WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Albert F�rst von Thurn und Taxis v. Doris Eckert / Alpha Financial Systems AG
Case No.�D2004-0817
1. The Parties
The Complainant is Albert F�rst von Thurn und Taxis, Regensburg, Germany, represented by Torys LLP, United�States�of�America.
The Respondent is Doris Eckert / Alpha Financial Systems AG, Huenenberg, Zug, Switzerland; and/or Munich, Oberschleissheim, Germany.
2. The Domain Name and Registrar
The disputed domain name is registered with CORE Internet Council of Registrars.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on October�7,�2004. On October�7,�2004, the Center transmitted by email to CORE Internet Council of Registrars a request for registrar verification in connection with the domain name at issue. On October�8,�2004, CORE Internet Council of Registrars 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 Paragraphs�2(a) and 4(a) of the Rules the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October�13,�2004. In accordance with Paragraph�5(a) of the Rules, the due date for Response was November�2,�2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November�5,�2004.
The Center appointed Alfred Meijboom as the Sole Panelist in this matter on November�18,�2004. The Panelist finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Paragraph�7 of the Rules.
4. Factual Background
The Complainant represents the European royal family Thurn und Taxis. For more than 300 years the Thurn und Taxis family held the monopoly over imperial communications between Vienna and the Habsburg Empire. Recently the family has expanded its businesses into other industries, including finance, agriculture and forestry, and brewing.
Furthermore, the family has opened its palace, the Palace of the Princes of Thurn und Taxis, for public tours. This has increased the public profile and widespread fame and recognition of the family. The Thurn und Taxis family members are regularly featured in society pages and throughout the media generally.
The Complainant holds a number of trademark registrations in Germany and trademark applications in the United�States�of�America, including the word marks THURN�UND�TAXIS (No.�30240915 (Germany) and No.�78,339,590 (USA)). The�trademarks have been registered/filed and are used for insurance matters, real estate matters, financial matters, advertising and business management.
The Respondent holds the domain name (hereinafter also referred to as the “Domain Name”). The Respondent has a contact address in Switzerland and one in Germany. On its website under the Domain Name (hereinafter also referred to as the “Website”) the Respondent displayed the Complainant’s family name and coat of arms. The Respondent represented that it is “Thurn und Taxis Global Trust Company AG” and claimed to manage various investment portfolios and development projects and to provide financial guarantee insurance and credit protection.
5. Parties’ Contentions
A. Complainant
According to Paragraph�4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant is required to prove that the following three elements are met:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark to which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
(i) The Complainant contends that the Domain Name is confusingly similar to the Complainant’s trademark THURN UND TAXIS, as it is identical except for the word “und” (“and” in English). In addition to being a registered trademark, Thurn und Taxis is also a family name, which as such is protectable as a unregistered trademark when a party – such as Complainant – uses the family name for direct commercial purposes in the marketing of goods and services, and is also protectable because it concerns an internationally famous family name.
(ii) The Complainant states that the Respondent is in no way connected to or affiliated with any of the Thurn und Taxis businesses, nor is the Respondent connected to a member of the Thurn und Taxis family. Thus, the Respondent has no legitimate claim to the name Thurn und Taxis nor to the Domain Name.
(iii) The Complainant contends that the Respondent clearly knew of the Thurn und Taxis trademark and family name in choosing to register this particular Domain Name. The name is distinctive and famous and the Respondent has registered the Domain Name with a bad faith intent to trade off of and profit from the famous Thurn und Taxis name.
At the end of his respective discussion of requirements (ii) and (iii) above, the Complainant concluded that, for the reasons he mentioned, the Domain Name should be transferred to the Complainant. However, in Paragraph�“VII. Remedies Required” of the Complaint, the Complainant requested cancellation of the Domain Name. As the formal request should be made in this Paragraph�VII of the Complaint, the Panelist considered cancellation of the Domain Name the formal request of the Complainant. In order to seek clarification as to which remedy is requested, the Panelist issued a Procedural Order on December 7, 2004, directing Complainant to provide a notification of the requested remedy. In his response of December 7, 2004, the Complainant requested that its Complaint in this action be amended under Paragraph VII, Remedies Required, to request that the Domain Name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions and to the Complainant’s response to the Procedural Order.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has registered THURN UND TAXIS as a trademark in Germany and filed for an application in the United States of America. Since .net should be disregarded and “und” (“and” in English) is a coordinating conjunction without any distinctiveness, the Domain Name is virtually identical to and confusingly similar to trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant states that the Respondent is in no way connected to or affiliated with any of Complainant’s businesses, nor is the Respondent connected to or a member of the Thurn und Taxis family. The fact that the Respondent chose to (also) operate the Website under the business name “Thurn und Taxis Global Trust Company AG” does not change this situation, because the mere fact of selecting a name which is a trademark and well-known family name of third parties does not constitute a legitimate interest, unless there are additional grounds which were not found in this case. There is no evidence of circumstances as described in Paragraph�4(c) of the Policy or any other circumstances which could indicate that the Respondent has any rights or legitimate interests to the Domain Name.
Consequently, the Panelist finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Taken into account the reputation and distinctive character of the family name Thurn und Taxis and the fact that the family name together with their coat of arms was displayed on the Website, it is clear and undisputed that the Respondent must have registered the Domain Name with the family Thurn und Taxis in mind. Since the Respondent has no rights or legitimate interests in the name Thurn (und) Taxis and used the website for its own commercial interest, the Panel concludes that the Respondent has registered the Domain Name in bad faith.
The Respondent used the Website to present itself as an investment company under the name “Thurn und Taxis Global Trust Company AG”. Considering that the Respondent has no rights or legitimate interests in the trademarks and family name Thurn und Taxis and that, in addition, the THURN UND TAXIS trademark are being used for financial services, it is obvious that the Respondent by using the Domain Name has intentionally attempted to attract, for commercial gain, Internet users to its Website by creating a likelihood of confusion with the Complainant’s trademarks as to the source or affiliation of its website and the services offered. Subsequently, the Panelist finds that the Respondent used the Domain Name in bad faith.
7. Decision
For all the foregoing reasons the Panelist orders that the domain name be transferred to the Complainant.
Alfred Meijboom
Sole Panelist
Dated: December 14, 2004
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