WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Warendorfer Küchen GmbH v. MDNH Inc. Case No. D2009-1067 1. The Parties
The Complainant is Warendorfer Küchen GmbH of Warendorf, Nordrhein-Westfalen, Germany, represented by Taylor Wessing, Germany.
The Respondent is MDNH Inc. of Las Vegas, Nevada, United States of America, represented by John Berryhill, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2009. On August 11, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On August 11, 2009, Moniker Online Services, LLC 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” 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced August 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response September 8, 2009. The Response was filed with the Center September 8, 2009. The Respondent requested that the proceeding be determined by a three member Panel.
The Center appointed David J.A. Cairns, Reinhard Schanda and W. Scott Blackmer as panelists in this matter on October 5, 2009. The Panel finds that it was properly constituted. Each member of 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 September 21, 2009 the Complainant sought leave to present supplemental submissions in order to answer various factual arguments and legal conclusions in the Respondent's response. On September 22, 2009, the Respondent requested a time for rebuttal in the event that the Complainant made a supplemental filing. 4. Factual Background
The Complainant is a German corporation in the business of the development, production and distribution of kitchen furniture. The Complainant is licensee of the trademark MIELE DIE KUCHE used for the production and marketing of its products, which are sold on a large scale in Germany and internationally.
The disputed domain name was first registered on October 15, 2001. The disputed domain name hosts a webpage of sponsored listings for goods or services. There is no allegation that these sponsored listings include any links to the Complainant or the Complainant's products.
On November 11, 2008, the Complainant through an agent sought to purchase the disputed domain name. The Parties were not able to agree on a price for the sale of the disputed domain name.
On June 15, 2009, the Complainant applied to register in Germany a trademark consisting of the word “Warendorf” together with a motif consisting of various triangles. The trademark was entered on the register on August 11, 2009 and the opposition period began. There are currently three other trademarks registered in Germany that include the word “Warendorf” in combination with design elements. 5. Parties' Contentions A. Complainant
The Complainant states that its company name is also used as a tradename. The Complainant also claims “Warendorfer” as a service mark.
The Complainant states that the disputed domain name is confusingly similar to the company name Warendorfer Küchen GmbH, and also to the Complainant's service mark “Warendorfer”. The Complainant refers to provisions of the German Trademark Act. It states that the name “Warendorfer” is protected according to section 4(2) Trademark Act ‘because the company name acquired prominence due to long years of extensive use as a service mark'. Further, pursuant to section 5(1) and (2) “Wardendorf” is protected as the public identify the Complainant by this slogan as the remaining elements of its name are the descriptive term “Küchen” (meaning ‘kitchen') and the acronym for the legal form of the company in German law. The Complainant also states that “Warendorfer” means something like “habitant of a village of goods” and with regard to kitchen furniture this name is neither descriptive nor is subject to any bar to protection under trademark law.
The Complainant states that the disputed domain name is visually and phonetically as well as to its connotation to a high degree similar to the protected firm slogan “Warendorfer” and the firm name “Warendorfer Küchen GmbH”. The divergent letters “er” at the end of the sign hardly carry weight when the name is pronounced and have no characteristic of say when it comes to the aggregate sound pattern. The identity of eight of ten letters also entails a visual similarity of a high degree.”
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name. It states that the Respondent does not own any trademark rights in “Warendorf” or “Warendorfer” and also does not offer goods or services under the disputed domain name. The Respondent maintains “typo” domains to generate advertising revenues, and tries to make a profit from selling the domains in its portfolio.
The Complainant also states that the Respondent has acted in bad faith within the meaning of the Policy. The Respondent holds a huge domain portfolio, and it can be assumed that the domain name was only registered to allure Internet users by typing errors to the disputed domain name to thus generate advertising revenue by sponsored links. The Complainant alleges that the Respondent's intent of making a profit from the disputed domain name is supported by the fact that it sought $100,000 for the sale of the disputed domain name.
The Complaint requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent states that this dispute concerns a geographical term, and in particular the name of a municipality in Germany, which the Respondent has been using as a domain name to provide travel related advertising, and which is not a distinctive mark in Germany.
The Respondent states the Complainant has not provided a single exhibit demonstrating any WARENDORF or WARENDORFER mark applied to goods or services in commerce. It states that that the Complainant's trade name translates as “kitchens of Warendorf”, with the suffix “er” on “Warendorf” indicating geographical origin. The Respondent refers to various domain name decisions relating to geographical indicators and trade names. The Respondent also states that the entries in the German trademark registry show that “Warendorf” is a non-exclusive and descriptive term used by many businesses which, like the Complainant, operate in or about the town of Warendorf, Germany. The Respondent notes that the Complainant has itself applied for a trademark registration for a mark which includes the word “Warendorf”. This fact was withheld from the Panel by the Complainant. Further, the Respondent's rights predate this registration by many years. For these reasons the Respondent states that the Complainant has not satisfied the first element of the Policy.
