WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ideenhaus Kommunikationsagentur GmbH v. Ideenhaus GmbH
Case No. D2004-0016
1. The Parties
The Complainant is Ideenhaus Kommunikationsagentur GmbH, Nürnberg, of Germany, represented by Dr. Cöster & Partner, Germany.
The Respondent is Ideenhaus GmbH, Hamburg of Germany.
2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Tucows, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 9, 2004. On January 9, 2004, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the domain name at issue. On January 12, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 the Respondent of the Complaint, and the proceedings commenced on January 26, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on February 16, 2004.
The Center appointed Brigitte Joppich as the sole panelist in this matter on February 18, 2004. 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
The Complainant is an advertising agency operating in Germany and all over Europe. It was founded and registered in the commercial register in February 1992, under the name "Das Ideenhaus Werbeagentur GmbH". It changed its business name on May 16, 2000, into "Ideenhaus Kommunikationsagentur GmbH". The Complainant is the owner of the Community Trademark no. 001715598 ("ideenhaus") with priority of June 20, 2000, registered on August 14, 2001, for products and services in classes 16, 35 and 41.
The Respondent was founded on December 22, 1997, and was inter alia acting in the field of advertisement and promotion. The Domain Name was registered on January 15, 1999, on behalf of the managing director of the Respondent.
By judgment of December 12, 2001, on request of the Complainant, the Regional Court of Nürnberg-Fürth, Germany ordered the Respondent to restrain from offering its services under the company name "Ideenhaus Consulting Gesellschaft zur Verwertung geistigen Eigentums" and under the Domain Name (file no. 3 O 10290/00).
In January 2002, the Complainant found out that the Domain Name was no longer registered in the name of the managing director but in the name of the Respondent itself.
With reference to the judgment of the Regional Court of Nürnberg-Fürth the Complainant asked the Respondent to transfer of the Domain Name to the Respondent by letters dated January 25, 2002, and February 14, 2002. The Respondent did not reply.
5. Parties� Contentions
A. Complainant
The Complainant contends that each of the three elements specified in the Policy, paragraph 4(a), are given in the present case, i.e.
(i) the Domain Name is identical to Complainant�s trademark;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name;
(iii) the Domain Name was registered and is being used by the Respondent in bad faith:
- upon Complainant�s information, the Respondent is no longer using its office in Albert-Schweitzer-Ring, Hamburg, while it is still registered in the commercial register and the WhoIs-database with this address. Both email addresses mentioned in the WhoIs-database seem to be invalid as several transmissions to the admin-c and tech-c have failed;
- at present no content is offered under the Domain Name. The Domain Name was offered for sale on the website of on August 19, 2003, at a price of USD 2,500;
- the Respondent registered the Domain Name only to prevent the Complainant from reflecting the Community Trademark "ideenhaus" in a corresponding domain name and to hinder the Complainant from doing its business.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a) the Complainant must prove that each of the following three elements are present:
(i) the Domain Name is identical with or confusingly similar to a trademark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name is identical to the trademark in which the Complainant has rights as the global top level domain name identification has no distinctive function. The Complainant has satisfied the requirements of the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Policy, paragraph 4(c) sets out three illustrative circumstances as examples, which, if proved by the Respondent, shall demonstrate its rights to or legitimate interests in the Domain Name for purposes of the Policy, paragraph 4(a)(ii), i.e.
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademarks or service marks at issue.
Rights of a respondent to, or legitimate interests in a domain name under the Policy, paragraph 4(c) are based on various types of (active or passive) use of a name. It is generally acknowledged that rights in (business) names come into existence with the first use of a name and cease to exist when use of such name is given up. It is therefore the Panel�s opinion that protection of legitimate interests under the Policy, paragraph 4(c) includes past facts and circumstances only if they subsist, i.e. the name must still be used (actively or passively) when the dispute arises. As a result, use "before any notice to the Respondent of the dispute" as in the Policy, paragraph 4(c)(i) must be interpreted as use immediately preceding the dispute.
The "dispute" means the difference of opinion between the Complainant and the Respondent leading to the administrative proceeding under the Policy.
In the present case, the question is whether the Respondent used the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods and services just before receipt of the Complainant�s letter dated January 25, 2002. As the prohibitory action against the Respondent was filed on December 5, 2000, already, no good faith offering of services by the Respondent under its company name "Ideenhaus" or the Domain Name is conceivable after such date. As a result, neither the Domain Name nor a name corresponding to the Domain Name were used by the Respondent in connection with a bona fide offering of goods and services before notice of the dispute.
No facts have been submitted that Respondent was commonly known by the Domain Name or that any legitimate non-commercial or fair use was made by the Respondent.
The Panel therefore sees no rights of the Respondent to or legitimate interests in the Domain Name and finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b) sets out four illustrative circumstances, which for purposes of the Policy, paragraph 4(a)(iii) shall be evidence of the registration and use of the Domain Name in bad faith, including
(i) circumstances indicating that the Respondent has registered or acquired 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 the trademark or service mark or to a competitor of that complainant, for a valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) where the Respondent has registered the Domain Name in order to prevent the Complainant as owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) where the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor.
The Respondent did not register the Domain Name directly with the registrar but became the new owner by way of a transfer after acquiring the Domain Name from its managing director. It is the Panel�s view that this does not mean that the Respondent has not "registered" the Domain Name within the meaning of the Policy, indeed, there is no reason to differentiate between a direct registration and registration after a transfer (see also Dixons Group Plc v Mr. Abu Abdullaah WIPO Case No. D2000-1406, and Société Air France v. Vladimir Federov WIPO Case No. D2003-0639). The Domain Name was in fact "registered" within the meaning of the Policy after it had been acquired by the Respondent between June 6, 2001, and January 17, 2002.
The Respondent had active knowledge of the Complainant�s trademark rights when he acquired the Domain Name because the action against him before the German regional court was at least pending, if not decided. Therefore, the Panel finds that this acquisition (registration) occurred in bad faith.
As far as the panel is aware, the Respondent did not actively use the Domain Name after its acquisition due to the pending action and the later judgment. However, it is common understanding that the circumstances of a case may be such that even non-use constitutes "bad faith use" or, as it has often been phrased following the Telstra case "inaction is within the concept" (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Paragraph 4(b) of the Policy is intended to be illustrative rather than exclusive.
In the present case, the Panel finds that where (1) a domain name cannot be used by the Respondent according to a final judgment against such Respondent, (2) the Respondent offered the Domain Name for sale on the Internet at a price of USD 2,500, (3) the Respondent failed to submit a response in the administrative proceeding under the Policy, (4) the Respondent is no longer using its registered office, and (5) neither the administrative contact nor the technical contact can be contacted via email, the Domain Name is used in bad faith.
Therefore the Panel finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(iii).
7. Decision
For all the foregoing reasons, in accordance with Policy, paragraphs 4(i) and Rules, paragraph 15, the Panel orders that the domain name be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: February 25, 2004
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