WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Wort & Bild Verlag Konradshöhe GmbH & Co. KG v. Andreas Bergmann Case No. D2009-1442 1. The Parties
The Complainant is Wort & Bild Verlag Konradshöhe GmbH & Co. KG of Baierbrunn, Germany, represented by Harald Pohl, Germany.
The Respondent is Andreas Bergmann from Simbach, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with PSI-USA, Inc. dba Domain Robot. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2009. On October 26, 2009, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot a request for registrar verification in connection with the disputed domain name. On October 28, 2009, PSI-USA, Inc. dba Domain Robot 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 on November 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 25, 2009.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on December 2, 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
As Respondent failed to respond to the Complaint, the following facts asserted by Complainant are undisputed.
Complainant “Wort & Bild Verlag Konradshöhe GmbH & Co KG” is a publishing company with limited liability, which focuses its range of products on print and online media on health and medical issues. Part of these is the magazine “Apotheken Umschau” (transl. pharmacy review) published to be sold to pharmacies where they are provided for customers for free by the pharmacists. This publication goes back to 1956, when the first of these health advisory magazines were published by the Complainant's predecessor company. The predecessor of the Complainant, the “Verlag Wort & Bild Rolf Becker” has registered the national German trademark no. 993964 “Apotheken Umschau” (word/device) on November 27, 1979 for goods in class 16 (paper, printed matter, etc.) in the official register of the German Patent and Trademark Office. As legal successor of the registrant of this trademark, the Complainant is the proprietor of this trademark.
The sign “apo-umschau” is not registered as a trademark by the Complainant.
The aforementioned magazine “Apotheken Umschau” has gained a very high grade of acceptance and recognition among the German consumers over the past sixty years. A circulation of 9.6 million copies reaches the pharmacies' clients, and the rate of familiarity exceeded 91% of the over 14 year old population according to a survey in 2009.
Apart from the print media, the Complainant reaches interested readers also online by providing access to the website under the domain name . This domain name has been registered and is being used by the Complainant along with the domain name since February 28, 2008. Likewise, Complainant has registered and has been using the domain name since that time. Both of the latter serve to guide the user automatically to the website under the domain name .
The Respondent Andreas Bergmann is a natural person living in Simbach. He registered the disputed domain name on October 12, 2009 with the PSI-USA registrar and uses it to send e-mails to German e-mail-addresses. These e-mails contain a suggestion/offer to buy drugs and nutritional supplements to enhance virility on a website under the domain name . This website did not yet provide any content until the day the Complaint was filed.
The registrar's registration and services agreement incorporated the UDRP pursuant to paragraph 6.1 of the registration and services agreement. 5. Parties' Contentions A. Complainant
The Complainant first argues that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights pursuant to paragraph 4(a)(i) of the Policy and paragraphs 3(b)(viii), (b)(ix)(1) of the Rules.
Alongside with the German registered trademark “Apotheken Umschau” (word/device) for, amongst others, print media, Complainant claims ownership of a so-called title-right in the sign “Apotheken-Umschau” as it is used in the registered domain names and of the Complainant based on fact that the familiarity of the consumer with the magazine's name appears to be extremely widely spread (supported by several statistic findings, in particular the survey of 2009). Therefore, Complainant claims protection of the word “Apotheken Umschau” as the title of an (also protected) work of creative production pursuant to article 5 paragraph 3 German Trademark Act. The Complainant refers to decision Henssgen Karabinerhaken GmbH v. Hovin,WIPO Case No. D2001-1462 in this respect.
The Complainant claims that the existence of protection of the sign in any country other than Germany is not necessary according to Bennett Coleman & Co. Ltd. v. Steven S. Lalwani,WIPO Case No. D2000-0014, as both the Complainant and the Respondent are residing in Germany and the Respondent targets users only in Germany.
Claiming such protection of the sign “Apotheken Umschau” as word/device and word only, the Complainant underlines that the disputed domain name of the Respondent is partly identical, as far as the word “umschau” is concerned, and as far as one examines the other part of the domain name he finds confusing similarity between the words “Apotheken” and “apo”. Complainant supports this similarity by stressing the extreme familiarity of “apo” as an abbreviation of “Apotheke” to the German speaking population. Apart from the fact that “apo” is extremely commonly used in sectors of medical and health care, also the broad population is using this abbreviation in the very same sense as the spelled-out word “Apotheke”, according to the Complainant. The Complainant supports his findings by adding numerous and rather randomly selected results from different websites found by using a search engine. Either in articles published or in discussion threads filed by readers one can verify the common use of “apo” as an abbreviation for the German word for “pharmacy”.
