WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Richard Schöps & Co AG v Maxim Kouznetsov
Case No. D2001-0347
1. The Parties
The Complainant is Richard Schöps & Co AG, Nordwestbahnstr. 8-10, A 1200 Vienna, Austria, represented by Weiss - Tessbach Rechtsanwälte GmbH, Rotturmstr. 13, A 1010 Vienna, Austria.
The Respondent is Maxim Kouznetsov, Mühlfeldgasse 21, A 2331 Vösendorf, Austria
representing himself.
2. The Domain Name and Registrar:
The Domain Name at issue is . The Registrar is Speednames, Rejsbygade 8 A, 1759 Copenhagen V, Denmark.
3. Procedural History:
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on March 9, 2001, and a hardcopy was received by the Center on
March 13, 2001. The Center acknowledged the receipt of the Complaint on
March 13, 2001.
On March 13, 2001 the Center sent to Speednames a request for verification of registration data. On March 16, 2001, Speednames confirmed to be the Registrar, that Maxim Kouznetsov is the Registrant of the domain name , and that the domain name registration "schöps" is registered in the Multi Lingual test bed offered by VerySign, which means that it cannot be used as long it is not activated by VerySign.
WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The Panel is satisfied that this is the case.
On March 22, 2001, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. On April 3, 2001 the Respondent informed the Center that he does not intend to send a response to the Complaint. Since no response was received from the Respondent within the time limit set, the Center sent a default notification to the Complainant, on April 11, 2001.
The Complainant submitted further evidence on April 3, 2001 and the Center informed the Complainant that it was in the discretion of the Panel whether to accept and consider this information.
On April 30, 2001, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panel�s decision is May 13, 2001.
4. Factual Background
A. Complainant
The Complainant is one of the leading fashion chain stores in Austria with 108 outlets all over the country, which was founded in 1954 by Richard Schöps. The company name and trademark (the term "trademark is in the following used to cover the use of a mark for goods and/or services) "Schöps" has extensively been used in connection with these outlets, in advertising materials and on the Internet, at the Complainant's website, accessible under the domain name and under the domain name www.schoe. This is documented by Annex 5 to the Complaint.
The Complainant has no registered rights in the trademark "Schöps". However, its trademark enjoys a very high degree of awareness amongst Austrian consumers, as evidenced in Annex 6 to the Complaint. In a survey conducted in 1998, "Schöps" had a degree of spontaneous awareness of 40 % (higher degrees were achieved only by C&A and by H&M) and a supported brand awareness (a list of fashion and textile traders was shown to the interviewed persons, which included all major competitors in the country) of over 99 % (followed by Palmers with 96 %, C&A with 96 % and H&M with 92 %). From this market study it can be deducted that "Schöps" is a well-known trademark in Austria (as is C&A and H&M) in the sense of Art. 6bis of the Paris Conveention.
The Respondent has chosen not to submit a Response and the Panelist is satisfied that the documents submitted by the Complainant are truthfully reflecting the factual circumstances of the case.
B. Respondent
The Respondent is an individual who registered on February 26, 2001 the domain name with Speednames. The domain name has not been activated by the Respondent.
On March 5, 2001 the Respondent contacted the Complainant using the fictive firm name EuroInvest Ltd, and sent on that day and in the ensuing correspondence the following emails to Mr. Floh of the Complainant (English translation of the original German emails, of which copies were submitted as annex to the Complaint):
1) March 5, 2001:
As you know, the registration of domain with language-specific signs (e.g. vowel mutation) has started on January in the .com .net and .org domains. We registered the domain www.schö and we will put it for sale in domain names auctions on March 12, 2001. Please contact us.
2) March 6, 2001:
We have offered to acquire the domain before the auction for the following reasons:
Schöps is not protected as a trademark. Therefore it cannot be ruled out that a third party (e.g. competitors) misuses the name after buying the domain at the auction.
For instance a link to a homosexual porno website under www.schö would definitely be harmful to the image of the company�..
Upon a proposal of the Complainant to discuss the matter personally:
3) March 7, 2001:
Unfortunately it is impossible for us to travel to Europe since our company currently is involved in the ICANN accreditation procedure. We suggest to discuss the matter per email.
4) March 12, 2001:
The domain will be auctioned as of March 12, 2001: the starting price is DM 165.000 and corresponds to the offer that was made to us today. In order to avoid unpleasant risks and because we have great respect for your company, EuroInvest agrees to sell the domain to Schöps for the same amount before that date or to sign the contract.
A last email was sent by EuroInvest in English on March 12, 2001:
"The domain name will be sold to a third party for 165.000 German marks, which as we think is your enemy and is acting through an offshore company in Cyprus. For the yellow press this will be a great opportunity to earn money with their usual loud headings. You and the management will have to be fired by the shareholders.
Richard Ownes, General Director, EuroInvest Finance Group Ltd".
In a further email, send by the Respondent on March 13, 2001 under his own name, he rejected to have any connection with EuroInvest. However in a hearing, which on March 21, 2001 took place in a criminal procedure before a Police offer, he admitted to have sent all these emails to the Complainant. A copy of the protocol of that hearing, bearing the signature of the Respondent, was submitted by the Complainant after the time limits set by the Center, however the Panel sees no reason to disregard this important evidence, which was not available to the Complainant earlier.
