WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Leicht Küchen AG v. Twisted Logic Case No. D2009-1332 1. The Parties
Complainant is Leicht Küchen AG of Waldstetten, Germany, represented by Weber & Sauberschwarz, Germany.
Respondent is Twisted Logic of Tunbridge Wells, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Register.IT SPA. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2009. On October 8, 2009, the Center transmitted by email to Register.IT SPA a request for registrar verification in connection with the disputed domain name. On October 9, 2009, Register.IT SPA 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 October 19, 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 October 22, 2009. 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 on October 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2009. The Response was filed with the Center on November 17, 2009.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on December 1, 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 the Rules, paragraph 7. 4. Factual Background
Complainant is the proprietor of following trademarks (“the Trademarks”): (i) the German word mark LEICHT, registered on September 5, 1994; (ii) the German figurative trade mark containing the words LEICHT KÜCHEN AG, registered on May 27, 1994; (iii) the Community word mark LEICHT, registered on April 25, 2000.
Furthermore, Complainant uses the trade name LEICHT KÜCHEN AG and holds the domain names and .
Complainant manufactures fitted kitchens. Its main market is located in Germany, from where it has expanded his business abroad, particularly to the United Kingdom.
Respondent registered the disputed domain name (“the Domain Name”) on October 24, 2008. 5. Parties' Contentions A. Complainant
Complainant contends that the Domain Name is identical or confusingly similar to the Trademarks.
Complainant also argues that Respondent has no right or legitimate interest in respect of the Domain Name, because Respondent is in no way associated with Complainant. Respondent does not offer kitchen units nor any related products, let alone LEICHT kitchens, nor is it commonly known by the name LEICHT. In addition, Complainant states that Respondent uses the Domain Name to publish a statement accusing Complainant of breach of contract. According to Complainant, there is no question of a legitimate noncommercial use.
Complainant contends that the Domain Name was registered and is being used in bad faith, because Complainant's Community trademark, which is in effect in the United Kingdom, was registered several years before the Domain Name was registered. In addition, Complainant states that Respondent uses the Domain Name to prevent Complainant from using it and to enforce his false claims on Complainant. B. Respondent
Respondent denies that the domain name is identical or confusingly similar to Complainant's Trademarks.
Respondent contends that its right or legitimate interest in respect of the Domain Name results from a verbal contract with an authorized representative of Complainant's regarding the designing, building, implementing and maintaining of an internet marketing application strategy that would generate leads and increase sales for Complainant. The purpose of the Domain Name was to ‘pull in leads from a worldwide audience interested in Complainant'. Respondent also takes the position that its ownership of a kitchen manufactured by Complainant entitles it to the ownership of the Domain Name. Finally, Respondent contends to have a legitimate interest in , because it was he who developed the concept of the Domain Name as a lead generating tool and Internet marketing strategy which ‘remains his intellectual property until it has been paid for by interested parties'.
Respondent denies registration and use of the Domain Name in bad faith by pointing out that it registered the Domain Name with consent of a third party trading in Complainant's goods. According to Respondent, during the period the Internet site linked to was active (January 2009 to July 2009), all generated leads came to the benefit of Complainant. Respondent removed the Internet site content after a request from Complainant. 6. Discussion and Findings Preliminary Procedural Matter
When registering the Domain Name, Respondent became party to a registration agreement in which the Uniform Domain Name Dispute Resolution Policy was incorporated. As a consequence, Respondent agreed to the resolution of disputes brought by third parties in respect of the disputed domain name to be brought under the UDRP.
For these reasons the correct dispute is properly brought under the UDRP. A. Identical or Confusingly Similar
The domain name is composed of the element “leicht” which is identical to the trade mark LEICHT, and of the element “kitchens”, which is the English translation of the German word Küchen. The word Küchen appears as an element in the figurative trade mark LEICHT KÜCHEN AG. Although there is no phonetic similarity between “kitchens” and Küchen, there can still be a semantic similarity between the trade mark and the domain name if the domain name contains a translation of (elements of) the trademark and if an appreciable part of the public understands the (identical) meaning of the translation (see Water Pik, Inc. v. OMNISOURCE D.D.S., L.L.C., c/o William Weissman,WIPO Case No. D2008-1657, Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry – Succession Saint Exupéry – D'Agay v. Perlegos Properties,WIPO Case No. D2005-1085).
The element “kitchens” of the Domain Name being in English and the internet site linked to the Domain Name aiming to attract an international public, the Panel concludes that a considerable part of the public may understand the meaning of the translation.
For these reasons the Panel finds that the Domain Name is identical or confusingly similar to Complainant's Trademarks. B. Rights or Legitimate Interests
The Panel finds that Complainant has provided prima facie evidence that Respondent has not been able to sufficiently and convincingly demonstrate that it has a right or legitimate interest in the Domain Name.
Respondent was not using the Domain Name in connection with a bona fide offering of goods or services before it got any notice of the dispute, since Respondent developed the Internet site linked to the Domain Name as a “lead generating tool” for LEICHT kitchens, but without consent from Complainant. Respondent alleges that he received consent afterwards from a UK distributor of Complainant's products, but even if that were supported by evidence that this is equal to an authorization from Complainant, (which it is not), that consent apparently has been withdrawn as the Respondent indicates to be in dispute with the distributor over unpaid fees.
Furthermore, there is no evidence that Respondent as an individual or as a business has been commonly known by the Domain Name or that he is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. Respondent registered the Domain Name to generate business for Complainant's products. C. Registered and Used in Bad Faith
As a rule, a trademark proprietor does not have to accept that a third party registers and uses his domain name without his consent, even if this use is to his benefit. In this case, the Domain Name was apparently registered by Respondent in the hope of developing a business with or for (dealers of) Complainant. This plan has fallen through and Respondent has, at least for some time, used the website under the Domain Name to accuse Complainant of breach of contract. Respondent's refusal to transfer the Domain Name implies that Complainant is prevented from using it.
Under these circumstances, the Panel concludes that the Domain Name was registered and 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.
Wolter Wefers Bettink
Sole Panelist
Dated: December 15, 2009
Full & Egal Universal Law Academy