The Complainant is Freistaat Bayern, Germany, represented by Bettinger Scheffelt Muller, Partnerschaft mbB, Germany.1
The Respondent is Massimo Perusi, Italy.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2021. On June 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 28, 2021, the Registrar 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 July 13, 2021, 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 July 14, 2021. The Complainant filed a second amended Complaint on July 16, 2021 and a third amended Complaint the same day which clarified the Disputed Domain Name and the identity of the Complainant, respectively.
The Center verified that the Complaint together with the amended Complaints 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2021. The Respondent sent informal emails on July 19 and 22, 2021. The Center informed the Parties of its commencement of Panel Appointment process on September 1, 2021.
The Center appointed Nick J. Gardner as the sole panelist in this matter on September 3, 2021. 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 BackgroundThe Complainant is Freistaat Bayern (the Free State of Bavaria), a German public body, which, inter alia, is the owner of the royal castle “Neuschwanstein”, which is one of the most famous tourist attractions in the world.
The Complainant is the owner of various registered trademarks incorporating the name “Neuschwanstein”, all of which clearly predate the registration of the Disputed Domain Name including for example the word mark NEUSCHWANSTEIN with German registration No. 30544198 registered on October 4, 2005. These trademarks are referred to collectively in this decision as the “NEUSCHWANSTEIN trademark”.
The Disputed Domain Name was registered on March 28, 2021. It has been linked to a website which is in German and which appears to be promoting apartment related real estate opportunities in Germany. It does not so far as the Panel can see have any content specifically relating to the NEUSCHWANSTEIN castle.
5. Parties’ Contentions A. ComplainantThe Complainant’s contentions can be summarized as follows.
The Disputed Domain Name is similar to the NEUSCHWANSTEIN Trademark.
The Respondent has no rights or legitimate interests in the term “Neuschwanstein”.
In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant says that the Respondent had the Complainant in mind at the time of registration of the Disputed Domain Name and that the Respondent could not have chosen the Disputed Domain Name for any reason other than to deliberately cause confusion amongst Internet users or to take unfair advantage of the Complainant’s goodwill and reputation, which clearly constitute bad faith
B. RespondentNo Response has been filed. The Panel will however exercise its discretion and treat the following informal communications as the Response. On July 19, 2021 the Respondent sent the following email to the Center:
“I acknowledge the receipt of your correspondence received by mail on past Friday, 16/07/2021.
Please be informed that this is the very first time I was made aware of an infringement of any property right.
I have nothing to argue, and I fully agree with setting the situation and possibly solving this matter amicably.
I’m really sorry for the situation, but I’d like to clarify that there was absolutely no bad faith in the registration of the domain and that I have already instructed the registrar to release it to the legal owner of the rights, as soon as we receive the instructions for doing it, as the domain is now blocked.
With the here attached file I intend to explain only the good faith behind that registration.
Apologising once again and asking for your understanding”.
See below as to the contents of the attachment.
On July 21 2021, in response to the Center’s possible settlement email, the Complainant indicated it wished to proceed to a decision. It said as follows:
“many thanks for your message. The Complainant has decided not to enter into settlement negotiations with the Respondent, but to request the reinstitution of the proceeding.
The Complainant’s trademark “Neuschwanstein” has been registered and used in bad faith as a domain name many times in the past. Since similar abusive registrations of the Neuschwanstein trademark as a domain name are also to be expected in the future, the Complainant attaches great importance to the UDRP Panel issuing a decision finding that the registration and use of the disputed domain name was in bad faith”.
On July 22, 2021 the Respondent sent a further email as follows:-
“I acknowledge the decision of the Complainant not to proceed in an amicable way.
Apologizing once again and reconfirming my good faith, I reconfirm here what I have already declared and I remain at disposal for the Panel decision.
In support of my good faith, I’d like to add what has been declared by the Compliant, about the frequency of the abuses, past and forecasted, to the declaration that I have already filed.
i.e. “The Complainant’s trademark “Neuschwanstein” has been registered and used in bad faith as a domain name many times in the past. Since similar abusive registrations of the Neuschwanstein trademark as a domain name are also to be expected in the future”.
Despite this frequency, as per what I have already said at point 2 of my declaration, on the entire home page, in any language, no protection symbol (C) is placed close to “Neuschwanstein” to warn people about this protection, while it’s been done on the same page for other names to be protected.
That symbol on the home page would have certainly prevented me to make such a mistake, but may probably prevent at least some of the possible abuse in the future, at least those made in good faith knowing that, even if its positioning is not compulsory, that’s the reason why it has been created.
Once again I do not look for any right through this, but I add it as a reinforcement for my good faith, for which I ask you once again your understanding.
Waiting for the Panel final decision”.