The Complainant further states the lack of rights or legitimate interests of the Respondent using the disputed domain name (paragraphs 4(a)(ii) of the Policy; paragraphs 3(b)(ix)(2) of the Rules), which is neither common name of the Respondent nor its business, considering especially that the e-mails sent out from the disputed domain name include a reference to the – spelled out – “Apotheken-Umschau”, nor registered based on a legitimate non-commercial or fair use, as it is mainly used to send spam-e-mails in order to either guide the recipients to another website “www.”, or – as Complainant assumes – to eventually sell the disputed domain name to the Complainant.
Finally, the registration and use in bad faith (paragraphs 4(a)(iii), 4(b) of the Policy, paragraphs 3(b)(ix)(3) of the Rules) is claimed by referring to the content of the e-mails sent by the Respondent, which include a direct reference to the Complainant's protected trademark and title “Apotheken Umschau” and lead the recipients to a not (yet) existing website offering drugs and virility pills. Complainant underlines it to be an evident interest of the Respondent to appear to be affiliated with the well reputed magazine “Apotheken-Umschau”. Also, the Complainant is afraid that such association may inflict a severe image damage by its trademark being put into context with “inappropriate products”. Furthermore, Complainant assumes the Respondent's intention of selling the disputed domain name, which justifies the presumption of a registration and use in bad faith pursuant paragraph 4(a)(iii)(b)(i). B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Above all it will have to be observed whether the claimed right in a trademark or service mark can be adjudicated to the Complainant and whether there is a confusing similarity (paragraph 4(a)(i) of the Policy) with the disputed domain name.
If the Respondent cannot put forward any right or legitimate interests in the use of the disputed domain name (paragraph 4(c) of the Policy) and the Panel finds the disputed domain name being registered and used in bad faith (paragraph 4(b) of the Policy), the Panel will decide to have the disputed domain name cancelled or transferred to the Complainant. A. Identical or Confusingly Similar
Complainant must prove that he has rights in a trademark, and that the disputed domain name is identical or confusingly similar to it.
In finding whether a trademark exists, national law can be reverted to, especially if both Complainant and Respondent – as in the discussed case – are subjects to the same national law system.
The Complainant is owner of a registered German trademark (word/device) containing the word combination “apotheken-umschau”. However, as the word combination “apotheken-umschau” (i.e. “pharmacy review”) is a rather descriptive, generic term for the goods in question, the trademark of the Complaint has derived protection only from its registration in the form of the concrete word/device mark with the designed “A”. These elements are absent in the disputed domain name so that it is questionable whether confusing similarity can be accorded only based on the similarity of the word combination “Apotheken Umschau” with .
Thus, it has to be discussed whether the Complainant can refer to a so-called “title right”, as it is foreseen in article 5 paragraph 3 of the German Trademark Act. This allows a protection of the title that a piece of work – especially those of print media – is known by and requires an overall distinctiveness of the title compared to others. It has to be clarified that the requirements for the award of a title right are less strict of distinctiveness of a sign in order to be granted a protection as a registered trademark. Therefore, the threshold for title protection is lesser than for the trademark protection. Complainant argues a protection of the combination “Apotheken-Umschau”despite the fact that the individual words of which the combination is made are generally descriptive being the term “Apotheke” (i.e. pharmacy) and also term “Umschau” (i.e. a rather old-fashioned, seldomly used, but still common word for “review”). Still, the combination of these words can be distinctive in a sense as aforementioned when the combination of the two is either uncommon and therefore special, or when the exact combination of “Apotheke” and “Umschau” enjoys such a high reputation and familiarity to the circle of communicators that the consumer understands this to be a distinction as to the origin of the goods. As it was proven by the representative statistical surveys provided to the Panel by the Complainant (Annexes 5-7) it can be assumed in this case that the combination “Apotheken-Umschau” is a distinguishable work title to clearly identify the well known magazine that is provided by the German pharmacists to their clients.
