuasescauses likelihood of confusion with the Complainant. . Finally the Domain Name was offered for sale for a price that exceeds the registration costs.
Respondent did not file a reply.
6. Discussion and Findings
To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that
1. the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
2. the Rrespondent has no rights or legitimate interests in the Domain Name, and
3. the Domain Name has been registered and used in bad faith.
These three elements will be considered below.
6.1. Identity or confusing similarity
There is no doubt that the Domain Name and the trademark of Complainant isare almost identical. . Only the "Umlaut" on the letter "a" as used in the mark of Complainant is not used in the Domain Name but that is an immaterial difference. . If this does not cause identity, it certainly results in likelihood of confusion.
6.2. Rights or legitimate interests
Its is never easy for a Complainant to show that someone does not have a legitimate interest. . But it can be concluded on the basis of the circumstances of the case that the Respondent does not have a right or legitimate interest. . In the reply received after the letter of July 19 there are no rights of the Respondent mentioned. . The Respondent suggests that it registered the Domain Name to protect it against piracy. . That certainly can be considered as an important interest, but it is not legitimate in the hands of third parties. . That interest lies entirely within the sole discretion of the trademark owner. . The panel therefor concludes that condition 2 is fulfilled.
6.3. Bad Faith
According to paragraph 4(a)(iii) of the ICANN Policy, it is incumbent on the Complainant to prove that the Respondent has registered and is using the domain name in bad faith. The Panel is of the opinion that such proof is given. . Although there is no strict proof of intention, the Panel is of the opinion that it can be concluded on the basis of the circumstances that the intention of the Respondent whose real business domain name is <modusvivendi.com>, to also operate the Domain Name is primarily to attract consumers to its website and to create confusion because third parties on the basis of the Domain Name might think that Respondentthat Respondent is an official dealer or distributor. . Furthermore one could say that although Respondent argues that he registered the Domain Name to protect the mark against piracy, he immediately offers it for sale after having been requested to assign it. . It must also have been clear to the Respondent that it is not up to him to protect a mark of a third party against piracy. . Furthermore, the costs that were specified in the letter of the Respondent do exceed the out of pocket expenses directly related to the Domain Name (namely those mentioned in the response letter, such as the costs for building the website, costs of making the information work on the website etc.). . Although one could argue that the amount asked is not a "valuable" consideration in excess of out of pocket expenses, the overall conclusion of the Panel is that the Domain Name is registered and used in bad faith. . The Panel likes to emphasise that the circumstances mentioned in Article 4 (b) are not exhaustive and that it reached the conclusion on the basis of the two grounds [art.paragraph 4(b)(i) and (iv)] taken together and notwithstanding the fact that not all of the elements of each of these grounds were clearly proven.
For the foregoing reasons, the Panel concludes and decides that the Complaint should be honoured and orders the cancellation of the Domain Name as requested.
Prof. Dr. Charles Gielen
Dated: October 29, 2002