WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GmbH v. Salvia Corporation
Case No. D2007-1052
1. The Parties
The Complainant is GmbH of Frankfurt, Germany, represented by Weber & Sauberschwarz, Germany.
The Respondent is Salvia Corporation, of Riga, Latvia.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with DSTR Acquisition VII, LLC d/b/a D.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2007. On July 20, 2007, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a D a request for registrar verification in connection with the domain name at issue. On July 21, 2007, DSTR Acquisition VII, LLC d/b/a D transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2007.
The Center appointed Alfred Meijboom as the sole panelist in this matter on August 28, 2007. 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 August 28, 2007, the Complainant sent the Center a supplemental filing, a
screenshot of the website behind the domain of May 16, 2007 and an explanatory e-mail, with the request to forward this to the Panel.
4. Factual Background
The Complainant is a German mail order company. It holds the following trademarks:
- the Community word mark NECKERMANN (3308269), filed on August 12, 2003, registered since April 27, 2005;
- the international word mark NECKERMANN (677528) with validity in different countries, registered since June 20, 2006;
- the German device mark NECKERMANN (39751262.7), registered since May 12, 1998;
- the German word mark NECKERMANN.DE (30622396.1), filed on April 7, 2006 and registered since June 14, 2006.
The Complainant holds the domain names and .
The Domain Name was registered on April 2, 2005. The Domain Name has led to a so-called “click through” website with, inter alia, “Online Shopping” and “Shopping” links. Currently the Domain Name leads to an error page.
5. Parties’ Contentions
A. Complainant
The Complainant claims to be the third largest mail order company in Germany and the fifth largest in Europe. It claims that 93% of Germans are familiar with the Complainant’s trademark and company name: NECKERMANN. The Complainant contends that it runs business activities in 18 European countries and is especially expanding to Eastern Europe, including Latvia, where the Respondent is located. However, the Complainant has not supported these assertions with evidence.
According to an excerpt of the Commercial Register of the Frankfurt Civil Court provided by the Complainant, its company name was changed from “Neckermann Versand AG” to “ GmbH” on January 1, 2006.
Identical or Confusingly Similar
The Complainant contends that the Domain Name is identical or confusingly similar to its company name and the trademarks mentioned in paragraph 4 above.
Rights or Legitimate Interests
The Complainant asserts that the Respondent is not in any way associated with the Complainant, is not authorized to use the Complainant’s marks and is not commonly known by the name “neckermannde.” The Respondent has used the Domain Name to generate traffic to other internet shops by displaying links to other shopping domains on its website. According to the Complainant, this use is not a bona fide offering of goods nor legitimate non-commercial nor fair use.
Registered and Used in Bad Faith
Besides the fact that is the Complainant’s company name and that NECKERMANN and NECKERMANN.DE have been registered by the Complainant as trademarks, the Complainant asserts that the word “neckermann” has no special meaning.
The Complainant claims that, since in January 2006 it changed its name into GmbH and expanded its business to Eastern European countries like Latvia, the only possible conclusion is that the Respondent registered the Domain Name primarily because of its similarity to the Complainant’s well-known NECKERMANN trademarks. The Complainant further contends that the Respondent has exploited the high reputation of the Complainant’s trademarks NECKERMANN to generate traffic via the Domain Name to other shopping domains. According to the Complainant, this behavior constitutes bad faith registration as well as bad faith use by the Respondent.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the requested remedy can be granted if the Complainant asserts and proves each of the following:
A. that the Domain Name is identical or confusingly similar to a trademark or a service mark in which Complainant has rights; and
B. that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
C. that the Domain Name has been registered and is or was being used in bad faith.
Supplemental filing
The Rules do not explicitly provide for supplemental filings. Paragraph 10 of the Rules instructs the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence”. The Complainant’s supplemental filing is a screenshot of the website behind the Domain Name of May 16, 2007. The Complainant already described the use that is shown in this screenshot in its original Complaint. Furthermore, the supplemental filing has not caused a delay in the proceeding. For these reasons the Panel accepts the submission.
A. Identical or Confusingly Similar
The Complainant holds several NECKERMANN trademark registrations and the German trademark NECKERMANN.DE. The Panel finds that the Complainant has rights in the NECKERMANN trademarks and the NECKERMANN.DE trademark.
For the purpose of assessing whether the Domain Name is identical or confusingly similar to the NECKERMANN trademarks in which the Complainant has rights, the “.com” suffix is disregarded, it being a necessary component for registration of a domain name. The difference between the NECKERMANN trademarks and the Domain Name is the addition of “de”. Since “.de” is the German top level domain and the Complainant holds the domain name , the Panel is of the opinion that the addition of “de” does not reduce the likelihood of confusion. As a result the Panel considers the Domain Name identical to the Complainant’s NECKERMANN.DE trademark and confusingly similar to its NECKERMANN trademarks.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Name. According to the consensus view among panels, this condition is met if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to show one of the three circumstances mentioned in paragraph 4(c) of the Policy.
The Complainant contends that it has not authorized the Respondent to use its trademarks and the Respondent did not dispute the Complainant’s claim to that effect. Nor could the Panel establish any indications that the Respondent was previously known under the Domain Name or is using the Domain Name for bona fide offering of goods or services, or for non-commercial or fair use. For these reasons, the Panel finds that the Respondent has no rights or legitimate interest in the Domain Name.
C. Registered and Used in Bad Faith
The Complainant changed its company name to on January 1, 2006, and filed its German trademark application for NECKERMANN.DE on April 7, 2006. The Domain Name was registered on April 2, 2005. Consequently, the Panel cannot, in the absence of other factors, agree with the Complainant that the fact that the Domain Name is identical to its new company name and NECKERMANN.DE trademark of itself constitutes bad faith registration, simply because at the time of the registration of the Domain Name by the Respondent, the new company name was not yet in use and the trademark had not yet been applied for.
Furthermore, the Complainant asserts that the NECKERMANN trademark is well-known and has a reputation in Germany and Europe, including Latvia. However, the Complainant has not provided evidence of these assertions and therefore the Panel cannot take them into consideration.
Nevertheless, as the Complainant notes, the term “neckermann” is not used as part of the standard vocabulary, other than that it is the Complainant’s company name. The Domain Name is composed of the highly distinctive term “neckermann”, which is identical to the NECKERMANN trademarks of the Complainant, and “de” is a clear reference to the German top level domain “.de”. In accordance with ACCOR v. Tigertail Partners, WIPO Case No. D2002-0625, the Panel finds it reasonable to conclude, and does so conclude, that only someone who was familiar with the NECKERMANN trademarks could have registered the Domain Name. Therefore the Panel finds that the Domain Name was registered in bad faith.
The Complainant must also prove that the Respondent uses the Domain Name in bad faith.
In according with paragraph 4(b) of the Policy, an indication of use in bad faith is found where the Respondent is intentionally attempting to attract, for commercial gain, internet users to his website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on his website.
The Respondent has generated traffic to the website linked to the Domain Name by creating a likelihood of confusion with the NECKERMANN trademarks. The website previously hosted a so called “click-through” site displaying various links, which use is considered to be use for commercial gain. At the moment, the Domain Name leads to an error page, however this may be altered at the Respondent’s will at any time. Taking these circumstances into consideration, the Panel concludes that the Respondent’s use of the Domain Name sufficiently satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain Name is being used 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.
Alfred Meijboom
Sole Panelist
Dated: September 10, 2007
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