Additionally, trademark protection through recognition in the market can be adjudicated following Art. 4 paragraph 2 German Trademark Act. Although not being registered, an extraordinary recognition of a specific sign in the public can lead to acknowledge its trademark function. Based on national German law, the protection is granted even without the registration of the protected mark “…through the use of a sign in the course of trade insofar as the sign has acquired a secondary meaning as a trademark within the affected trade circles” (Art. 4 paragraph 2 German Trademark Act). This is supported by the findings in the national jurisdiction, which the Panel deems relevant here (BGH GRUR 1993, 488 – Verschenktexte II) as well as in Research in Motion Ltd. v. Fred Potter/Berrystore/Mill River Labs,WIPO Case No. D2009-0370 ().
Finally, the actual use of the domain name by the Complainant could effectuate a protected right in a business name for this particular term according to Art. 5 paragraph 2 German Trademark Act. Based on the German decisions by the OLG Munich (CR 1999, 778 – t-net) and the BGH (GRUR 2005, 262 – ) a title right is granted when a domain name is actually used by the person claiming the protection and is sufficiently distinctive.
The function of a domain to automatically guide the user to another domain name, as it is done by the Complainant with is a use in the sense of these national decisions. Although the Complainant does not expressly argue this fact, the Panel can draw this conclusion from the facts the Complainant provided in annex 5-7 and annex 9 of the Complaint (provided in order to show the similar reception of the sign “apo-umschau” and the very well known sign “apotheken-umschau”). The randomly found results using a metasearch tool show a reception of the sign “apo-umschau” being almost identical to the sign “apotheken-umschau”. This is sufficient to prove the use of “apo-umschau”. Even though “apo” is used as an abbreviation for “Apotheke”, this acronym can also mean “Außerparlamentarische Opposition” which is a historic German social movement. For this reason, the term “apo-umschau” is ambiguous and thus sufficiently distinctive. Therefore can be adjudicated a right in a business name a title right on the equivalent domain name because of the use by the Complainant.
The fact that neither the registration, nor the use of has been stated in the Complaint, but instead been found by the Panelist's own findings cannot prevent the Panel from bringing it into consideration while elaborating its decision. Although the Panel typically decides a complaint on the basis of the statements and documents submitted (pursuant to Paragraph 15(a) of the Rules) a research on the internet providing facts to everyone as a “common source” is not to be valued as such a prohibited inquisition, see Knirps GmbH v. Kay Tomforde,WIPO Case No. D2001-0008. In that decision it is noted that a “ …common principle of civil procedure law that judges may use evident facts as evidence and can therefore refer to publicly available sources for their decisions (see for instance § 291 of the German Civil Procedure Law).”
The additional consideration of the actual use of the domain name as a business designator right by the Complainant is therefore not prohibited to the Panel.
On the basis of the aforementioned national German protection of the word/device trademark “Apotheken Umschau”, the word “Apotheken-Umschau” as a title of a protected work according to Art. 5 paragraph 3 German Trademark Act, as a trademark through recognition in the market according to Art. 4 Paragraph 2 German Trademark Act and of the sign “” as a business designator of a used domain name under Art. 5 paragraph 2 German Trademark Act, the Complainant holds a right in a trademark according to paragraph 4(a)(i) of the Policy.
The Complainant has to prove that the disputed domain name is confusingly similar to the protected trademark.
As far as the right in the business designator by the use of the identical domain name is concerned, the identity is obvious as the domain names only differ in their top level domains “.de” and “.com”. Even if the Panel had not acknowledged the title right in the business designator through the use of the domain name , the Complainant argues that still the disputed domain name is confusingly similar to the sign “Apotheken Umschau” being also protected by a title right under Art. 5 paragraph 2 German Trademark Act as a trademark through recognition in the market under Art. 4 paragraph 2 German Trademark Act. In this matter the Complainant provided numerous examples out of the “internet daily use” in which one can find the almost synonymous use of “Apotheken-Umschau” and “apo-umschau” by the readers of the printed magazine, users of Internet chats and journalists dealing with health topics.
