WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ELTEC ELEKTRONIK AG v. ELTEC DOMAIN HOSTMASTER
Case No. D 2000-0406
1. The Parties
The Complainant is ELTEC ELEKTRONIK AG, a corporation organised under the laws of Germany, having its principal place of business at Galileo-Galilei-Straße 11, 55129 Mainz, Germany. The Respondent is ELTEC DOMAIN HOSTMASTER, an entity of unknown form, having its address in 1220 North Market Street, Wilmington, DE 19701, USA.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is which domain name is registered with CORE:
Internet Council of Registrars, World Trade Center II, 29, Route de Pre-Bois, CH-1215 Geneva (CORE Registrar 11, CSL-GmbH, Rathausufer 16, D-40123 Düsseldorf, Germany).
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on May 9, 2000 and signed copies of the Complaint have been sent (i) by facsimile transmission to the fax no. +1 818 475 14 82, which as of May 9, 2000 was believed by Claimant to be a fax number of Eltec Ltd., 54 Valtakatu Lappeenranta, SF-53100 Kymi, Finland and (ii) by facsimile to the Registrar. The Complaint defined Eltec Ltd., 54 Valtakatu Lappeenranta, SF-53100 Kymi, Finland, as Respondent. An acknowledgement of receipt was sent by the WIPO Center to the Complainant on May 12, 2000.
A request for registrar verification was transmitted to the Registrar by the WIPO Center on May 12, 2000, requesting the Registrar to
(1) confirm that a copy of the Complaint was sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Dispute Resolution Policy, Paragraph 4(b);
(2) confirm that the specified domain name is registered with it;
(3) confirm that the Respondent is the current Registrant of the domain name;
(4) provide the full contact details that are available in Registrar�s WHOIS database for the domain name registrant, technical contact, administrative contact and billing contact for the domain name at issue;
(5) confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name at issue;
(6) indicate the current status of the domain at issue.
On May 18, 2000 the Registrar confirmed that it received a fax copy of the Complaint on May 9, 2000. The Registrar further indicated that ELTEC DOMAIN HOSTMASTER, 1220 North Market Street, Wilmington DE 19801, USA is the Registrant of the domain at issue. It confirmed that the domain name at issue is registered with it. The Registrar further indicated as administrative contact, technical contact and zone contact the internet manager (COCO-345367) office@e with the Finnish telephone number +458 40 775 12 03 and that this internet manager is with Eltec Ltd., 54 Valtakatu Lappeenranta, F-52100 Kymi, Finland. The Registrar confirmed that the Uniform Domain Name Dispute Resolution Policy applies to the domain at issue and that such domain is active.
Following this information by the Registrar there a telephone conversation took place between the case manager at the WIPO Center and the Claimant�s representative. Following this conversation the Claimant amended the Complaint on May 23, 2000 to the extent that it now indicated that ELTEC DOMAIN HOSTMASTER, 1220 North Market Street, Wilmington DE 19801, USA, as the Respondent. Such amendment (like the original Complaint) also was sent by facsimile transmission to the fax number +1 818 475 14 82.
On May 24, 2000 the WIPO Center communicated to the Respondent ELTEC DOMAIN HOSTMASTER the Notification of Complaint and Commencement of Administrative Proceeding. Such Notification was sent to the Registrant to its e-mail address postmaster@e. The Notification also was sent to the internet manager, Eltec Ltd., 54 Valtakatu Lappeenranta, SF-53100 Kymi, Finland, in its capacity as administrative contact, technical contact and zone contact. It was further sent to the address provided by the homepage, Eltec Ltd., Kuibysheva 36, app. 15, St. Petersburg, 197046 Russian Federation. The Notification was sent by post/courier, facsimile and
e-mail.
The Notification to the Respondent stated that the last day for sending the Response to the Complainant and to the WIPO Center was June 12, 2000.
On June 11, 2000 a document was submitted titled "Response" to the WIPO Center. This "Response" indicates as the parties involved ELTEC ELEKTRONIK AG as Complainant and Eltec Ltd., 54 Valtakatu Lappeenranta, SF-53100 Kymi, Finland, as Respondent. This Response is signed by Mr. Andrew Sokolov. His signature is accompanied by two rubber stamps. One of the rubber stamps mentions "Eltec Ltd." and further indicates that "this" Eltec Ltd. is a corporation with limited liability in St. Petersburg. There also is another rubber stamp next to Mr Sokolov�s signature, mentioning "E". The additional information shown in this second rubber stamp again refers to a corporation with limited liability in St. Petersburg.
