1.1 The Complainant is Privatbrauerei Eichbaum GmbH & Co. KG of Mannheim, Germany, represented by Rittershaus Rechtsanwälte Notar, Germany.
1.2 The Respondent is Hamit Karaca of Kusadasi, Turkey.
2.1 The disputed domain name <karamalz.com> (the “Domain Name”) is registered with UK2 Group Ltd. t/a Resell.biz (the “Registrar”).
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2010. On February 22, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2010. The Respondent sent an email communication to the Center on March 16, 2010.
3.3 The Complainant filed a supplemental filing on March 19, 2010 that sought to respond to statements made by the Respondent in his email of March 17, 2010.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 22, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
3.5 Having considered the case file, the Panel issued a Procedural Communication to the parties, which the Center transmitted to the parties at 9:36 Swiss time on March 25, 2008 (the “Procedural Communication”). The Procedural Communication is set out in full in Annex 1 to this decision. In summary the communication:
(1) Noted that the Respondent's email of March 16, 2010 did not constitute a properly formulated Response for the purposes of the Policy and set out the possible consequences of that fact.
(2) Stated that the Panel was likely to admit the Complainant's supplemental filing dated March 19, 2010.
(3) Provided the Respondent with an opportunity to respond to the Procedural Communication by email no later than 9:30 London time on March 29, 2010.
(4) Made it clear that the Procedural Communication did not constitute a request for further substantive submissions from the Respondent pursuant to paragraph 12 of the Rules. It instead informed the Respondent that if he wished to file such a further submission he should make this clear in his email and also explain in general terms what form that submission would take. It then explained that the Panel would at that stage consider whether it was prepared to permit such submission.
3.6 The Respondent did not take advantage of the opportunity offered in the Procedural Communication to send an email to the Panel in relation to these matters.
4.1 The Complainant trades as a private limited partnership with a limited liability company as a general partner under German law. It is the successor in business to a business that has sold malt beer under the name “Karamalz” since 1958.
4.2 The Complainant's business originally was directed to the public in southern Germany and then Germany as a whole. But in recent years it has increasingly conducted business outside of Germany. In 2007 its non-German revenue amounted to 1.2 million Euros. It has engaged in marketing activity to promote the “Karamalz” brand both inside and outside of Germany. The product has been promoted outside of Germany in poster campaigns where the product is described as “Germany's most famous Maltdrink”.
4.3 The Complainant uses the domain name <karamalz.de> in connection with its business.
4.4 The Complainant is the owner of various registered trade marks which comprise or incorporate the word KARAMALZ. They include:
(i) German Registered Trade Mark No. 751,271 filed in July 1958 for the word KARAMALZ in class 32 in respect of “malzbier”; and
(ii) Madrid Protocol registered trade mark No. 797,5831 filed in March 2003 for the word KARAMALZ in class 32 for “malt beers” designating Austria and Turkey. The refusal period for the Turkish registration expired in February 2004.
4.5 The Domain Name was registered on July 31, 2001.
4.6 The Respondent appears to be an individual based in Turkey.
4.7 At least recently, the website operation from the Domain Name has the appearance of a pay-per-click webpage. It carries Google generated click through advertisements the predominant (but not exclusive) theme of which is travel, tourism and accommodation with some form of Turkish connection.
4.8 On December 4, 2009, the Complainant's business sent an email to the Respondent. It stated that the Complainant was entitled to a “compulsory transfer” according to the Policy. It then went on to state:
“However, we would prefer a mutual agreement between us and would this like to ask you to get in touch with us in order to find a solution for the domain transfer.”
The Respondent did not respond to this email.
4.9 As at January 20, 2010, the webpage operating from the Domain Name had the title “karamalz drink” and contained at the top of the page the words “karamalz drink karamalz germany”. The words “karamalz drink” also appeared in text above a picture that took the form of a montage of various holiday related images.
