WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Westfalenhallen Dortmund GmbH v. Mr. Johannes Spatz, Forum Rauchfrei

Case No. D2014-0559

1. The Parties

Complainant is Westfalenhallen Dortmund GmbH of Dortmund, Germany, represented by Schneiders & Behrendt Rechtsanwälte * Patentanwälte, Germany.

Respondent is Mr. Johannes Spatz, Forum Rauchfrei of Müllenhoffstr, Berlin, Germany, self-represented.

2. The Domain Name and Registrar

The disputed domain name <intertabac.org> is registered with PSI-USA, Inc. dba Domain Robot (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 7, 2014. On April 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2014. The Response was filed with the Center on April 30, 2014.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on May 13, 2014. 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.

4. Factual Background

Complainant is a limited liability company incorporated under German law with its principle place of business in Dortmund, Germany.

Since 1978, Complainant has been organizing and hosting trade fairs for tobacco products and smokers' supplies under the designation "Inter-tabac" in Dortmund once every year.

Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designation "Inter-tabac", including the following:

- Word mark INTER-TABAC, German Patent and Trademark Office (DPMA), Registration No.: 30350158, Registration Date: February 18, 2005, Status: Active;

- Word-/device mark INTER-TABAC, German Patent and Trademark Office (DPMA), Registration No.: 30350946, Registration Date: March 22, 2004, Status: Active.

Complainant, furthermore, has evidenced that it is the registered owner of numerous domain names relating to the INTER-TABAC trademark, inter alia: <intertabac.com>, <inter-tabac.com>, <intertabac.de>, <inter-tabac.de>, <inter-tabac.net> and <inter-tabac.org>.

These domain names have been registered about the years 2000-2001 and resolve to an Internet presence set up by Complainant under "www.westfalenhalle.de" where Complainant advertises its "Inter-tabac Tobacco Trade Fair".

Respondent is a German citizen with domicile in Berlin, Germany. Being a physician by profession, Respondent up to his retirement worked as a government employee in the field of the prevention of tobacco use. On July 1, 2007, Respondent established a foundation aiming at the furtherance of public health by encouraging a smoke-free life and by fighting the global tobacco epidemic; this foundation has meanwhile been recognized as a tax privileged and noncommercial nonprofit organization serving the public good. Respondent is one of the two foundations' chair persons and is working there unsalaried full-time.

The disputed domain name <intertabac.org> was registered by Respondent on November 20, 2013. It redirects to a website at "www.intertabac.org" which is headed "Dortmund kills" and provides for criticizing information in both English and German language set up by Respondent in order to inform Internet users on Complainant's organizing and carrying through of tobacco trade fairs and the fact that Respondent deems such fairs as being illegal. Respondent also owns the domain name <dortmundkills.de> which currently resolves to a website at "www.dortmundkills.de" which apparently has the same content as the website at "www.intertabac.org". Respondent, moreover, is the owner of the domain name <forum-rauchfrei.de> which resolves to a website at "www.forum-rauchfrei.de" headed "Forum Rauchfrei", set up, inter alia, by Respondent to inform Internet users on the dangers of smoking and passive smoking as well as of Respondent's activities also in relation to Complainant.

Complainant requests that the disputed domain name be transferred to Complainant.

5. Parties' Contentions

A. Complainant

Complainant alleges to have used the INTER-TABAC trademark extensively in the past for the services for which they are registered by means of e.g. promotional flyers, sales folders as well as through Complainant's websites. Due to such continued, extensive and successful public appearance, Complainant's trade fair is and was commonly known under the designation "Inter-tabac".

Complainant asserts that the disputed domain name is identical or at least confusingly similar to Complainant's INTER-TABAC trademark because (1) the disputed domain name fully incorporates Complainant's trademarks and (2) the second-level domain "intertabac" is orally identical with Complainant's INTER-TABAC trademark and also shows visual similarities as only the hyphen between the two word elements "inter" and "tabac" has been omitted which, however, does not alter the overall appearance of such designation so as to enable Internet users to clearly distinguish a domain name from a mark.

Complainant further suggests that Respondent has no rights or legitimate interests in respect of the disputed domain name because (1) Respondent, being of the opinion that Complainant's business activities are detrimental to the public health, has been and still is heavily campaigning against Complainant's staging of trade fairs promoting smoking supplies, (2) by the time of registering the disputed domain name, Respondent had actual knowledge of Complainant's activities under the designations "Inter-tabac" and "Intertabac", (3) Respondent is neither known under the designation "Intertabac" nor does he use the same in any other context than as the second-level domain of the disputed domain name, (4) Respondent, therefore, registered, used and still uses the disputed domain name for the purpose of diverting Internet users interested in information on Complainant's trade fairs under the designation "Inter-tabac" to Respondent's own anti-smoking campaign website, and finally (5) there exists no relationship between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the disputed domain name or any trademark or service mark consisting of or incorporating Complainant's INTER-TABAC trademark as second-level domain.

