WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Axel Springer AG v. Micronetworks Bt.
Case No. D2005-0500
1. The Parties
The Complainant is Axel Springer AG, Berlin, Germany, represented by Anwaltskanzlei Schultz-Suechting, Germany.
The Respondent is Micronetworks Bt., Salgotarjan, Hungary.
2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on May 6, 2005. On May 9, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the domain name at issue. On May 10, 2005, OnlineNic, Inc. d/b/a China-C 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 May 13, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June�2,�2005. The Response was filed with the Center on June 2, 2005.
The Center appointed Christophe Imhoos as the sole Panelist in this matter on June�8,�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.
On June 17, 2005, the Center received from the Complainant a “Response to Statements made by the Respondent” as supplemental filing, with an additional exhibit.
On June 21, 2005, the Respondent sent an email to the Center requesting the sole panelist to postpone his decision for a day, until the receipt of its answer to the Complainant’s supplemental filing.
4. Preliminary issue : unsolicited submission
Paragraph 12 of the Rules provides that, in addition to the Complaint and the Response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.
In the instant matter, the Complainant made a supplemental filing, not solicited by the Panel, and the Respondent advised of its intent to file the same.
The Rules make no provision dealing with this kind of situation. The principles are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure (Soci�t� des H�tels M�ridien v. ABC-Consulting, WIPO Case No.�D2004-0792).
The principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute. Indeed, the danger is that admitting a further document submitted by one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on (idem, WIPO Case No.�D2004-0792). This is exactly the case, which arises in this matter.
Many panels have held that additional submissions are inappropriate except in the rarest of circumstances, such as the finding of newly discovered evidence not reasonably available to the submitting party at the time of its initial submission, or arguments by the respondent that the Complainant could not reasonably have anticipated (ibidem, WIPO Case No. D2004-0792 and other cases referred to therein).
It is the Panel’s opinion that the Complainant’s submission dated June 17, 2005, does not constitute an exceptional circumstance that would otherwise justify its admission into evidence. Accordingly, the Panel does not admit the proposed submission and has not regarded it in making this determination. The same would also apply to any submission that the Respondent may file in these proceedings.
5. Factual Background
The Complainant was established in 1946, and is currently Germany’s biggest newspaper publishing house. It has been a listed stock corporation since 1985, with a registered office in Berlin and publishing headquarters in Hamburg and Munich.
The Complainant’s international activities are based on eight affiliates as well as joint ventures. International activities in the newspaper and magazine business in Eastern Europe are centered on Poland, the Czech Republic, the Russian Federation and Hungary; in Western Europe, the focal points are France, Spain and Switzerland. In 2004, the foundations were laid for entry into the East Asian market with the opening of a representative office in China.
In 1989/1990, the Complainant established the first foreign companies in Hungary with the magazine publishing house Axel Springer-Budapest GmbH and the newspaper publishing company Axel Springer-Ungarn GmbH. Ever since, the Complainant was present on the Hungarian Market under its company name “Axel Springer”.
The trademark AXEL SPRINGER is protected worldwide in 38 countries; the related registrations enjoy protection as international trademark under the Madrid Agreement and the Madrid Protocol, with effect in Hungary as from September 1992, and July�2003 (Annex 5 to the Complaint).
In addition, the Complainant is the registrant of, among others, a number of domain names, such as , , , , , , or (Annex 6 to the Complaint).
The Respondent registered the domain name on January 19, 2005.
6. Parties’ Contentions
A. Complainant
The Complainant’s main arguments are the following.
(i) The domain name is identical to a trademark or service mark in which the Complainant has rights
The designation “axelspringer” in the relevant part of the domain name at issue is clearly identical to the Complainant’s company name and its registered trademark AXEL SPRINGER.
The registration of said domain name leads to the conclusion that it has been registered by a branch or subsidiary of the Complainant, thereby misleading and creating confusion among the relevant public.
(ii) The Respondent has no rights or legitimate interests in respect of the domain name
The Respondent does not have any trademark right in the designation AXEL SPRINGER. In addition, the Complainant has not licensed nor otherwise permitted the Respondent to use the trademark or to apply for, or use, any domain name incorporating the mark and/or Complainant’s company name.
