The Complainant is ORWO Net GmbH, Germany, represented by lexTM Rechtsanwaelte, Germany.
The Respondent is Jake Seal, United States of America (“United States” or “US”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2021. On August 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 12, 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 September 15, 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 amendment to the Complaint on September 20, 2021.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2021, and was extended until October 15, 2021. The Center received email communications on September 16, 17, 21, 22, and October 17, 2021, from the Respondent. The Response was filed with the Center on October 18, 2021.
The Center appointed Nick J. Gardner as the sole panelist in this matter on November 8, 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.
On November 12, 2021, the Panel issued a Procedural Order (the “Procedural Order”). This provided as follows:
“The Panel requests that the Parties each provide a further filing as follows.
The Complainant should provide a further filing by November 19, 2021, explaining (i) why it says ORWO is a ‘company acronym’ and identifying the company in question; (ii) what it is referring to when it says ‘The Respondent has made efforts to acquire the mark of the Complainant’; and (iii) in more detail the previous litigation concerning the companies ARRI Media GmbH, Seal 1819 GmbH and FilmoTec GmbH, which it says also involved the Respondent and which is described in the section of the Complaint directed at paragraph 4(a)(iii) of the Policy. The Complainant should provide translations into English of any documents it wishes the Panel to take into account. The filing may, if the Complainant wishes, also reply to any matters set out in the Response.
The Respondent should provide a further filing by November 26, 2021, responding to the Complainant’s further filing. It should also explain in more detail, if it is able, (i) the involvement of Campbell Representation Inc and what connection, if any, that company has with the Complainant or any other predecessor in title to any trademark including the term ‘orwo’ or the associated logo; and (ii) how and why it consulted with Filmotec Germany and they in turn with Orwo.net Germany and with what result; and explaining what the relevance of those companies or organisations is to this matter; and (iii) the relevance of ‘the trademark held by Orwo Haus’ referred to in the Response.
Accordingly, the Decision due date is extended to December 3, 2021. The Panel reserves the right to take any additional procedural steps as it considers necessary.”
On November 19, 2021, the Complainant replied to the Procedural Order (see details below). On November 19, 2021, the Respondent replied to the Procedural Order by email stating: “In the interim Orwo.net and ourselves have signed a new deal concerning the name and the use of the name. Is this not the only thing of relevance now?”. On November 23, 2021, the Center sent to the Respondent an email requesting him to submit a copy of the agreement referred to in his email of November 19, 2021. No reply was received to this request.
4. Factual BackgroundThis is not a straightforward case. The Panel found both the Complaint and the Response to be relatively brief and lacking in many respects a clear explanation of the background to the matters in issue. The Procedural Order was intended to elicit further information which would clarify matters, but again the information that has been provided is relatively sparse. The Panel has derived much of the following background from the Complainant’s website (“www.orwo.net”).
In 1909 the German company AGFA constructed a plant in Wolfen, Germany. Throughout the 1920s and 1930s it produced photographic film at the plant. Following the Second World War the Wolfen plant was controlled by the Soviet Union. In 1953 it was returned to the German Democratic Republic (i.e. East Germany). In 1964 (according to the Complainant’s website): “A political decision of the GDR government took place in 1964: the film factory sold its trademark rights to the ‘sister company’ in the FRG and changed its global name to ORWO (ORiginal WOlfen).” By 1970 ORWO had diversified into producing other information recording materials, such as magnetic, video and computer tapes. By 1989 some 14,500 employees worked at the Wolfen factory. Various corporate changes took place through the 1980s and 1990s but in 1997 the corporate entity running the business (ORWO A.G.) became insolvent. A company called Lintec Computer AG, took over the corporate assets and two subsidiary companies PixelNet AG and ORWO Media GmbH were founded for this purpose. It appears the business did not prosper as in 2002 PixelNet AG and ORWO Media GmbH filed for bankruptcy. In September 2003 an East German investor group took over the business and a company called Orwo Net was formed for this purpose. The Panel infers this company is the present Complainant. Its website describes its present business as follows “ORWO Net is currently pursuing two major sales approaches: direct consumer business through its own brands PixelNet, Foto Quelle and Photo Dose, and a white label full-service partnership through the Wolfen based company, which produces for major customers such as drugstore chains and well-known trade brands, supplying their end customers both nationally and in selected European countries. Using market-leading manufacturing technologies, customised photo calendars, photo books, digital and analogue photo prints, posters, cards and numerous innovative printed products for the gift and decoration sector are produced. The latest developments by ORWO Net include photo books with integrated videos. Currently, ORWO Net is one of the largest German photo finish and printing companies and it continues to expand”.
