The Complainant is Spielwarenmesse eG of Nürnberg, Germany, represented by Cöster & Partner - Rechtsanwälte, Germany.
The Respondent is Name Administration Inc. (BVI) of Grand Cayman, Cayman Islands, Overseas territory of the United Kingdom of Great Britain and Northern Ireland, represented by John Berryhill, Ph.d., Esq., United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with iRegistry Corp. (fka) Domain Name Sales Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2013. On April 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 24, 2013, the Registrar 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 May 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for the Response was on May 23, 2013. The Response was filed with the Center on May 23, 2013.
The Center appointed Thomas Legler, Torsten Bettinger and Wolter Wefers Bettink as panelists in this matter on June 17, 2013. 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. 4. Factual Background
The Complainant, Spielwarenmesse eG, is a German cooperative which has been organising a trade fair for the toy industry on an annual basis since 1950.
On March 31, 2006, the Complainant filed the German trademark application No. 306213990 for SPIELWARENMESSE, for goods and services in classes 16, 35 and 41. However, the German Patent and Trademark Office rejected the application on the ground of lack of distinctive character. In addition, it was of the opinion that the mark was a descriptive indication to be kept available for general use.
On September 28, 2011, the Complainant filed again a German trademark application for SPIELWARENMESSE this time designating exclusively “organization of trade fairs in the field of toys” in class 35. That application No. 30 2011 053 981 was again rejected by the German Patent and Trademark Office. However, the German Federal Patent Court annulled that decision by order dated September 12, 2012. Consequently, that trademark was finally registered on January 7, 2013.
On May 23, 2013, the Respondent filed a petition for cancellation of said trademark registration No. 30 2011 053 981 SPIELWARENMESSE with the German Patent and Trademark Office.
The Complainant also owns the Chinese trademark registrations No. 8187940 and No. 8187939 for SPIELWARENMESSE designating respectively classes 35 and 38 and filed on April 28, 2011.
Furthermore, the Complainant is the owner of a large number of domain names featuring the word “Spielwarenmesse”, including , , , , , , , , , .
Little is known about the Respondent, Name Administration Inc. (BVI). It appears to be a company having significant domain name assets. The Respondent describes itself as being a leading company in the field of search advertising through its large portfolio of common words and phrases.
The Respondent has been the owner of the Domain Name since January 2002. At present, the landing page under the Domain Name shows some links in relation to various areas concerning toys.
It seems undisputed that at least in 2011, the Complainant contacted the Respondent, through their respective representatives (brokers), in order to receive a quote for the purchase of the Domain Name. These negotiations have failed. 5. Parties’ Contentions A. Complainant
When the Complainant was formed in 1950, it had the name of “Deutsche Spielwaren-Fachmesse eGmbH”. In 1958, the Complainant changed its name to “Spielwarenmesse” and in 1973 to “Spielwarenmesse eG”.
The Complainant has been doing business under its firm name with the firm name part “Spielwarenmesse” to a large extent and on a global basis since 1958.
Beginning only with German exhibitors in 1950, the toy trade fair became an international fair as from 1958. As from this point of time, the toy fair was called “Internationale Spielwarenmesse Nürnberg”. The fair reached 60 foreign exhibitors in 1958, 1,540 in 1994 and 2,747 in 2013 with 72,595 visitors from 113 countries all over the world. The Complainant shows an extensive promotion of its trade fair in Germany and abroad. Its advertising expenditure amounted to more than EUR 700,000 for the year 2013. According to the Complainant, it has been operating various representations abroad for several decades.
As regards the first Policy criterion, the Complainant considers that the Domain Name is identical and confusingly similar to the denomination “Spielwarenmesse” for which it enjoys protection. According to the Complainant, “Spielwarenmesse” is a well-known brand designating the famous international Nurnberg fair for the toy industry that it has been using since the 50’s. The Complainant argues that the trademark SPIELWARENMESSE has been the subject of an intensive use for that fair during several decades by providing the Panel with invoices and other documents showing the turnover of the annual trade fairs, the budget dedicated to their promotion along with a list of the current representations held abroad.
The Complainant considers that it is entitled to protection of the term “Spielwarenmesse” as it constitutes a part of its corporate name in the sense of Sec. 5 para. 2 of the German Trademark Law and Sec. 12 of the German Civil Code. It further invokes a copyright on the term “Spielwarenmesse” in the sense of Sec. 5 para. 2 of the German Trademark Law. In addition, the Complainant refers the Panel to its German Trademark Registration No. 30 2011 053 981 SPIELWARENMESSE filed on September 28, 2011 (see above) and to the Chinese trademark registrations No. 8187940 and No. 8187939 SPIELWARENMESSE designating respectively classes 35 and 38.