The registration of the domain name apparently seeks to create the false and misleading impression that Respondent acts in accordance with Complainant.
Up to date, there is no evidence of the Respondent’s use 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.
The Respondent has never been commonly known by the name “axelspringer” or domain name .
The Respondent and the domain name at hand are in no way connected to newspapers, magazines or online media services offered by the Complainant; in particular, the Respondent is a company which offers “wireless internet solutions and webhosting”, i.e. technical support, but no content at all, thus not making a legitimate non-commercial or fair use of the domain name (Annex 7 to the Complaint).
Currently the domain name is directed to a website labeled “axel Extreme Sport Portal”; however, no further use is evident. According to the Complainant’s information, the Hungarian text currently to be found on the homepage explains that the page is under development and will be operational within one or two weeks. Moreover, there are short descriptions of a walking and a bicycle tour of April and July 2004, neither which dealing with “extreme sports”. Also, this text has already been on that page for several months since the registration of the domain name without any relevant changes (Annex 8 to the Complaint).
(iii) The domain name was registered and is being used in bad faith
It is inconceivable that the Respondent would not be aware of the fact that the company name and trademark AXEL SPRINGER is well-known all over the world, including Hungary, the Complainant being Hungary’s biggest publisher of newspapers and magazines, whilst also active on the internet via its ccTLD domain name .
Furthermore, the words AXEL SPRINGER do not have any meaning in the Hungarian or English language and they do not even exist in those languages, thereby supporting the fact that the Respondent was well aware of the Complainant, its activities and trademark.
Because of the wide-spread use and reputation of the trademark AXEL SPRINGER, Internet users in Hungary as well as in other countries would immediately believe that the disputed domain name was in some way associated with the Complainant.
These above-mentioned elements show, therefore, bad faith registration of the disputed domain name according to paragraphs 4(b)(ii),(iii) and (iv) of the Policy.
Any realistic use of the domain name at issue must misrepresent an association with the Complainant and its goodwill resulting in passing off, breaching of German unfair competition law, and in trademark infringement and, consequently, in bad faith registration and use according to paragraph 4(b)(ii) and (iii) of the Policy.
As a matter of fact, when the Respondent was contacted by a representative of the Complainant in March 2005, the former offered to the latter the domain name in dispute for sale at a price of USD16’800 (Annex 9 to the Complaint).
The amount of the requested purchase price alone indicates that the domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark for valuable consideration in clear excess of the Respondent’s out-of-pocket costs directly related to the domain name.
The Respondent registered the domain name solely because he was aware of the fact that the Complainant is a very well-known media company, not only active in Hungary but also on international level, and that he hoped to make some extra money either by attracting users to his website or selling the domain name at a high price to its rightful owner.
In view of the above, the Complainant asserts that there is clear evidence of registration and use of the domain names at issue in bad faith under paragraph 4(b)(i),(iii) and (iv) of the Policy.
B. Respondent
The Respondent’s submissions are as follows.
(i) Identity and confusingly similarity
The Respondent registered with the idea of creating a web portal that deals with extreme sports under this name as he has had this hobby interest – in particular climbing mountains – over the past four years.
This website did not contain any information that is in connection with the operation or services of the Complainant so that no trademark infringement has occurred to its detriment.
(ii) Rights and legitimate interests
The first syllable of the word ‘axelspringer’ comes from the name of an acknowledged Norwegian rock jumper, Thor Axel Kappfjell, the second part meaning ‘jumper’. Thor Axel Kappfjell died on July 7, 1999, during a jump; he was a very popular base-jumper and became a legend in extreme sports history (Annex 1 to the Response). People who are seriously interested in extreme sports will unambiguously associate the word ‘axelspringer’ to bridge-jumping.
In Hungary, Axel Springer Publishing neither operates a TV channel nor publishes newspaper under this name and is therefore not widely known by the masses under this name. Such trademark name is even unknown in the WIPO database (Annex 2 to the Response).