The Disputed Domain Name was registered on February 24, 2019. It is linked to a website (the “Respondent’s Website”) which promotes the business of a film and TV studio and production facility located in Louisiana, United States. That business appears to be a substantial bona fide business. The “about” section reads as follows “About ORWO Studios. We always strive for the best. “Hollywood South”. A very unique Film Studio in the heart of Louisiana, just 15 minutes from Baton Rouge airport, but in a serene and tranquil rural setting. ORWO Studios is a carefully crafted creative environment and the ideal place for film and television productions; quiet, focused and with excellent accommodation and transport links, including a private airport next door”.
The Respondent’s Website contains the following text in a footer: “ORWO FAMILY. ORWO is a brand of Excellence in Color and Black & White film products, Made in Germany. ORWO has formed a worldwide Family made up of Film Studios, Post Production facilities, Film Labs, and other companies involved in the development of new techniques in the cine-film sector.” The Respondent’s Website uses in various places a rectangular ORWO logo (see further below).
There is a US registered trademark application No. 90407208 pending. It is for the rectangular ORWO logo together with the words Original Wolfen North America. It was filed by “Campbell Representation Inc. DBA ORWO North America CORPORATION FLORIDA 107 13th Ave N 10 St Petersburg FLORIDA 33701”. It was filed on December 23, 2020 (it is referred to in this decision as the “US ORWO Trademark Application”).
5. Parties’ Contentions A. ComplainantThe Complainant sets out some information about its history but that is less comprehensive than the account above, derived from the Complainant’s website. It says it is the owner of various trademarks for the word element “ORWO”, including EUIPO Trademark 2146967 with registration date August 19, 2002 (the “ORWO Trademark”). It says the Disputed Domain Name is confusingly similar to the Complainant’s trade name and trademarks as it incorporates the term ORWO in its entirety and uses it for similar services. It says the addition of the word “studio” as the applicable Top-Level Domain cannot eliminate this likelihood of confusion.
It says the Respondent has not limited himself to a mere imitation of the ORWO sign, but has also copied the Complainant’s pictorial sign which comprises the letters ORWO in stylised form arranged in a 2x2 square layout (hereafter referred to as the “ORWO block logo”). It says the ORWO block logo with its square appearance has a high recognition value, so that the likelihood of confusion is additionally increased.
It says the overall circumstances, namely the use not only of the exact same word sign, but also of the ORWO block logo support the finding of confusing similarity, particularly because it appears that the Respondent registered the Disputed Domain Name precisely because it believed it was confusingly similar to a trademark held by the Complainant. It says there is a similarity in name and design, and also similarity of the offered services in the context of photo and film studios.
The Complainant says the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant says the Respondent has registered and used the Disputed Domain Name in bad faith because the Respondent attracts Internet users by misrepresenting an association between his website and the Complainant’s services and company. The Respondent’s Website is designed to sell services in the area of film production (i.e. for commercial purposes) using the Complainant’s logo, hence takes advantage of the reputation of the ORWO mark in the photochemical and postproduction sectors.
The Complainant also relied on the following further matters (which are set out verbatim in this decision as exactly what they mean is not entirely clear to the Panel):
“The Respondent has made efforts to acquire the mark of the Complainant. After these efforts proved fruitless, he used the mark unlawfully through companies ARRI Media GmbH, Seal 1819 GmbH and FilmoTec GmbH.
The Complainant was told by the Respondent that ARRI Media GmbH (of which the respondent was or is shareholder) was about to change its name to ‘ORWO Media GmbH’. As a response, the Complainant sent a warning letter to ARRI Media GmbH on April 14, 2021 explicating that a name change would result in an infringement of the mark ORWO.
Seal 1819 GmbH used the marks ‘ORWO’, ‘ORWO Media’ and ‘orwomedia.com’ on ‘www.orwomedia’ for post-production services. Ultimately, the Seal 1819 GmbH, in which the Respondent had the function of a Managing director (Annex 5) at the time of the lawyer’s warning letter, submitted a cease-and-desist declaration with penalty clause on May 28, 2021, (Annex 6).
Most recently, FilmoTec GmbH, whose managing director is the Respondent (Annex 7), used the ORWO block logo for apparel and refused to issue a cease-and-desist declaration in response to a warning letter, forcing the Complainant to file and obtain a preliminary injunction with the Frankfurt Regional Court on July 2021 (file number 3-08 O 32/21). With the Preliminary Injunction, the Respondent’s FilmoTec GmbH is prohibited from using the mark ‘ORWO’ in the commercial trade in the Federal Republic of Germany, including individually or in combination for items of clothing. The Preliminary Injunction is provided as Annex 8.