Finally, Complainant claims that the disputed domain name was registered and is being used in bad faith since (1) Respondent knew of Complainant and the fact that it used the designations "Inter-tabac" and "Intertabac" as a source identifier for its well-established trade fair prior to registration of the disputed domain name, (2) Respondent additionally used the disputed domain name for commercial gain as Respondent's campaign website also contained a call for donations, thus Respondent used the disputed domain name in order to divert Internet traffic to its website, thereby augmenting the chance to obtain such donations, (3) by creating a likelihood of confusion with Complainant's trademark, Respondent attempted and still attempts, for commercial gain and in order to disrupt Complainant's business, to attract Internet users to his own website and, finally, (4) given that Respondent was and is active under a different name and could have chosen legitimate means of attracting Internet users to his own websites, and also given that he had already chosen corresponding domain names in order to be present on the Internet, Respondent should not be excused to have chosen a third party's trademark in a second-level domain to divert Internet users to his website campaigning against the very owner of the concerned trademark.

B. Respondent

Respondent argues that the disputed domain name is not confusingly similar with Complainant's INTER-TABAC trademark as it is quite obvious to Internet users that Complainant and Respondent are not competitors so that Internet users will not come to the conclusion that there is a real connection between the disputed domain name and Complainant and/or its services. From the fact alone that Respondent does not offer goods or services it is out of question that Internet users could mistake Respondent for a competitor or rival of Complainant. Moreover, the disputed domain name is being used in a way that Internet users are immediately directed to a website at "www.dortmundkills.de" where they will find criticizing information and will not misunderstand the use of the disputed domain dame.

Respondent further argues that he is making a legitimate noncommercial use of the disputed domain name without intent for commercial gain as he is not misleadingly diverting consumers nor does he offer goods or services. Asking visitors of his website for donations for a foundation acknowledged as being an organization serving the public does not constitute the pursuit of commercial gain.

Finally, Respondent asserts that the disputed domain name has not been registered and is not being used in bad faith, but simply according to the right of free speech. Respondent is criticizing Complainant's organization in carrying through of tobacco trade fairs, as Respondent deems these trade fairs as being illegal. Accordingly, Complainant is simply trying to prevent this criticism and the initiated proceedings are seen as form of censure in the eyes of Respondent. Complainant is trying to intimidate the 71-year-old Respondent by implying that he acted in bad faith and by forcing proceedings on him which are not easy to be dealt with.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) That the disputed domain name is has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name <intertabac.org> is identical with the INTER-TABAC trademark in which Complainant has shown to have rights. The disputed domain name incorporates the INTER-TABAC trademark in its entirety. It has been held in numerous UDRP decision and has meanwhile become a consensus view among panelists (see WIPO Overview of Panel Views on Selected UDRP-Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2) that the identity or confusing similarity test under the first element of the UDRP would typically involve a straight forward visual or oral comparison of the trademark with the alphanumeric string in the disputed domain name and that the applicable top-level suffix would usually be disregarded (as it is a technical requirement of registration). Typically the content of a website to which the disputed domain name resolves would usually be disregarded in the threshold assessment of risk of identity or confusing similarity under the first element of the UDRP. In the case at hand, the Panel strictly compares the disputed domain name's second-level "intertabac" with Complainant's INTER-TABAC trademark and finds oral as well as conceptual identity together with a quasi-visual identity (in fact, many UDRP panels have held that minor changes lying in the addition or omission of nondistinctive elements such is a hyphen fail to significantly distinguish domain names from colliding complainant's trademarks (e.g. G. Bellantani 1821 S.p.A v. Stanley Filoramo, WIPO Case No. D2003-0783)).

Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.

B. Rights or Legitimate Interests

The Panel further finds that Respondent does not necessarily have rights or legitimate interests with respect to the disputed domain name within the meaning of the second element of the UDRP.

There are numerous decisions under the UDRP as to the application of its second requirement in relation to the use of a domain name identical or nearly identical to a Complainant's trademark for a website providing genuine criticism relating to the Complainant.