Having received the Panelist�s Statement of Acceptance and Declaration of Impartiality and Independence the WIPO Center on June 23, 2000 transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date in which the Panelist was formally appointed as the sole Panelist. The Projected Decision Date was indicated as July 7, 2000.
4. Factual Background
The Complainant has provided evidence of the registration of the following trademarks:
- DE-Reg. No. 02101492, Eltec Elektronik Mainz, a combined trademark. This trademark was filed on September 29, 1982. It is registered for class 9;
- International Trademark IR 706471, Eltec Elektronik Mainz. This is a combined trademark identical to the DE-Trademark 02101492. It is registered for class 9 and it is validly registered for the following countries: AT, BA, BX, CH (limited to goods of German origin), FR, HR, HU, IT, LI, MC, MK, PT, RO, SI, SM, YU, FI, SE.
(Complaint, Annexes 7, 8, 9)
The Respondent registered the domain name on February 20, 2000.
Complainant is authorised to use and has used its trademarks in connection with microelectronic parts and parts of microcalculators, to be used exclusively in data processing devices.
5. Parties� Contentions
A. Complainant
Complainant contends that Respondent has registered as a domain name "E" which is considered by the Claimant to be identical to the trademarks "Eltec" of the Complainant and that the Respondent is neither licensed nor authorised in any other way to use the trademarks of the Complainant. Complainant further contents that Respondent has no rights or legitimate interests in respect to the domain name at issue and that Respondent has registered and is using the domain name at issue in bad faith.
B. Respondent
Eltec Domain Hostmaster did not file a Response.
6. Discussion and Findings
The Complaint of May 9, 2000 was originally directed against Eltec Ltd., 45 Valtakatu Lappeenranta, SF-53100 Kymi, Finland, based on a database search conducted on April 19, 2000 by Claimant (Complaint, Annex 2).
Such database search clearly shows that ELTEC DOMAIN HOSTMASTER, 1220 North Market Street, Wilmington DE 19801, USA, is the Registrant of the domain at issue. It is unclear to the Panel why the Complaint was directed against Eltec Ltd., Valtakatu Lappeenranta, SF-53100 Kymi, Finland, because in the database search conducted by the Complainant itself Eltec Ltd. is indicated as administrative contact, technical contact and zone contact but not as Registrant.
This, however, does not have any impact on this case because the Complaint on May 23, 2000 was amended by the Complainant to the effect that the Complaint was directed against ELTEC DOMAIN HOSTMASTER, 1220 North Market Street, Wilmington DE 19801, USA. The Notification of Complaint and Commencement of Administrative Proceeding sent by the WIPO Center on May 24, 2000 was directed to ELTEC DOMAIN HOSTMASTER, in addition to its administrative contact, technical contact, zone contact and an address provided by the homepage.
Accordingly, the Complaint was duly notified to the Respondent ELTEC DOMAIN HOSTMASTER.
The Respondent ELTEC DOMAIN HOSTMASTER did not file a Response.
A document entitled "Response" was filed by Mr Andrew Sokolov on behalf of a company called "Eltec Ltd., St. Peterburg". Such "Response" says (page 20) that Eltec Ltd./St. Petersburg has been using the trade name and corporate name "Eltec" since 1991, but does not contain any evidence thereof. It also refers to Eltec Ltd. (TOO), E, Ltd., Eltec Ltd. as partners/affiliates of Eltec Ltd./St. Petersburg. In this context it is unclear what is the difference between Eltec Ltd./St. Petersburg submitting the "Response" and the Company "Eltec Ltd." referred to at the bottom of page 20 of the "Response". The "Response" further says that Eltec Ltd./St. Petersburg is incorporating another company under the name "Eltec Ltd." in the USA.
From this it becomes evident that Eltec Ltd./St. Petersburg is neither identical to the Registrant ELTEC DOMAIN HOSTMASTER nor to its administrative contact, technical contact, zone contact Eltec Ltd., Valtakatu Lappeenranta, SF-53100 Kymi, Finland.
The "Response" also does not include any evidence of the actual existence of the Respondent, Eltec Ltd./St. Petersburg or Eltec Ltd/Kymi. In addition no Power of Attorney has been submitted authorising Mr Andrew Sokolov to act for Eltec Ltd./St. Petersburg.