The Respondent further submits that he did conduct a search for the , or versions of the disputed domain name as his aim was to create a domain name which included the name of a great character in this sport, the action of this sport and that the fact that it is a non-profit organization domain name, hence using the suffix .
(iii) Registration and bad faith use
The website “www.” has never been used to generate profit. It never showed any banner or other types of advertisement. Being non-profit, this portal emerged from the others of the same type. Quite the opposite, this portal gave the opportunity for people to gather information on the lowest trip prices within Hungary or abroad, while taking part in the most exciting experience.
The offer to sell the domain name in dispute was not initiated by the Respondent but, instead, by the Complainant after which the former advised the latter of his wish to sell the domain name for one and half times the estimated price, with the hope that the Complainant would decline the offer and that the portal would resume its operation.
The Respondent further submits that he received thereafter several other offers to purchase the domain name in question which were all rejected; in particular, he advised the Complainant in April 2005 that was not for sale, and the Complainant acknowledged this refusal (Annexes 4 and 5 to the Response).
In addition, the Respondent alleges that he offers services that are not related to those of Axel Springer AG, and can thus not be considered as a competitor of the Complainant. As a matter of fact, the Respondent’s company provides Internet access to private clients in the smaller Budapest region and web hosting closely connects to this service.
Finally, the Respondent contends that the emails submitted by the Complainant are inadmissible because they cannot be treated as legal evidence. Should they, however, be considered so, they should be dismissed because their translation is inaccurate or submitted in an incomplete and altered manner.
7. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the Respondent’s domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to paragraph 4(a) of the Policy.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules.
Moreover, the Panel shall determine the admissibility, materiality and weight of evidence pursuant to paragraph 10(d) of the Rules.
A. Identical or Confusingly Similar
The Complainant has established its rights in the AXEL SPRINGER trademark with numerous registrations worldwide, including in Hungary (see Annex 5 to the Complaint).
Undoubtedly, there is confusingly similarity between the domain name and the trademark AXEL SPRINGER.
Contrary to the Respondent’s submission, it is irrelevant for the purpose of establishing the requirement set out in paragraph 4(a)(i) of the Policy that the website related to the domain name in dispute deals with operations or services that are different from those of the Complainant.
B. Rights or Legitimate Interests
Paragraph�4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent does not seem to dispute the Complainant’s allegations that he does not benefit from trademark rights in the designation AXEL SPRINGER and that he has not been licensed nor otherwise been permitted by the Complainant to use the said trademark, even to incorporate it in a domain name.
Moreover, the Respondent does not deny the fact that he has not been commonly known by the name “Axel Springer” or domain name . However, the Respondent contends that he is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue or at least that before notice of the dispute, and that he has been using the domain name or name corresponding to the domain name in connection with a bona fide offering of services pursuant to paragraph 4(c)(i) and (iii) of the Policy.
The Panel notes that the Respondent claims he started the related website dealings as early as January 2005, in order to promote the memory of someone who past away nearly six years ago. According to the Respondent, “Axel Springer” is a combination of the name “Axel” and a translation of the word “jumper” into German. The Panel notes that the information available on Respondent’s website is in Hungarian language, thus accessible to a limited number of persons (see Annex 8 to the Complaint). The Panel, based on the case file, finds it more likely than not that the explanation is made up.
The Panel fails therefore to see how a bona fide offer of services or legitimate non-commercial or fair use of a domain name can be made under those particular circumstances.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:
“(i) circumstances indicating that you have registered or you have 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 valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Respondent does not dispute the fact that, at some point in the discussion between the Parties to these proceedings, he did offer for sale the domain name to the Complainant for a substantial amount of money, exceeding by farther out-of-pocket expenses related to the acquisition of the domain name in question.
Such a behavior, coupled with the Respondent’s less than credible explanation of why he registered the disputed domain name (see above), suffices to create a finding of bad faith registration and use within the meaning of the Policy.
8. 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.
Christophe Imhoos
Sole Panelist
Dated: June 22, 2005
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