In the event that a domain name which is identical or confusingly similar to a trademark is being used for a genuine noncommercial free speech website, UDRP panelists tend to adopt the view (especially in cases which do not involve US parties or the selection of a US mutual jurisdiction), that the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to Complainant's trademark, in particular if the Respondent is using the trademark alone as the domain name (<trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner (see WIPO Overview 2.0, paragraph 2.4).

In the case at hand, it is undisputed between the parties that Respondent registered the disputed domain name for no other reason but to use it in order to resolve to a website at "www.intertabac.org" (with the same content as Respondent's further website at "www.dortmundkills.de") which has been set up in order to provide criticizing information on Complainant and its Inter-tabac Tobacco Trade Fair. Respondent has affirmed that by the time of the registration of the disputed domain name he knew that it was nearly identical with Complainant's trademark, and that Complainant owns and uses a number of nearly identical domain names under various TLDs on the Internet to promote its business.

Taking into account these considerations and that (as noted below) this dispute is better suited to an appropriate court, the Panel concludes that Respondent's use of the disputed domain name is not such as to positively confer rights or legitimate interests in the disputed domain name for purposes of the Policy and that, therefore, Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.

C. Registered and Used in Bad Faith

The question for this Panel, therefore, remains whether Respondent has registered and is using the disputed domain name in bad faith.

Paragraph 4(b) of the Policy identifies various standard scenarios which constitute evidence of registration and use of a domain name in bad faith.

As to paragraph 4(b)(i), the Panel finds that Respondent has not registered or acquired the disputed domain name primarily for the purpose of transferring it to Complainant or any of its competitors.

As to paragraph 4(b)(ii), the Panel notes that Respondent registered and is using only one domain name that reflects Complainant's INTER-TABAC trademark, namely the disputed domain name <intertabac.org> and that Complainant itself owns numerous other domain names reflecting its trademark so that there is no reason to believe that Respondent has engaged in a pattern of such conduct as that he wanted to prevent Complainant from using its own trademark in a corresponding domain name.

Moreover, the Panel has no reason to believe that Respondent may be characterized as a competitor of Complainant and that Respondent had registered the disputed domain name primarily for the purpose of disrupting Complainant's business within the meaning of paragraph 4(b)(iii).

Finally, the Panel is also not satisfied that Respondent is using the disputed domain name to intentionally attempt to attract Internet users to its own website for commercial gain. Respondent has provided evidence that its foundation "Rauchfrei leben" has been recognized as a tax-privileged and non-commercial non-profit organization serving the public good. Moreover, Respondent apparently is working at this foundation unsalaried full-time. Also, the website to which the disputed domain name redirects, namely "www.intertabac.org," does not contain any kind of commercial advertisement or the like (the ability to take donations notwithstanding).

The Panel notes that Complainant, in turn, has provided evidence according to which Respondent's website asks Internet users for donations in order to support the foundation's activities (such as e.g. the funding of the flight costs of one of the foundation's activists). In the eyes of the Panel, such call for donations, however, does not qualify as a making use of the disputed domain name for commercial gain as provided by the case scenario for an acting in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

To sum up, none of the specific circumstances identified in paragraph 4(b) of the Policy applies in the case at hand. The Panel certainly notes that those 4 bad faith elements listed in paragraph 4(b) of the Policy are "non-exhaustive" and that it, therefore, remains necessary to consider generally whether the disputed domain name was registered and is being used in bad faith. In this context, the Panel points to the fact that it is undisputed between the parties that Respondent has registered and is using the disputed domain name for purposes of exercising Respondent's right to free speech granted by the German Constitution. Therefore, the Panel does not see itself invited to use a basis for the finding of bad faith other than those standard cases expressly enumerated in the Policy (a view which is well in line with those of many UDRP panelists upholding Respondent's free speech rights under the UDRP, see e.g. Sutherland Institute v. Continuative LLC, WIPO Case No. D2009-0693); Midland Heart Limited v. Uton Black, WIPO Case No. D2009-0076).

The Panel's line of argumentation also aims to recognize that the UDRP is an instrument that has been set up to settle rather clear cut cases of domain name abuse to the disadvantage of a trademark owner rather than to always give the just answer as to whether or not a third party should be entitled to use a trademark in a domain name to the disadvantage of the trademark owner. While Complainant may well be in a position to defend its trademark rights in the disputed domain name before e.g. the national German courts, still the Panel finds that the rather narrow prerequisites under the third element set forth by paragraph 4(a)(iii) of the Policy in the case at hand are not fulfilled and that, accordingly, Complainant has not satisfied all of the three requirements of paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Stephanie G. Hartung
Sole Panelist
Date: May 27, 2014