4.10 As at the date of the decision the page appearing from the website has changed somewhat. The Google generated click through advertisements remain, but the central picture has been replaced with an image of a holiday villa on which are superimposed the words “KaraMalz Villas Coming soon …”
5.1 The Complainant states that the first part of the Domain Name is identical to its trade mark. It contends therefore that customers outside of Germany would associate the Domain Name with the products sold and distributed by the Complainant. As a consequence it maintains that the Domain Name is “at least confusingly similar” to its trade mark.
5.2 The Complainant contends that the Respondent is not connected in any way with, or licensed by, the Complainant. It refers to the fact that the Respondent did not respond to its email of December 4, 2009. It states that it has conducted research which suggests that the Respondent operates in the Turkish real estate market and exhibits print out from web pages that are said to evidence this. It also claims that it has found nothing to suggest that the Respondent's business activities have any connections with the “Karamalz” name.
5.3 The Complainant refers to the Respondent's use of the Domain Name in relation to tourism industry links and claims that the Respondent has registered over 200 domain names that link to web pages that display similar content. In support of this it exhibits a list of domain names generated as a result of a reverse IP address search. For the most part the domain names listed appear to have connections with property, tourism or Turkey (for example, <anatalyaproperties.com> and <apartmentinturkey.com>).
5.4 These facts and activities are said to show that the Respondent is infringing its trade mark and has no right or legitimate interest under the Policy.
5.5 The Complainant further contends that the Respondent is intentionally attempting to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website. In particular, it contends that the Respondent is intentionally using the Complainant's trade mark and reputation to divert Internet users to his website to increase his advertising profits.
5.6 No formal Response has been filed by the Respondent. As has already been mentioned, he sent (several times) an email to the Center on March 16, 2010. That email read as follows:
We have received the complain letter from you, WIPO (World Intellectual Property Organisation) about karamalz.com domain name. We have this domain name since 2001. We were not using it long time but since last 2 years we are using it to promote our other websites about tourism and real estate in Turkey. We are using this domain as a landing page (link page). But this is not main reason why we have this domain name. It is just a temporary website for now.
This domain is for our new villa project KaraMalz Villas. We are not thinking of giving this domain name to them. Because since 2001 we are paying for this domain registreation [sic] fee. But it is not main reason. Main reason is we will use this domain in our villa project. Because of this it is impossible to give this domain to them because it's an important and high value real estate project and we will start to promote this project with this domain name.
Also karamalz.net and .org are still available. Why they didn't buy that names? they only focus on karamalz.com. And in domain name registration laws says who come first he can buy the domain. We came first and we bought this domain and it is our registered property. Please explain things reasons to Karamalz Company. Karalamz Company currently using www.karamalz.de .
Also Karamalz is not a available product in Turkey. We couldn't know this name is registered in other countries. Also we are not using this in same business as Karamalz Company (soft drink business), we are using it for an other business (real estate). This domain name can't effect [sic] Karamalz Company's sales. So they have no right to complain us to you.
5.7 The Complainant refers in its supplemental submission to the changes made in the Respondent's website since the filling of the Complaint (and which are set out in this decision in paragraph 4.10 above). It then proceeds to make the following points in argument:
(i) That the Respondent's assertion that he intends to use the Domain Name in conjunction with a “villa project” is inconsistent with the fact that the Domain Name has not been used for this purposes since its registration in 2001.
(ii) That no supporting evidence is offered by the Respondent in support of his claim that he intends to use the Domain Name for this purpose.
(iii) That the recent changes in the website are essentially a sham that attempt to “feign an actual legitimate interest in the Domain Name”.
6.1 The Complainant must make out his case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address the three aspects of the Policy listed above in turn. However, before it does so it is necessary to consider two procedural issues. These are to what extent the Panel should take any account of the Respondent's email of March 16, 2010 and the status of the Complainant's supplemental submission.
6.3 The Respondent has failed to submit a proper response in compliance with the requirements of the Rules. This means for example, that the statements made by the Respondent in its email are unsupported by the statement of truth required by paragraph 5(b)(viii). As this Panel recently stated in Christian Dior Couture v. Christina Dior/Chris Vella, WIPO Case No. D2009-0032, this is not a trivial matter.