In addition, the Complainant points to its domain name registered since November 25, 1996 and used in relation to its toy fair since 1998.
The Complainant is finally of the opinion that the term “Spielwarenmesse” standing for its toy fair enjoys high name recognition for the Complainant also outside Germany. It indicates that this is shown by the reference to its toy fair in Nurnberg when one enters the search term “Spielwarenmesse” in the English version of Wikipedia. In order to demonstrate the high degree of recognition of the term “Spielwarenmesse” standing for the Nurnberg toy fair, the Complainant also refers to the above mentioned decision of the Federal Patent Court of September 12, 2012, making reference to a demoscopic poll where 62.2% of the interviewed individuals affirmed the question that “Spielwarenmesse” referred to the Complainant.
As regards the second criterion of the Policy, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name because (i) the Respondent has never acquired any trademark rights in the term “Spielwarenmesse”, (ii) the term “Spielwarenmesse” is not part of the Respondent’s company name and that (iii) a company located in the Cayman Islands can not have any interest in using that German term. In addition, the Respondent does not sell its own goods or services but only offers pay-per-click advertisements for, among others, toy dealers. Finally, the Respondent offers to sell the Domain Name, which proves that it does not intend to use it for own purposes in the future.
With regard to the third criterion of the Policy, the Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant considers that when the Domain Name was registered in 2001, the Complainant’s denomination “Spielwarenmesse” had already been intensively used all over the world since more than forty years. Thus, the Respondent cannot deny that it was aware of the Complainant’s activities under this denomination, especially as the word “Spielwarenmesse” has no significance in the English language.
Furthermore, the Complainant sees a case of paragraph 4(b)(i) of the Policy in the following line of events: In 2011, the Complainant approached the Respondent through its provider and bid for the acquisition of the Domain Name offering USD 5,100. The Respondent, through its broker, informed the Complainant's representative that the price for the Domain Name was USD 22,000. The Complainant indicated subsequently that it was not prepared to pay such a high amount. In an e-mail of March 16, 2011, the Respondent’s attention was drawn to the fact that the Complainant is the organizer of the globally leading and known “Spielwarenmesse International Toy Fair Nuremberg” and that the Domain Name may not be used by anybody else but the Complainant according to German law. The Complainant then asked the Respondent for a realistic price. The Respondent’s domain name broker informed the Complainant on March 21, 2011 that it was not prepared to offer another price and that this price remained valid for another two days, subsequently the price would double. The Complainant concludes from these facts that the Respondent wanted to prevent the Complainant from using the Domain Name and that this shows that it was registered and is used in bad faith.
Consequently, the Complainant requests that the Domain Name be transferred to it. B. Respondent
As regards the first criterion of the Policy, the Respondent argues that the term “Spielwarenmesse” is a generic word meaning “toy fair” in English. The Respondent underlines that online dictionaries and the German version of Wikipedia all distinguish the generic word “Spielwarenmesse” from the word “Nürnberger Spielwarenmesse” used to refer specifically to the Complainant’s toy fair. The term “Spielwarenmesse” itself has no other meaning than “toy fair” and is therefore a non-distinctive, descriptive and generic word. The Complainant consistently refers to the event as “Spielwarenmesse International Toy Fair Nuremburg” and does not use the unadorned term “Spielwarenmesse”.
Furthermore, the Respondent contends that the Complainant cannot rely on its registered corporate name “Spielwarenmesse eG” as a basis of the present Complaint given that the Policy and UDRP case law expressly limit administrative complaints to rights in a “trade or service mark”.
Moreover, the Respondent argues that the Complainant did not have any rights in the trademark SPIELWARENMESSE at the date of registration of the Domain Name. The Respondent reminds the Panel that the German Patent and Trademark Office refused in 2006 the Complainant’s application for SPIELWARENMESSE on the ground of lack of distinctive character and of descriptive indication to be kept available for general use. The Respondent considers that the fact that the trademark has been finally registered in 2011, probably due to acquired distinctiveness, does not alter the fact that this trademark was considered descriptive in 2006. As far as the 2011 registration is concerned, the Respondent submits a petition to the German Patent and Trademark Office by which it seeks cancellation of that registration. However, the Respondent admits that the 2011 registration may satisfy the threshold requirement of the first Policy criterion.
