WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Park Hotel Leipzig Theo Gerlach OHG v. Niki Chelu Case No. D2009-1559 1. The Parties
The Complainant is Park Hotel Leipzig Theo Gerlach OHG of Hannover, Germany, represented by Gregor Gerlach, Germany.
The Respondent is Niki Chelu of Toronto, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2009. On November 23, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On that same day, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 26, 2009. The Center verified that the Complaint together with the amendment to 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 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2009. The Response was filed with the Center on December 16, 2009.
The Center appointed James Bridgeman as the sole panelist in this matter on December 23, 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
The disputed domain name was registered on December 6, 2004.
The Complainant is the owner of the German Trademark registration number 30 2009 004 191 MEATERY which was registered on March 30, 2009 pursuant to an application filed on January 26, 2009.
The Complainant is also the owner of the ccTLD domain name registration which was registered by the Complainant on December 10, 2008.
The Complainant is the owner of the Seaside hotel chain and has recently commenced use of the trademark MEATERY as the name of a new steak restaurant in the Side Hotel in Hamburg, a hotel within the Complainant's hotel chain. The Complainant has not stated the precise date on which this use commenced. 5. Parties' Contentions A. Complainant
The Complainant requests that this Panel issue a decision that the disputed domain name be transferred to the Complainant.
The Complainant submits that the disputed domain name is identical to the Complainant's MEATERY trademark.
The Complainant submits that it created the trademark MEATERY from the combination of the words “meat” and “eat” as the name of a new steak restaurant in one of the Complainant's several hotels within the Seaside Hotel chain, specifically the Side Hotel in Hamburg, Germany. The Complainant further states that it plans to extend the steak restaurant concept to other hotels within the chain.
The Complainant states that it is an international operation and therefore its clients have to use the “.com” domain. The Complainant further states that it wishes to use the disputed domain name in parallel with its domain name so as to avoid confusing its guests.
The Complainant submits that because the disputed domain name is identical with the Complainant's MEATERY trademark it is likely to confuse the Complainant's international guests.
The Complainant refers to the fact that the disputed domain name name is being used as the address of a website for a producer of greenhouses and submits that confusion is likely even with the domain name being put to such use.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant submits that while the disputed domain name was registered in December 2004, it was not used until October 2009 when the registrant linked the disputed domain name to another domain name after the Complainant had commenced negotiations with him. The domain name was linked the “” website which is a maintained by a producer of greenhouses.
The Complainant sets out details of email correspondence which commenced in April 2009 between the Complainant and Mr. Macpherson who at that time was the administrative contact for the domain name registration which was registered in the name of Macpherson Publishing until November 2009.
The Complainant states that on April 20, 2009 the Complainant tried to contact Mr. Macpherson by email. On June 1, 2009, Mr. Macpherson answered by email and asked the Complainant to send him an offer to buy the domain name.
The Complainant states that from June 9, 2009 the Complainant tried to get in contact with Mr. Macpherson. On September 15, 2009 the Complainant engaged a domain broker to endeavour to purchase the disputed domain name. On October 7, 2009 the broker informed the Complainant that it could not make contact with Mr. Macpherson either.
The Complainant states that on October 21, 2009 the Complainant again left a voicemail message at Mr. Macpherson's voicemail box requesting that he get in touch with the Complainant. On October 22, 2009 the Complainant received an email from Mr. Macpherson in which he asked again for the Complainant's offer. In reply on October 22, 2009 the Complainant sent Mr. Macpherson an offer to purchase the disputed domain name. On October 26, 2009, the Complainant received an answer from Mr. Macpherson rejecting the offer and stating that Mr. Macpherson's client wants to hold on to the disputed domain name.
The Complainant responded and asked for the price at which Mr. Macpherson's client would be willing to sell the disputed domain name.
On November 3, 2009, Mr. Macpherson informed the Complainant, that the Whois data for the domain name had been updated and on November 11, 2009 the Complainant sent an email to the Respondent, who was the new registrant for the domain and asked him directly whether he wished to sell the disputed domain name. The Respondent did not answer.
In the Complaint as originally filed, the Complainant submits that the disputed domain name was registered and is being used in bad faith but states that since the domain name was not online by October 2009 the Complainant does not know the interests of the Respondent or why he has registered the domain name.
In an amendment to the Complaint dated November 26, 2009, the Complainant submits that it is evidence of bad faith that the domain name was not actively used until October 2009 at which time the then registrant Mr. Macpherson transferred the registration of the domain name to the Respondent and caused the domain name to be linked to a website of a producer of greenhouses at the “” address which has nothing in common with the disputed domain name. The Complainant further submits that it believes that the Respondent is holding onto the domain name because he wants to earn money by selling it for a higher price when the Complainant's MEATERY trademark is successfully established. B. Respondent
The Respondent requests the Administrative Panel to dismiss the Complaint and to deny the remedies requested.
The Respondent claims to be the rightful owner of the disputed domain name .
The Respondent submits that since it was registered in December 2004, the disputed domain name has been used for the Respondent's business in conjunction with other domain names and .
The Respondent submits that one of the Respondent's business interests is the export of North American meat to Eastern European deli meat factories, processing plants, restaurants and other meat businesses.
The Respondent states that he is a worldwide supplier of meat products and byproducts, as well as being in other businesses being producing greenhouses, producing greenhouse products such as tomatoes, shipping and freight forwarding.