The Respondent states that the Complainant has not established the second element of the Policy. It submits that prior to notice of the dispute the Respondent was using the domain name to provide automated advertising links to goods and services relating to hotels in or near Warendorf or other geographically relevant results in accordance with the primary geographical significance of the term, which is neither exclusive nor distinctive of the Complainant.
The Respondent states that the disputed domain name has not been registered or used in bad faith. In particular, the Respondent states that the Complainant has not shown evidence of a legally enforceable right pre-dating acquisition of the domain name, and it is well established that when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the Complainant's non-existent right. Further bad faith cannot be inferred from the negotiations regarding the sale of the disputed domain name.
For these reasons the Respondent submitted that the Complaint should be denied. 6. Discussion and Findings
The Panel is required 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 appropriate.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the Respondent's domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
The Complainant has sought leave to present supplemental submissions in order to answer various factual arguments and legal conclusions in the Respondent's response. Pursuant to paragraph 12 of the Policy the Panel may request, in its sole discretion, further statements or documents from either of the Parties. The Panel considered the Complainant's request to make a supplemental submission and the reasons set forth by the Complainant in support of its request. The Panel denies that request, because it did not involve new material facts or new matters of law that were not already under consideration by the Panel. A. Identical or Confusingly Similar
The Complainant's corporate name is Warendorfer Küchen GmbH. The evidence submitted demonstrates that its sells kitchen products under the prominent trademark MIELE DIE KUCHE. The evidence does not establish that the Complainant's products are known or marketed under any trademark or tradename of “Warendorf” or “Warendorfer”. To the contrary, the evidence suggests that these are geographical and descriptive terms, used as part of the tradenames or trademarks of numerous businesses in a particular region of Germany. The only evidence of any use of the word “Warendorfer” by the Complainant is in its corporate name, and always in conjunction with “Küchen”. The evidence does not support the Complainant's allegation that it has a service mark “Warendorfer” without the additional word “Küchen”.
The Panel considers that the disputed domain name is not identical or confusingly similar to the Complainant's corporate name “Warendorfer Küchen” for the following reasons: (i) Warendorf is a geographical name, used by numerous businesses; (ii) “Warendorfer Küchen” is a descriptive term, meaning “kitchens of Warendorf”, and so has little inherent distinctiveness; (iii) the Complainant's tradename consists of two descriptive words in German and does not confer any rights to the two individual words or any derivative of the individual words (see Mondial Assistance S.A.S. v. Compana LLC,WIPO Case No. D2007-0965); (iv) the Complainant uses “Warendorfer Küchen” as a business name rather than in the active marketing of its products; (v) there is no evidence of actual confusion by Internet users between the Respondent's website and the Complainant's business (such evidence is not routinely required in a UDRP proceeding, but it is one way that a complainant might reinforce the conclusion that a domain name was, on its face, confusingly similar to a mark); (vi) there is no evidence that the sponsored links on the Respondent's website have ever generated any links to the Complainant or its products.
The Panel notes that it appears that the Complainant has recently made a trademark application for a word and design mark that includes the word “Warendorf”. The Complainant did not mention this trademark application in its Complaint, or make any submission that this application established trademark rights in the term “Warendorf” within the meaning of the Policy. The opposition period for this trademark application apparently expired on September 11, 2009, but the Panel has not been informed of the current status of the application. The Complainant does not expressly rely on this figurative mark in the current proceeding.
The Respondent submitted that the disputed domain name was registered many years prior to the Complainant's trademark application and that this was a bar to the Complaint under the first element of the Policy, on the principle that the Panel must find trademark rights that pre-date the registration of the disputed domain name (referring to Phoenix Mortgage Corporation v. Tom Toggas, WIPO Case No. D2001-0101 where it is stated that “Paragraph 4(a)(i) of the Policy requires a showing that the domain name is identical or confusingly similar to a mark in which the Complainant has rights. Although not specifically stated, this provision necessarily implies that the Complainant's rights predate the Respondent's registration and use of the Domain Name. Any other interpretation would allow a junior trademark user to challenge a prior domain name registration, a possibility that is obviously contrary to the intent of the Policy and to trademark law generally”). It might be argued that the prior registration of the disputed domain name goes to the question of rights or legitimate interests, or to bad faith, rather than the first element of the Policy (see 1.4 WIPO Overview of WIPO Panel views on selected UDRP questions). It any event, the Panel does not need to decide this issue, as the Complainant did not mention any trademark application or suggest that any rights within the meaning of paragraph 4(i)(a) of the Policy might arise from the mere fact of making an application.
For these reasons, the Panel finds that the Complainant has failed to prove the first element of the Policy, and the Complaint is accordingly dismissed. B. Rights or Legitimate Interests
The Panel is not required to address this element of the Policy in light of its findings on the first element. C. Registered and Used in Bad Faith
The Panel is not required to address this element of the Policy in light of its findings on the first element. 7. Decision
For all the foregoing reasons, the Complaint is denied.
David J.A. Cairns
Presiding Panelist
Reinhard Schanda
Panelist
W. Scott Blackmer
Panelist
Dated: October 16, 2009
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