5. Parties� Contentions
A. Complainant
Complainant submits that (1) the domain name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
B. Respondent
The Respondent has failed to submit a Response. He has therefore not contested the allegations of the Complaint.
6. Discussion and findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
1) Identity or confusing similarity with a mark in which the Complainant has rights
The domain name is identical with the trade mark SCHÖPS of the Complainant, since the generic tld indicator "com" cannot be taken into consideration when judging identity or confusing similarity. The Compalinant's trademark is not registered, but it enjoys protection based on use:
The Claimant refers to Section 31(1) of the Austrian Trademark Law, which allows the owner of an unregistered mark, which is known to the public, to apply for cancellation of a mark, which is registered for the same goods and services for which the mark is known. This protection is narrower than that provided in German trademark law, which gives an unregistered trademark, when it has acquired secondary meaning, the same protection as is given to a registered trademark. However, it need not be discussed whether Section 31(1) is a sufficient base for the claim of the Complainant to have the domain name transferred to it. No doubt the trademark SCHÖPS is a trademark which is well-known in the sense of Art. 6bis of the Paris Convention, not only to interested circles but even to the general public in Austria. This has been proven by the documents submitted by the Complainant and has not been contested by the Respondent. The Panelist is therefore satisfied that the Complainant has rights in his trademark SCHÖPS.
Clearly there would be a risk of confusion of Internet users if the domain name www.schö were activated by a third party, since it is natural that they may try to find the Complainant's Website under its correct name "schöps" and not under "schoeps". This is the more true now that it has become possible to register domain names, containing special vowels such as the "ö".
2) Legitimate rights or interests in respect of the domain name
The firm name and trademark SCHÖPS of the Complainant, and consequently also, the Respondent's domain name is a personal name, i.e. the company founder's name, in which the Respondent has no own right or interest. The Complainant has not consented to the Respondent's use of its name as a domain name. Simple stocking of the domain name by the Respondent does not create any right or legitimate interest in the domain name.
Furthermore, none of the circumstances listed under 4c of the Policy, possibly demonstrating rights or legitimate interests, are given. On the contrary, the correspondence between the parties clearly shows that the Respondent registered the domain name with the sole intention to offer it to the Complainant for sale.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name "schö".
3) Registration and use in bad faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. As an example, the Policy section 4(b) (i) mentions registration of the "domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of mark or to a competitor of that complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name."
A generally applied test is therefore whether a Respondent has attempted to sell the domain name for a sum in excess of the Respondent�s out of pocket expenses in registering the domain name.
The emails, cited above 4 B, which the Respondent sent to the Complainant under the fictive name EuroInvest, would alone be evidence enough for a conclusion that the Respondent has registered and was using the domain name "schö" for the sole reason to sell it for the best possible price to the Complainant. Furthermore, in the hearing before a Police Officer, the Respondent admitted that fact and also that he never planned an auction, nor was he seeking ICANN approval. He admitted to have invented all these stories in order to hide his true identity, because he was worried about being charged of domain-grabbing. He also confessed that he hoped to receive from the Complainant a price close to the sum of DM 165 000, which he had proposed.
In a communication sent to the Center on April 3, 2001, within the time limit set for his Response, the Respondent informed the Center that he agreed to the transfer of the domain name to the Complainant and that he did not intend to submit a response against the Complaint. He continued to write: " (I) kindly ask the Panelist to order the respective Registrar the transfer of the domain name to the Complainant".
Applying a formalistic interpretation of the wording of the Policy one could derive from this communication that the domain name now (since April 3, 2001) is not any more "being used" by the Respondent in bad faith, as required by Paragraph 4a(iii) of the Policy. However, the domain name was registered and was clearly used in bad faith. The Respondent made his communication to the Center only after the Police Hearing, which took place on March 21, 2001, whilst in the email sent on March 13, 2001 to the Complainant he still had denied any connection with EuroInvest. Even before the Police Officer the Respondent first declared himself non-guilty and only after due consideration he admitted the facts of which he was accused. Therefore, when the Respondent was notified of the Complaint on March 22, it is not surprising, that he did not intend to submit a Response. However, it would amount to contradicting the purpose of the Policy if a domain name grabber, who realizes that he has no chance in the proceedings, could avoid the consequence of the transfer of his domain name to the Complainant by expressly declaring that he agrees with that transfer. Admittance of bad faith by the Respondent would amount to denial of bad faith by the Panel.
In that context it must also be taken into account that the Respondent did not make an offer to the Complainant to transfer the domain name; he made the statement referred to above only in his communication to the Center. On inquiry of the Center, the Complainant responded that it did not intend to enter into negotiations with the Respondent rather wished the proceedings to continue.
The Panel therefore concludes that the allegation of the Complainant that the Respondent has registered and is using the domain name in bad faith is sustained.
7. Decision
The Panel decides that the Complainant has proven each of the three elements of paragraph 4a of the Policy.
The Panel requires that the registration of the domain name be transferred to the Complainant.
Dr. Gerd F. Kunze
Sole Panelist
Date: May, 7, 2001
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