As regards the second Policy criterion, the Respondent argues that it uses the Domain Name in connection with paid search advertising relating to toys. Thus, the Respondent makes a legitimate use of the Domain Name composed of the generic German word for “toy fair” in connection with subjects relating to toys. In relation to whether the Respondent had an obvious intention to trade on the rights or reputation of a trademark owner in another part of the world, the Respondent notes that the Complainant has not established ownership of a trade or service mark right at the time the Respondent registered the Domain Name, and the Respondent, when contacted by the Complainant in 2008, became expressly aware that the Complainant’s claim had been refused in Germany.
With regard to the third Policy criterion based on bad faith, the Respondent indicates that it did not have the intention to prevent the Complainant from using the term “Spielwarenmesse” or to sell, rent or transfer the Domain Name to the Complainant at the date of the registration.
The Respondent argues that its principal (a German native but raised in Canada) was not aware of the Complainant’s event when he registered the Domain Name in 2001 (transferred to the Respondent in 2002), as he had left Germany when he was a small child.
The Respondent was aware that the Complainant’s trademark had been refused a first time by the German Patent and Trademark Office. The Respondent expressly referred to this circumstance in its communications with the Complainant in 2011.
Furthermore, the Respondent rejects the Complainant’s argument that its counter-offer of USD 22,000 in 2011 was a “bad faith price” as the Policy does not define what would be a “good faith” and what would be a “bad faith” price.
Finally, the Respondent poses the question whether this is not a case of laches as the Complainant has waited more than a decade to launch this proceeding. The Respondent therefore concludes that the Complainant has failed to demonstrate that the Domain Name was registered and used in bad faith.
Consequently, the Respondent requests that the Complaint be denied. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the Domain Name of the Respondent be transferred to the Complainant:
(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
Under the first criterion of the Policy, the Complainant refers, among other things, to its name “Spielwarenmesse eG”, which constitutes its name as a cooperative under German law. While the UDRP does not specifically protect trade or company names as such, in situations where a trade name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. Whether such a particular case is given under the present circumstances can be left open as the Complainant is also the owner of the German trademark SPIELWARENMESSE No. 30 2011 053 981 registered in class 35 on January 7, 2013 (with priority of September 28, 2011). Although it appears that the Respondent has recently filed a petition for the cancellation of that trademark with the German Patent and Trademark Office (no decision has been filed by the Parties in this respect), the Panel is satisfied that the Complainant may refer to that trademark right under the first criterion of the Policy. The Respondent does not seem to contest that basic finding (see Response, at the bottom of p. 5). As the Domain Name and the said trademark consist of the same term “Spielwarenmesse”, the Panel finds that they are identical in the meaning of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Domain Name containing the word “Spielwarenmesse” is comprised of the two generic German words “Spielwaren” (toys) and “Messe” (fair).
Even if it is a domain name comprised of a dictionary word or phrase, the respondent may nevertheless lack a legitimate interest in the domain name. Indeed, mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name.
Factors to look for when assessing whether there may be rights or legitimate interests include (i) the status and fame of the trademark, (ii) whether the respondent has registered other domain names containing dictionary words or phrases, and (iii) whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning (e.g., a respondent may well have a right to a domain name “apple” if it uses it for a genuine site for apples but not if the site is aimed at selling computers or MP3 players, for example, or an inappropriate other purpose). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.2.
The Complainant has shown by various exhibits that its toy trade fair is one of the most important ones in this field. The Panel is therefore convinced that its fair has reached certain fame. However, this is not (necessarily) the case for the use of the term “Spielwarenmesse” as to uniquely identify the respective fair of the Complainant. As the Complainant points out in various sections of its Complaint, its fair is promoted in Germany and abroad under the name “Spielwarenmesse International Toy Fair Nuremberg”. The Panel can therefore not conclude on the evidence that the Complainant has made intensive use of the designation “Spielwarenmesse” for the purposes of its toy trade fair. That conclusion would not be reversed even by recognizing rights under the first element of the UDRP to the Complainant’s cooperative name as this name appears to be used as its legal and corporate designation only and not for commercial and promotional purposes of the toy trade fair.
As the Respondent has shown, its company engages in search advertising through its large portfolio of common words and phrases. This has been confirmed in at least two other administrative proceedings under the UDRP concerning the Respondent and quoted by the latter in its Response (DataServ, L.L.C. v. Name Administration Inc. (BVI),WIPO Case No. D2012-1538; Visa Europe Limited v. Name Administration Inc. (BVI),WIPO Case No. D2010-1531). Although the Respondent as a professional domain name registrant may have had some opportunistic awareness of a certain value of the selected Domain Name, the Complainant has not shown that the Respondent was aware of the existence of the Complainant at the time (2002) it acquired the Domain Name and that it would have targeted at any point of time the Complainant's toy fair in Nuremberg.
Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning.
The Panel has some doubts whether this criterion is fulfilled. The Respondent uses the Domain Name in connection with subjects relating to toys, not to toy fairs or toy-industry-trade shows around the world. It could therefore be argued that the Respondent is not using the term “Spielwarenmesse” in its genuine sense for the provision of pay-per-click links related to toy trade fairs; indeed, it appears that the Respondent’s website is concerned solely with links related to the commercial sale of retail toy items.
However, as the Respondent is using the Domain Name at least in relation to toys and considering the other above-mentioned criteria as well as the absence of other specific evidence in this respect, the Panel finds that the Complainant has, on the balance, not shown that the Respondent lacks rights or legitimate interests in the Domain Name in the sense of the second criterion of the Policy. C. Registered and Used in Bad Faith
For the sake of completeness, the Panel wishes to address also the third criterion under the Policy.
It is not impossible that a domain name which was registered before the registration of the relevant mark may nevertheless have been selected in bad faith. One of the best-known cases is MADRID 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598, the “Madrid case”, wherein the respondent registered a number of domain names connected with the city of Madrid’s bid for the 2012 Olympic games. The complainant did not have trademark rights in the relevant terms at the time of registration of the domain names, but since the respondent only selected those domain names with the knowledge of the complainant’s impending rights, the registrations were determined to have been undertaken in bad faith. UDRP cases in this line include situations in which the relevant respondents registered domain names in light of impending commercial mergers, or where the respondent was otherwise known to have knowledge of the complainant’s mark (see, for example, Joyce Meyer Ministries Inc. v. Amjad Kausar,WIPO Case No. D2006-1555; Hydrobolt Limited v. Billington Bolt,WIPO Case No. D2008-1196; and Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT,WIPO Case No. D2007-1193).
In the present case however, there is no evidence showing that the Respondent had such knowledge of impending rights. Quite to the contrary as the Complainant’s fair is not apparently promoted in Germany and abroad under the name “Spielwarenmesse” but under the term “Spielwarenmesse International Toy Fair Nuremberg”.
In 2002, when the Respondent acquired the Domain Name, no trademark for “Spielwarenmesse” was registered. In addition, when the Complainant contacted the Respondent in 2008, the Respondent after a due trademark search became aware that the Complainant’s trademark had been refused by the German Patent and Trademark Office. The Respondent had therefore no reason to believe that neither its registration in 2002 nor its use in 2008 would constitute a violation of the Complainant’s trademark rights. It was only by decision of September 12, 2012 that the German Federal Patent Court admitted the second registration of the mark SPIELWARENMESSE (after having reversed the previous second refusal by the German Patent and Trademark Office), this time for the restricted use in class 35 for “the organisation of commercial specialist fairs in connection with toys” (free translation). Based on that decision, the respective trademark was registered on January 7, 2013. Under these circumstances, it would not be appropriate to assume an attitude of bad faith registration of the Respondent.
In relation to the above mentioned decision, the Panel noted that the German Federal Patent Court only granted protection to the mark SPIELWARENMESSE as it considered it as having acquired distinctiveness in Germany and only in relation to specialists in the field of trade and manufacture of toys (p. 7 and 8 of the decision filed by the Complainant). It is also worth mentioning that the Court held that the designation “Spielwarenmesse” is a descriptive term and as such basically to be kept free (“freihaltebedürftig”; p.7 of the decision). The Panel therefore concludes that even in 2013, the trademark at stake was only distinctive in Germany and in relation to specialists in the field and could not be considered as sufficiently well-known abroad or outside the circle of the mentioned specialists, i.e. for the average Internet user.
As to the Complainant’s hint to the Respondent’s offer to sell the Domain Name, the Panel recalls that offering to sell a domain name which a respondent has a free and clear right to own is not objectionable. As shown above, there are no other criteria which would lead to the assumption that the Respondent would not have been in possession of such a right.
Finally, the Panel notes that it finds it troubling that the Complainant has waited for almost a decade to file a complaint against the Respondent. Without assessing whether this constitutes a case of laches, the Panel finds that this fact adds to the above mentioned circumstances, i.e. to conclude that no bad faith has been shown for the Respondent’s acts in relation to registration and use of the Domain Name. 7. Decision
For the foregoing reasons, the Complaint is denied.
Thomas Legler
Presiding Panelist
Torsten Bettinger
Panelist
Wolter Wefers Bettink
Panelist
Date: July 11, 2013
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