The Panel therefore finds that the brief submitted by Eltec Ltd./St. Petersburg cannot be regarded as Response by the Respondent to this administrative proceeding and that therefore the Respondent has to be regarded in default (Article 14 of the Rules). Therefore, the Panel must decide on the statements and documents submitted by the Complainant in accordance with the Policy, the Rules, the Supplemental Rules and the principles of law that it deems applicable (Article 15 of the Rules).
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
- 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
- that the Respondent has no legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
The trademarks owned by the Complainant are combined trademarks "Eltec Elektronik Mainz". The word "Eltec" in a graphic form very much dominates the overall impression of the trademarks. The words "Elektronik Mainz" clearly only contribute in a very subordinate manner to the overall impression of the trademark. In addition these words are only descriptive and therefore, if at all, only to a very small extent have to be taken into account when comparing the Complainant�s trademarks to the Respondent�s domain name. The word "Eltec" as such is registrable as a trademark even in a non-graphic form since it is distinctive and since it is not descriptive. The word "Eltec" therefore is by far the most important element in the Complainant�s trademarks when it comes to a comparison between such trademarks and the Respondent domain name.
While the Panel does not concur with the Complainant�s view that the domain name registered by the Respondent is identical to the Complainant�s trademarks, the Panel finds that the domain name "E" registered by the Respondent clearly is confusingly similar to the trademarks of the Complainant.
The website E refers to copyrights of D and DomainOs.com (Complaint, Annex 12). Both entities are engaged in the selling, renting or otherwise transferring of domain names registered by them to third parties (Complaint, Annexes 16 and 17). D explicitly invites to tender offers for the domain names listed by it. DomainOs.com on the other hand on page 1 of its website seems to say that the domains listed are not intended for sale and that DomainOs.com does not offer domains for sale. Simultaneously, however, it is stated that DomainOs.com or its customers may accept offers for the domains listed and the home page of its website also explicitly invites visitors to submit offers which should amount to a minimum of US $ 500.--. The Panel finds that the overall impression of the website of D also clearly indicates that D is an entity involved in the selling, renting or otherwise transferring of domain name registrations to third parties for valuable consideration in excess of out-of-pocket-costs directly related to the domain name. The same applies to the websites , and which evidently belong to the same network of entities/websites run by Forum Enterprises LLC which engage in the same business. The Panel therefore finds that ELTEC DOMAIN HOSTMASTER also belongs to such network of entities engaged in the business described in Article 4(b)(i) of the Policy.
This is confirmed by the fact that the company behind DomainOs.com is Forum Enterprises LLC with its address at 1220 North Market, Street, Suite 606, Wilmington DE 19801, USA, which is the same address as the address as of Respondent (Complaint, Annex 17) and that Forum Enterprises LLC, 54 Valtakatu Lappeenranta, SF-53100 Kymi, Finland, is also the entity behind the e-mail address domainreg@ which was indicated as administrative contact, technical contact and zone contact for the Respondent on the database search in the Network Solutions WHOIS database conducted on March 28, 2000 by Complainant (Complaint, Annexes 3 and 11).
The Panel finds that Complainant has met its burden of proof that the domain name at issue has been registered primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademarks "Eltec Elektronik Mainz" or to a competitor of the Complainant for valuable consideration in excess of documented out-of-pocket-costs directly related to the domain name.
(Although, however, the brief submitted by Eltec Ltd./St. Petersburg is not considered by the Panel as a Response in this administrative proceeding and therefore the Respondent is considered in default the Panel considers it appropriate to state that the brief submitted by Eltec Ltd./St. Petersburg does not provide for any substantive evidence that Respondent, Eltec Ltd./St. Petersburg or Eltec Ltd./Kymi (i) are existing legal entities (ii) if they exist have used or have prepared to use the domain name at issue in connection with the bona fide offering of goods or services, or (iii) have been commonly known by the domain name or (iv) are making a legitimate non-commercial or fair use or the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. Such brief also lacks any substantive evidence that any of the entities referred to has legitimate interests in respect of the domain name at issue.)
The Panel also finds it evident that the Complainant has not granted any rights related to its trademarks to the Respondent.
7. Decision
For all of the foregoing reasons the Panel decides that the domain name registered by Respondent is confusingly similar to the trademarks registered as DE 02101492 and IR 706471 in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of such domain name and that the Respondent�s domain name has been registered and is being used in bad faith by the Respondent.
Accordingly, pursuant to Article 4(b)(i) of the Policy the Panel requires that the registration of the domain name be transferred to the Complainant.
Christian Gassauer-Fleissner
Sole Panelist
Dated: July 2, 2000
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