6.4 The Policy provides a relatively informal process of dispute resolution. It has no formal rules of evidence and panels frequently are prepared to treat as evidence assertions of fact to be found in the parties' submissions insofar as these facts can reasonably be expected to be within the knowledge of that party. In the circumstances, it is imperative that submissions contain at the very least the limited safeguard provided by paragraph 5(b)(viii).
6.5 It is, therefore, not surprising that some panels have disregarded in their entirety responses that have not complied with these formal requirements. At the very least it is likely to have an impact on the evidential weight that a panel will give to any assertion made in such a document. It is this later approach that the Panel considers to be appropriate in this case. Whilst it has not completely disregarded the Respondent's assertions, it believes that they should be accorded very limited evidential weight.
6.6 So far as the Complainant's supplemental submission is concerned, it is rare that such a submission will be considered by the Panel. As was stated in DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780:
“As is by now well established the Rules do not provide any right of reply. Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938. Although supplemental submissions may be accepted to address new legal developments, see e.g., Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105, or to rebut unexpected factual assertions, see e.g., Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237, they should be allowed sparingly.”
6.7 Nevertheless, as the Panel stated in its Procedural Communication, it believes that the supplemental submission should be admitted in this case. The Respondent's contention in its email that the Domain Name was registered for the purpose of a legitimate business is not one that the Complainant could have anticipated and (even though the Complainant's submission adds little more than argument) it should be permitted to set out why it considers the Respondent's contentions in this respect to be false.
6.8 The Panel accepts that the Domain Name can most readily be understood as the Complainant's KARAMALZ mark combined with the “.com” TLD. It, therefore, accepts that the Domain Name is virtually identical to a mark in which the Complainant has rights. The Complainant has easily made out the requirements of paragraph 4(a)(i) of the Policy.
6.9 There is a clear factual dispute between the parties in this case. The Complainant contends (and the Respondent denies) that the Domain Name was not registered for, or is being used by, any business that has any independent legitimate interest in using the term “Karamalz”. It instead claims that the Domain Name is instead being used to take unfair advantage of the reputation that it has developed in its KARAMALZ mark in order to draw Internet users to the Respondent's pay-per-click website. If the Complainant's contentions are correct, then the Respondent will have no right or legitimate interest in the Domain Name (see, for example, Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
6.10 Which of the parties is correct is something that is more addressed in greater detail when assessing the question of bad faith. For the reasons that are explained in greater detail under that heading below, the Panel concludes that the Complainant's contentions are to be preferred. The Domain Name has been both registered and used with a view to taking unfair advantage of the reputation of the terms embodied in the Complainant's trade marks. In the circumstances, the Panel finds that the Respondent has no right or legitimate interest in the Domain Name and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
6.11 The Panel accepts that by the time of the registration of the Domain Name that its KARAMALZ mark had developed a significant reputation in Germany and also some reputation outside of Germany. It is not clear to what extent that reputation extended to Turkey.
6.12 Nevertheless, it is reasonably clear that at least by the time that the current dispute between the parties arose, the Respondent was aware of the Complainant. Leaving aside the fact that the Respondent has not denied this, there is the appearance in the title and text of the website of the words “karamalz drink” and “karamalz Germany”. These can only sensibly be understood as references to the Complainant's products, and no explanation is offered by the Respondent for their appearance.
6.13 Further, the choice and use of the term “karamalz” by the Respondent cries out for an explanation. As far as the Panel is aware there is no obvious meaning or allusion in that term which is unconnected with the Complainant's mark. The Respondent claims that he intends to use that word for a villa complex in Turkey. But no explanation is offered as to why that term was chosen for or might be an appropriate name for such a business.
6.14 The Panel also accepts the force of the Complainant's arguments in its supplemental submission. In particular, the fact that the Respondent has held the Domain Name for nine years without using it for the alleged purpose is, without further explanation, hard to reconcile with the Respondent's contentions as to intended use. Also the recent change in the content of the website operating from the Domain Name counts against the Respondent. The Panel does not accept that the timing of this change is co-incidental. It smacks of an opportunistic and transparent attempt to back up the Respondent's contentions in these proceedings.