The Case Media West-PNI, Inc. v. Phoenix Newspapers, Inc.,WIPO Case No. D2004-0974 () renders assistance in finding that the use of a very common abbreviation of a word figure in a TLD name can cause a confusing similarity, naming further examples such as “ms-office” and “Microsoft-office” in Microsoft Corporation v. Montrose Corporation,WIPO Case No. D2000-1568; “wallstjournal” and “wallstreetjournal” in Dow Jones & Company, Inc. v. Dow Jones LP,WIPO Case No. D2001-0381.
Furthermore, the Panel finds that the use of abbreviations is more common to the electronic communication providing information on a website than to the print media. Therefore it is more likely for a reader of the magazine to be mislead reading the shorter form “apo” in combination with “umschau” in a domain name. This is at last supported by the fact that the Complainant already registered the domain name , obviously in awareness of the similarity of the abbreviation to the popular trademark in the relevant country, namely Germany.
The Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent did not put forward any arguments supporting a right or legitimate interest in registering and using the disputed domain name, which was first of all not agreed on by the Complainant, especially considering the fact that the Complainant also registered as a domain name with a “.de” Top Level Domain.
No bona fide use of the disputed domain name (paragraph 4(c)(i) of the Policy) by offering goods or services before the notice of the dispute on November 3, 2009 can be acknowledged as the website available under the disputed domain name did not provide any content until that time and was only used to send emails, in which the Respondent referred to the Complainant's registered trademark “Apotheken Umschau”. The offering of drugs via the linked page “www.” is not providing any content until that time either in order to support a retail or other legitimate trade activity.
Furthermore, no similarity can be found to the Respondent's name. Neither is there a business or company run by the Respondent under the name “apo-umschau” or even only “apo”. Thus, a right or legitimate interest pursuant to paragraph 4(c)(ii) of the Policy cannot be granted.
Finally, the Respondent is using the disputed domain name to either sell and advertise drugs (even if not yet) or with the possible intent to sell the disputed domain name to the Complainant in the future at a value that exceeds the registration costs or only in order to lead the user to his own website considering the emails the Respondent sent, which are aiming at the advertisement and sale of goods. Thus, as far as there is a use of the disputed domain name it is commercial and not fair use in the sense of paragraph 4(c)(iii) of the Policy.
The Respondent's use of the disputed domain name is not protected by any rights or legitimate interests. C. Registered and Used in Bad Faith
The well-known and widely familiar title of the magazine “Apotheken Umschau”, which was verbally used in the emails sent to German addresses from the disputed domain name indicates strongly that the Respondent is aware of the effect that the reader assumes a connection or affiliation to the Complainant. This was even consolidated by the context of the email saying: “Ihre Apotheken Umschau empfiehlt: Potenzmittel…” (i.e. “your Apotheken Umschau suggests: virility supplements…”). As the magazine by the Complainant provides general advisory and helpful articles to the pharmacies' clients on health issues the suggesting offer in the e-mail sent by the Respondent seems at first glance to fit into the scheme of the magazine.
Considering the broad recognition of the “Apotheken Umschau” it is obvious that the Respondent was not only aware of this, but rather aims at irritating the recipients of his e-mails who trust in the good reputation of the Complainant's product, guiding them to his website. By choosing a “known” name rather than typical spam synonyms he manages to hide the character of his emails as simple “spam” not only towards the recipients but also succeeds in passing the spam-filter. This is an interest of every “spam” mailer and consolidates the assumption that the Respondent registered and used the title of the magazine not by coincidence but on purpose to attract internet users by creating a likelihood of confusion with the Complainant's mark, and therefore in bad faith, paragraph 4(b)(iv) of the Policy.
Even if the abovementioned misleading of the recipients of his email was not influenced by aims of commercial matter another possible reason to uphold the use of the disputed domain is to eventually sell the domain name to the Complainant at value exceeding costs. The actions by the Respondent support this as he sets up reasons for the Complainant to put effort into avoiding the further use of the disputed domain name by the Respondent as it creates a damage to the Complainant's reputation. These actions, i.e. the sending of the emails have been started by the Respondent on October 14, 2009, only two days after registering the disputed domain name and indicate thus a registration as well as a use in bad faith, paragraph 4(b)(i) 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.
Andrea Jaeger-Lenz
Sole Panelist
Dated: December 18, 2009
Full & Egal Universal Law Academy