WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mast-J�germeister AG v. GlazedDonuts
Case No. D2005-0034
1. The Parties
The Complainant is Mast-J�germeister AG, Wolfenb�ttel, Germany, represented by Gramm, Lins & Partner, GbR, Germany.
The Respondent is GlazedDonuts, San Jose, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with R.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January�12,�2005. On January�13,�2005, the Center transmitted by email to R a request for registrar verification in connection with the domain name at issue. On January�13,�2005, R 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�18,�2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February�7,�2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February�8,�2005.
The Center appointed Arne Ringnes as the sole panelist in this matter on February�16,�2005. 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. Due to exceptional circumstances, the decision was rendered on March�7,�2005.
4. Factual Background
The Complainant is producer of the herbal liqueur “J�germeister” which is distributed world wide in currently more than 60 countries.
Complainant is owner of registered trademarks J�GERMEISTER world wide and has given the following overview of its trademark registrations:
Country
Registration No.
Priority
J�GERMEISTER
Germany
474 481
December�07,�
1934
Word
Germany
396 36 703
August�26,�
1996
Word-/Design
Germany
399 13 941
March�10,�1999
Word-/Design
USA
857,604
May�16,�1967
Word
USA
2,165,258
November�13,�
1996
Word-/Design
International Registered Trademark
Registration designating:
Egypt, Albania, Algeria, Armenia, Azerbaijan, Benelux, Bosnia-Herzegovina, Bulgaria, China, Denmark, Finland, France, Greece, United Kingdom of Great Britain and Northern Ireland, Ireland, Italy, Kazakhstan, Kyrgyzstan, Croatia, Cuba, Latvia, Liberia, Liechtenstein, Morocco, Macedonia, Monaco, Mongolia, Namibia, North Korea, Norway, Austria, Poland, Portugal, Romania, Russia, San Marino, Sweden, Switzerland, Serbia and Montenegro, Slovakia, Slovenia, Spain, Sudan Tajikistan, Czech Republic
663 995
August�26,�
1996/November�20,�2001 (Namibia: June,�30,�2004)
Community
Trademark
135202
April�01,�1996
Word
Community Trademark
2662443
April�26,�2002
Word-/Design
Australia
204,736
September�02,�1966
Word
Argentina
1.914.786
February�08,�
2002
Word-/Design
Japan
1.749.484
December�15,�
1984
Word
South Africa
76/4519
August�30,�
1976
Word
Uruguay
296030
October�29,�
1976
Word
Brasil
006820700
September�21,�1977
Word
Chile
501.612
December�16,�
1976
Word
Estonia
14547
December�29,�1992
Word
Hong Kong SAR of China
4270/1991
July�26,�1989
Word
Canada
276,672
November�04,�1981
Word
Mexico
495120
February�07,�1995
Word
Namibia
7829/66
September�26,�1966
Word
Singapore
96/13052E
December�05,�1996
Word
Ukraine
13908
26.06.1995
Word-/Design
It is further informed that Complainant uses the denomination “J�germeister” as part of its company name “Mast- J�germeister AG”, the short form of which is “J�germeister”. The company was registered originally as “W. Mast GmbH, J�germeister-Spirituosenfabrik” on January 1, 1947. The company changed to Mast- J�germeister AG which was registered in the register for companies in the city of Wolfenb�ttel on June 11, 1987.
Complainant sent a warning letter to the Respondent on June�2,�2004, asking him to transfer the domain name to the Complainant. The Respondent answered with letter of June�14,�2004, via e-mail. In this letter, the Respondent states that as a fan of complainant’s beverage he intended to host a small benevolent fan site. Inter alia: “I am well aware of both your client’s product, the famous herbal liqueur named J�germeister, and their stature in the world market. I am, in fact, quite a fan of your client’s beverage and had registered the Internet domain name (tech. “XN—JGERMEISTER-L8A.NET”) in May of 2001, with hopes of hosting a small benevolent fan (enthusiast) site. Hence the Internet domain name was registered with the “net” top level domain (TLD). This was done in good faith without intent for commercial gain, denial of usage, to misleadingly divert customers, or to tarnish the trademark of your client.” He further promised to relinquish control of the domain name if he was reimbursed with regard to the costs incurred in the registration of the domain name.
With e-mail of July�13,�2004, Complainant confirmed to be willing to compensate Respondent’s out of pocket expenses.
The Respondent replied on September�16,�2004, that he would provide information on his bank account and “set things in motion” to transfer the domain name. However, Respondent did not take any such steps.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name is identical or confusingly similar to Complainant’s trademark J�GERMEISTER.