6.15 Last but not least, there is the fact that the Respondent did not respond to the Complainant's email of December 4, 2009. It is not that the Respondent was legally obliged to respond. It is simply that if the Respondent did have an innocent explanation for the registration and use of the Domain Name, it strikes the Panel as more likely than not that the Respondent would have given it at that time. Therefore, the fact that he did not do so counts against him.
6.16 In summary, when the material before the Panel is considered as a whole, the Panel accepts that the most likely explanation of the registration and use of the Domain Name is to take unfair advantage of the reputation that the Complainant's business had built up in the KARAMALZ mark (whether amongst Germans or others) in order to draw Internet users to its website for the Respondent's commercial gain. This activity falls within the scope of paragraph 4(b)(iv) of the Policy.
6.17 The Complainant also refers to 200 other domain names that have been registered by the Respondent and that link to similar pay-per-click link pages. In the opinion of the Panel this does not in this case provide particular compelling evidence either way on the question of bad faith. As far as the Panel can tell, most if not all of the domain names listed are descriptive or generic. Certainly the Complainant does not contend that they include the marks of third parties. Therefore, these registrations perhaps make it clear that the Respondent is engaged in a pattern of conduct of seeking financial advantage from the registration of a large number domain name (perhaps as an aside to his real estate business). But such activity is not per se abusive (see the Express Scripts decision supra). Therefore, these other registrations do not throw a great deal of light on the question whether the Domain Name has been registered and used in bad faith.
6.18 Further, the Panel has taken little notice of the Complainant's assertions of trade mark infringement and the Respondent's counter assertion that its use of the Domain Name falls outside of the scope of the Complainant's trade marks. As is explained in greater detail in Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De Souza, WIPO Case No. D2003-0372 and 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461, the Panel does not consider this to be of relevance to the question of whether there has been abusive registration under the Policy.
6.19 Nevertheless, for the reasons already given, this does not matter. The Panel finds that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <karamalz.com> be transferred to the Complainant.
Matthew S. Harris
Dated: March 29, 2010
The Panel has considered the case file in this case and without prejudice to any subsequent finding (and bearing in mind that the Respondent does not appear to be legally advised in these proceedings) wishes to bring the following to the attention of the parties:
1. The Panel notes that the Respondent's email of March 16, 2010 does not comply with the formal requirements of a Response set out in paragraph 5(b) of the Rules for Uniform Domain Name Dispute Resolution Policy.
2. A failure to comply with the formal requirements in relation to a Response is something that a panel can take into account when considering the evidential weight to any statement made in any document purporting to be a Response and may result in the contents of that document being entirely disregarded in any proceedings (see for example paragraphs 6.1 to 6.9 of the panel's decision in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
3. In any event, the factual assertions contained in the Respondent's email of March 16, 2010 do not appear to be ones that could have been reasonably been anticipated by the Complainant. In the circumstances, (and bearing in mind the comments of the panel in DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780) the Panel is presently minded to take into account in these proceedings the Complainant's supplemental submission dated March 19, 2010.
4. If the Respondent (or any legal advisor to the Respondent) wishes to communicate with the Panel in relation to any of the issues set out above prior to the Panel issuing its decision in this matter, he should do so (by email via the Case Administrator) BY NO LATER THAN 9:30 am (London time) on Monday March 29, 2010.
5. The Respondent should note that this communication does NOT constitute a request for further substantive submissions from the Respondent pursuant to paragraph 12 of the Rules. If the Respondent wishes to make any further submission in relation to any substantive issue in these proceedings he should:
(a) make a request to this effect in any email sent pursuant to paragraph 4 of this communication;
(b) explain in broad terms the issues that any such submission is intended to address and what evidence the Respondent wishes to append in support of any submission in this respect; and
(c) explain why it is that any such submission was not previously made in a formal Response filed in compliance with the Rules, and why the Panel should now permit the Respondent to file any such submission.
The Panel will then consider whether such further submission will be permitted.
Matthew S. Harris
Dated: March 25, 2010
1 The Complaint gives the number for this mark as 797,538 but this appears to be a typographical error.