WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Freistaat Bayern v. Jim van Dijk Case No. D2009-0723 1. The Parties
The Complainant is Freistaat Bayern of München, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
The Respondent is Jim van Dijk of Admannshagen-Bargeshagen, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2009. On June 3, 2009, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On June 8, 2009, Wild West Domains, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 10, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 12, 2009. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 June 15, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was July 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 6, 2009.
In a communication dated June 10, 2009, the Respondent had asked the Center to provide him with the correspondence on the change in registrant information in German language.
The Center appointed Brigitte Joppich as the sole panelist in this matter on July 10, 2009. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is the Free State of Bavaria, a public body which is the owner the famous royal castle Neuschwanstein, visited by approximately 1.2 million visitors from all over the world every year. The maintenance, administration and advertising of the building are operated by the Palace Department, which is one of the most traditional administrative departments of the Free State of Bavaria and today the largest public authority responsible for museums in Germany, managing 45 palaces, castles and residences with a taxable turnover of more than EUR 10 million p.a.
The Complainant owns trademark registrations for NEUSCHWANSTEIN in numerous countries, including the following:
Trademark
Country
Registration No.
Priority
Intl. Classes
NEUSCHWANSTEIN
DE
DPMA
39904763.8
28.01.1999
09; 14; 16; 24; 28; 39; 41
DE
DPMA
39953792.9
02.09.1999
09; 16; 41
DE
DPMA
30303175.1
22.01.2003
03; 08; 14; 18; 20; 21; 25; 28; 34
Neuschwanstein
DE
DPMA
30544198.1
28.07.2005
04; 05; 15; 24; 25; 26; 27; 29; 30; 32; 33; 34; 36; 38; 39; 43; 44
EU
CTM
003267945
11.07.2003
3; 8; 9; 14; 16; 18; 20; 21; 25; 28; 34; 41
US
US 78310979
08.10.2003
03; 08; 14; 18; 20; 21; 25; 28; 34
(the “NEUSCHWANSTEIN Marks”).
The disputed domain name was registered on November 4, 2008 by the Respondent. The legal representatives of the Complainant sent a cease and desist letter dated January 15, 2009 to the Respondent who replied on February 9, 2009 by email, acknowledging receipt of the cease and desist letter by fax on that same day. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the Complainant's NEUSCHWANSTEIN Marks as the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used and other factors usually considered in trademark infringement cases. The similarity between the Complainant's NEUSCHWANSTEIN Marks and the disputed domain name is eliminated neither by the addition of the descriptive term “schloss” (the German word for “castle”) nor by the fact that the trademark includes additional graphical elements. Finally, the fact that the top level domain name “.net” is following the Complainant's trademark in the disputed domain name does not affect the domain name for the purpose of determining whether it is identical with a trademark.
(2) The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant's rights in the NEUSCHWANSTEIN Marks precede the Respondent's registration of the disputed domain name by many years. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to apply for or use any domain name incorporating the NEUSCHWANSTEIN Marks. Moreover, there is no evidence of the Respondent's use 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 uses the domain name for commercial purposes, i.e. to divert Internet users to a parking website which contains various ad links to websites of third parties having no relation to the Complainant's Neuschwanstein castle, and thus tries to capitalize on the Complainant's famous name and NEUSCHWANSTEIN Marks by earning click-through-revenues from the misled traffic. Furthermore, there is no evidence suggesting that the Respondent trades under the domain name or the name “neuschwanstein”, or is commonly known by the disputed domain name or the name “neuschwanstein”.
(3) Finally, the Complainant contends that Respondent has registered and used the domain name in bad faith. The Complainant's highly distinctive NEUSCHWANSTEIN Marks (an invented word given to the castle in 1886) are famous all over the world, and it is inconceivable that the Respondent, who is located in Germany, registered the disputed domain name without knowledge of the Complainant's right in the name and NEUSCHWANSTEIN Marks. Moreover, the disputed domain name has been used in connection with a parking website offering sponsored links to third parties' websites which have no relation to the Complainant's Neuschwanstein castle and Complainant's NEUSCHWANSTEIN Marks, and the Respondent is thereby using the disputed domain name to earn click-through revenues and thus capitalizing on the value of the Complainant's famous name and trademark. The Respondent also offered to sell the disputed domain name on several websites which indicates that the disputed domain name has primarily been registered with the intention of selling it to the Complainant or one of its competitors in return for a payment that exceeds the costs directly related to the domain name. Finally, the Respondent's bad faith is evidenced by his attempt to hide his true identity as he transferred the disputed domain name to another registrar and set up a privacy shield for the domain name on the very day he responded to the Complainant's cease and desist letter. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In his communication dated June 10, 2009, the Respondent asked to receive an earlier communication by the Center in German. However, according to the verification response by the registrar, the language of the registration agreement is English. Therefore, in accordance with paragraph 11 of the Rules and absent any specific reason to deviate from such rule, this case shall be conducted in English.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the 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 domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name fully includes the NEUSCHWANSTEIN Marks, together with the prefix “schloss”, the German word for “castle”. The addition of the generic word for “castle” does not eliminate the similarity between the Complainant's marks and the domain name as these words only describe the Complainant's property. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc.,WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242).
Furthermore, it is well established that the specific top level domain name generally is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's NEUSCHWANSTEIN Marks and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, 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 non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among panelists that a complainant has to make only a prima facie case to fulfil the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has asserted that the Respondent neither uses the domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, nor is known by the disputed domain name, that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name, and that the Respondent therefore cannot have any legitimate interests in the domain name. The Complainant has therefore fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed ever since Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (cf. also Telstra Corporation Limited v. Adult Web Development and Telstraexposed,WIPO Case No. D2002-0952; Telstra Corporation Ltd v. David Whittle,WIPO Case No. D2001-0434; Prada S.A. v. Mr. Chuan Sheng Wang,WIPO Case No. D2003-0758).
The name Neuschwanstein has previously been found to be famous throughout the world and to be undoubtedly connected with the Complainant and its castle (cf. Freistaat Bayern v. Michael Kutzer,WIPO Case No. D2005-0839). It is hardly conceivable that the Respondent, located in Germany, registered the disputed domain name consisting of the famous name of a German castle (a name invented more than a century ago) and the German word for “castle” without knowledge of the Complainant's rights in the NEUSCHWANSTEIN Marks. The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant's marks and thus in bad faith.
Evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another's well-known trade mark by attracting Internet users to a website for commercial gain (cf. America Online, Inc. v. Tencent Communications Corp., NAF Case No. FA 93668; Lilly ICOS LLC v. John Hopking / Neo net Ltd.,WIPO Case No. D2005-0694; Lilly ICOS LLC v. East Coast Webs, Sean Lowery,WIPO Case No. D2004-1101). The Respondent has been using the disputed domain name for a parking website offering sponsored links to third parties' websites in order to earn click-through revenues and to capitalize on the value of Complainant's famous name and its NEUSCHWANSTEIN Marks and thus in bad faith. The Respondent's bad faith is further evidenced by his attempt to hide his true identity when he transferred the disputed domain name to another registrar and set up a privacy shield for such domain name shortly after receipt of the Complainant's cease and desist letter. Even if the use of privacy services in general is not to be objected, the use to conceal a respondent's identity after first notice of a dispute is in the view of the Panel primarily done in order to hinder legal proceedings and thus constitutes an act in bad faith. As a result, the Panel finds that the Respondent has also used the domain name in bad faith.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraphs 4(a)(iii) and 4(b) of the Policy. 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.
Brigitte Joppich
Sole Panelist
Dated: July 21, 2009
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