The Respondent’s attachment to his email of July 19, 2021 explained in more detail the nature of the Respondent’s business. He explained he was engaged in registering a series of domain names using the place names of German towns and villages and was then linking them by redirection to a website featuring local apartment developments. He said that he had thought that Neuschwanstein was a place name as well as the name of the famous castle and that was why he had registered the Disputed Domain Name as part of the business he was developing. He explained that as soon as he realised he was mistaken he stopped using the Disputed Domain Name in this way. He also said his misunderstanding was supported by the fact that on the home page of the official site for the Neuschwanstein castle there was no indication that the name was protected or any warning about possible infringements of rights. Had there been such a warning he would have realised he could not use the name Neuschwanstein.
6. Discussion and Findings A. Preliminary MattersThe Panel notes this is a case where a privacy or proxy service (Withheld for Privacy ehf, Iceland) appears to be involved.
The Panel in this case adopts the approach of previous UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel considers the substantive Respondent to be Massimo Perusi and references to the Respondent are to that person.
B. Substantive MattersIn the circumstances of this case the Panel considers it is appropriate to order the transfer of the Disputed Domain Name to the Complainant based on the Respondent’s consent to that transfer.
The Panel reaches this conclusion based on the correspondence from the Respondent (see above). It is clear that the Respondent is consenting to the transfer of the Disputed Domain Name to the Complainant. The Panel therefore adopts the approach set out in WIPO Overview 3.0, section 4.10 as follows:
“How do panels handle cases involving a respondent’s informal or unilateral consent for the transfer of the domain name to the complainant outside the “standard settlement process” described above?
Where parties to a UDRP proceeding have not been able to settle their dispute prior to the issuance of a panel decision using the “standard settlement process” described above, but where the respondent has nevertheless given its consent on the record to the transfer (or cancellation) remedy sought by the complainant, many panels will order the requested remedy solely on the basis of such consent. In such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis).”
See, for example, Infonxx.Inc v. Lou Kerner, WildSites.com, WIPO Case No. D2008-0434, where the Panel stated as follows:
“However, this Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an order for transfer without consideration of the paragraph 4(a) elements. As was noted by the Panel in The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132, when the Complainant seeks the transfer of the disputed domain name, and the Respondent consents to transfer, the Panel may proceed immediately to make an order for transfer pursuant to paragraph 10 of the Rules. Accordingly, and in light of the parties’ stipulations set forth above, the Panel will order the transfer of the disputed domain name to the Complainant. This is clearly the most expeditious course. Id.; Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207.”
The Panel notes that the Complainant wished to proceed to a determination on the merits and that it considered it important to do so as similar cases may arise in the future. The Panel declines to proceed to a decision on the merits for the following reasons:
1. The present decision does not in any way prejudice the Complainant’s rights in relation to any future cases that may arise. The Complainant has successfully brought a number of previous UDRP complaints in relation to domain names which include the NEUSCHWANSTEIN trademark and there is no reason to suppose it would not be able to do so in the future in appropriate circumstances.
2. The Respondent as soon as he received the Complaint wrote to the Center apologising and offered to transfer the Disputed Domain Name. It appears from the Respondent’s explanation (see above) that he had made an innocent mistake in choosing the Disputed Domain Name.
3. The Complainant does not appear to have sent any form of letter to the Respondent before filing the present Complaint. Whilst it is not obliged to do so the Panel does not see that a decision on the merits should be rendered against the Respondent who consents to transfer as soon as he receives the Complaint when that Respondent was not given any previous indication that the Complainant objected to the Disputed Domain Name.
4. The Complaint expressly accuses the Respondent of fraud. The heading that appears before paragraph 25 of the Complaint reads as follows: “The Domain Name and the Respondent’s fraudulent activities”. There is no further indication in the Complaint of any activity that could be described as fraudulent and the Panel does not understand this heading or why it was included. It does however think it inappropriate to proceed to a finding on the merits where an unspecified allegation of fraud is made in this way, and when the Respondent has immediately consented to a transfer.
Accordingly, the Panel declines to proceed to a finding on the merits but pursuant to paragraph 10 of the Rules the Panel orders that the Disputed Domain Name be transferred to the Complainant.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 10 and 15 of the Rules, the Panel orders that the Disputed Domain Name
Nick J. Gardner
Sole Panelist
Date: September 17, 2021
1 The Complainant identifies itself, in the Complaint, as “Freistaat Bayern (the Free State of Bavaria), represented by the Bayerische Verwaltung der staatlichen Schlösser, Gärten und Seen (the Bavarian Administration of State-owned Palaces, Gardens and Lakes, otherwise known as the “Palace Department”)”, with Bettinger Scheffelt Muller, Partnerschaft mbB as the authorized representative in this proceeding.