In this respect Complainant refers to its trademark registrations, as set out in Para 4 above. Further Complainant has provided evidence to substantiate that the herbal liquor “J�germeister” is one of the most successful spirits in the world and has a strong brand recognition.
With respect to the condition that the Respondent has no rights or legitimate interests in respect of the domain name, Complainant points out that holding the Internet domain name in order to host the fan site is not a legitimate reason.
Complainant further contends that the domain name was registered and is being used in bad faith. In this respect Compliant submits that Respondent was well aware of J�germeister as a famous liquor. Complainant refers to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, in which it was held that under certain circumstances inactivity by the Respondent may imply bad faith use under the Rules. Complainant submits that it amounts to bad faith that Respondent has not transferred the domain name despite his promise to do so in correspondence with Complainant. The Complainant has further argued that as the word “J�germeister” is outstanding and unique and does not have any descriptive meaning, and that any use by the Respondent would mislead the public. Also, Respondent’s registration of the domain name interferes with the Complainant’s use of its trademark in the sense that the Complainant is unable to register the domain name in its name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, Respondent has in his letter of June�14,�2004, held that the domain name “…is not yet “active” as internet domain names using extended characters of US-ASCII, ISO-8859-*, Unicode, or any other encoding schemes are not yet universally recognized by Domain Name System (DNS) servers, in this case specifically with regards to the character “�”.”
6. Discussion and Findings
A. Identical or Confusingly Similar
Under the Rules Paragraph 4(a)(i), Complainant shall prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has right.
Complainant has submitted copies of a number of trademark registrations in several countries for the word mark J�germeister. The domain name in dispute – – is identical to Complainant’s trademark. Thus the condition under the Rules Paragraph 4(a)(i) is fulfilled.
B. Rights or Legitimate Interests
Under the Rules Paragraph 4(a)(ii), Complainant shall prove that Respondent has no rights or legitimate interests in respect of the domain name.
In its letter of June�14,�2004, Respondent states that he is well aware of Compliant’s products “the famous herbal liquor named J�germeister, and their stature in the world marked”. The Respondent has also claimed that he was planning to set up a fan site. However, there is no evidence for “demonstrable preparations” to use the domain name as a fan site, and a mere allegation of intention to use the domain name in this way cannot on its own create a valid defence against an UDRP complaint, see e.g. Freddy Adu v. Frank Fushille WIPO Case No. D2004-0682: “Panelists in disputes under the Policy have consistently found that noncommercial fan sites qualified as legitimate use. In this proceeding, though, there is no fan site. There is no evidence of Respondent’s use of the Disputed Domain Name for this or indeed any other purpose, or of “demonstrable preparations” to do so. Respondent’s factual assertions, if true, demonstrate only that he intended to use the Disputed Domain Name for a fan site. Intentions are not “demonstrable preparations” to use a domain name. Under Paragraph 4(a)(ii), once Complainant has established his prima face case, “concrete evidence”, not intentions, is necessary to overcome that presentation”.
Thus, the Panel concludes that second condition of the Rules is proved by the Complainant.
C. Registered and Used in Bad Faith
As the third condition under the Rules, Complainant shall prove that the domain name was registered and is being used in bad faith, cfr. the Rules Paragraph 4(a)(iii).
Firstly, the Panel points out that none of the circumstances mentioned in the Rules Paragraphs 4(b)(i)-(iii) are applicable in this matter. Hence, the Respondent has not requested Complainant to pay in excess of his out of pocket costs. Further, there is no evidence that Respondent has engaged in a pattern of preventing an owner of a trademark from reflecting the mark in a corresponding domain name. Furthermore, there is no evidence showing that that domain name is registered primarily for the purpose of disrupting the business of a competitor.
The fourth circumstance under Paragraph 4(b)(iv) is that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant’s mark.
As mentioned above, Respondent has claimed that he was planning to set up a fan site. Even if it is to be assumed that such fan site, if ever to be established, would be non-commercial, a mere allegation of future intention to use the domain name in this way cannot create a valid defence against the Policy, see above. The fact that the Respondent has registered a domain name which is similar to a very well known trademark internationally, and even not fulfilled his promise to transfer the domain name, shows bad faith on the part of the Respondent.
Based on the above, Paragraph 4(b)(iv) of the Policy is met.
The Panel concludes that the Complainant has shown that the Respondent has registered and used the domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Arne Ringnes
Sole Panelist
Dated: March�23,�2005
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