The Respondent submits that it is irrelevant that the Complainant, located in another part of the world should dislike about how the Respondent chooses to use, link and direct his domain name or any of his other domain names and/or business tools. The Respondent submits that he is entitled to run his business as seems fit and necessary to him.
The Respondent furthermore submits that he is in the process of securing trademark protection for the Meatery Corporation name and logo in Canada in accordance with Canadian trademark law.
The Respondent submits that he has established his international business, name, reputation, worldwide client base and presence online through his four domain names , , and the disputed domain name .
The Respondent points out that the Complainant has a trademark for Germany only. The Respondent submits that the Complainant does not have a trademark for the entire world and further submits that the Complainant's German trademark does not give him the right to bully businesses around the world.
Furthermore the Respondent submits that the Complainant's trademark exists only since 2009, while the Respondent's domain name has been registered and in use since 2004.
The Respondent submits that the Complainant did not create the word “meatery”, as it claims. A simple search on Google will easily show that the name “meatery” has been created by others many years ago and is in existence for very many years.
The Respondent states that the fact that the Complainant registered a trademark in Germany using an English name used mostly in English speaking countries such as United States of America and Canada and without prior due diligence in checking if the name is already in use, is not, and should not, become the Respondent's burden and punishment.
The Respondent submits that it has rights or legitimate interests in respect of the disputed domain name having used the disputed domain name since December 2004. The Respondent states that he started his meat export business at that time with Pin Foods. At that time the Respondent registered the domain names: , and . A website was created at “www.”. The Respondent sold Pin Foods in 2007.
Since 2007 the disputed domain name has been used and linked to “www.” and “” websites in accordance with instructions given from time to time by the Respondent to Mr. Macpherson who is the Respondent's webmaster and person responsible for all the maintenance, upkeep and renewal of all of the Respondent's websites. As the Respondent prefers not to have his name on any databases, Mr. Macpherson also does all the registrations for the Respondent.
The Respondent was not aware, until October 22, 2009, that the Complainant was in negotiations with Mr. Macpherson to purchase the disputed domain name. On October 22, 2009, when Mr. Macpherson e-mailed the Respondent and informed him of the Complainant's offer, the Respondent informed Mr. Macpherson that he was “not selling anything to anyone.”
The Respondent states that he never made a counter-offer. He was never and is not interested in selling the disputed domain name and/or any of his other domain names. The Respondent states that he never asked the Complainant to make him an offer. In fact, the Complainant initiated the negotiations and made the offer to purchase the domain name. The Respondent simply did not reply. The fact that the Complainant tried apparently several times and for few months to get in touch with his webmaster, Mr. Macpherson, is totally irrelevant and constitutes sheer speculation.
The Respondent asserts that he has no intention to disrupt or tarnish the Complainant's business trademark in Germany. The Respondent states that he minds his own business in meat exports. The Respondent and the Complainant are not and have never been competitors. The disputed domain name was registered by the Respondent for the purpose of promoting his meat export business online. This happened 5 years before the Complainant started up its restaurant in conjunction with its hotel business. 6. Discussion and Findings
Policy paragraph 4(a) requires the Complainant to prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(1) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has satisfied this Panel that it is the registered owner of German Trademark registration number 30 2009 004 191 MEATERY which was registered on March 30, 2009 pursuant to an application filed on January 26, 2009.
This Panel finds that the disputed domain name is identical to the Complainant's trademark because the gTLD “.com” extension may be ignored for the purpose of making the comparison.
The Complainant has therefore satisfied the first element of the test in paragraph 4 of the Policy. B. Rights or Legitimate Interests
The Respondent has arranged for the disputed domain name to resolve to a website that appears to be maintained by a greenhouse producer since October 2008. The Respondent states that this is one of his business interests.
The Complainant has submitted that such use does not establish rights or legitimate interest in the domain name as the domain name has nothing in common with greenhouse production. On the other hand the Respondent has submitted that it is his right to carry on his business as he deems fit.
There is a conflict between the evidence submitted by the Complainant and the Respondent as to whether the Respondent put the disputed domain name to active use prior to October 2008. The Respondent has stated that he has used the domain name in connection with his business interests since 2004 but has not produced any evidence of such use.
It is difficult to understand why the Respondent should use the domain name for the sale of greenhouses, however, it is not necessary for this Panel to determine these issues as the Complainant has in any event failed to establish the third and final element of the test for reasons given below. C. Registered and Used in Bad Faith
The disputed domain name was registered on December 6, 2004.
The Complainant does not state when it commenced use of the MEATERY trademark but states that it has recently commenced use of the MEATERY mark as the name of a new steak restaurant in its hotel in Hamburg.
On the evidence submitted by the Complainant, Complainant's German Trademark registration number 30 2009 004 191 MEATERY was not registered until March 30, 2009 pursuant to an application filed on January 26, 2009 it applied for registration of the MEATERY trademark.
The Complainant's ccTLD domain name registration was registered by the Complainant on December 10, 2008.
There is no evidence of any use of the MEATERY trademark by the Complainant prior to December 2008 which was four years after the date on which the disputed domain name was registered.
The Complainant is obliged to prove that the domain name was both registered and is being used in bad faith. On the balance of probabilities the domain name was registered approximately four years prior to the date on which the Complainant acquired rights in the MEATERY trademark and therefore there is no evidence of bad faith registration. The Complaint must therefore fail. 7. Decision
For all the foregoing reasons, the Complaint is denied.
James Bridgeman
Sole Panelist
Dated: January 1, 2010
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