Generally, the Respondent has shown a pattern of conduct to exploit the reputation of the Complainant’s ORWO sides on various fields.”
The various Annexes referred to are documents in German (these annexes are extracts from the commercial register, a cease-and-desist letter, and a Preliminary Injunction).
The Complainant provided more information about the German proceedings described above in response to the Procedural Order – that information did not however explain fully what these proceedings were about and the Panel was not provided with English translations of any documents relating to those proceedings.
B. RespondentIt is simplest to set out verbatim the text of the Response, as follows:
“Dear Dispute Resolution Team:
Re: orwo.studio | (HMK) D2021-2607
Orwo is a name we have been using is the USA for the film studio activities for nearly four years. Prior to commencing using it, we consulted with Filmotec Germany and they in turn with Orwo.net Germany; to ensure that there was no conflict caused by us using the name for our film studio. Permission was granted by both parties.
Trademark infringement
After studying the trademark that Orwo net holds, it does not cover studio or movies, which is what we solely utilise it for.
Additionally, Orwo.studio has a license from Orwo North America (CAMPBELL REPRESENTATION INC), who has registered the trademark in the USA. This is a live trademark. We note that the no other Orwo trademarks are live in the USA.
Consequently any trademark infringement is denied.
Logo confusion
The logo utilised by the studio is the square Orwo logo. The logo utilised by over [sic] net is completely different.
In the Orwo net trademark the logo is clearly visible
The square Orwo logo utilised on the studio website is actually only similar to the trademark held by Orwo Haus (see appendix).
The square Orwo logo is also licensed from Campbell Representation Inc, who has registered this trademark in the USA and has been using it for many years.
Any confusion as to corporate identity or logo is duly denied.
Mistaken identity
There is no basis for any mistaken identity, this is a company trading in Louisiana, not in Germany. The orwo.studio domain does not sell goods or services to Germany and is a USA bricks and mortar company.
Consequently any mistaken identity is duly denied.
Confusion of clients or goods
There is also no basis for a confusion of goods with the disputing party (orwo net), as this studio company is not trading in the same field – it does not sell any physical goods and it is not active in the photochemical field. The studios only sells motion picture services and the hire of physical soundstages and cameras for filmmaking purposes.
The only USA company the domain could be confused with is the Campbell Representation Inc, which orwo.studio has a license from.
Consequently any potential confusion of goods or services is duly denied.”
The Panel would preface its discussion by noting that it has at best an incomplete picture of the background to this dispute and what has happened. It is for the Complainant to prove, on the balance of probabilities, the necessary elements it has to show if the Complaint is to succeed. It is not the function of the Panel to make lengthy enquiries or to seek further information to make good deficiencies in the Complainant’s case. Similarly if the Respondent wishes the Panel to take account of any matters he relies upon he needs to explain them properly and, if appropriate provide relevant supporting documentation. In the present case neither party has provided the Panel with adequate material. There are a number of specific problems with the material before the Panel including the following.
Neither party has thought it necessary to explain to the Panel who the Respondent is and what he does. A simple Internet search locates the Linkedin profile of a Jake Seal who is an actor and producer and who clearly has a number of interests in film and TV businesses around the world including being described as the Principal of Orwo studios in Louisiana. The Panel infers this is the Respondent.
It would appear that the Respondent has an interest in various businesses in Germany which have sought to use the term “Orwo” and as a result have come into conflict with the Complainant. This has resulted in various court proceedings and injunctions. The Panel has not been provided with proper details of these and the various documents provided are in German. However the Respondent has not disputed the matters set out in the Complaint. The Panel is nevertheless left in doubt as to exactly what these cases involve and what their significance is to the present Complaint. The Panel also notes that the Respondent says that the Complainant granted permission via Filmotec Germany to use the term “Orwo”. The Panel has not been provided proper evidence of whatever took place and does not know what this involved. The Complainant has not however disputed this allegation despite the Procedural Order providing it an opportunity to do so. The record is accordingly unclear.
The Complainant initially alleged in the Complaint that the Respondent had made efforts to acquire the Complainant’s trademark and after these failed used it unlawfully. The Panel sought further information about this allegation in the Procedural Order. The Complainant declined to provide any such information citing commercial confidentiality. That is a very odd state of affairs in a proceeding where the Complainant accuses the Respondent of acting in bad faith. The Panel is unable to attach any significance to this allegation.
The Complainant relies upon the ORWO block logo and the Respondent’s use of it as part of its case. It has not however explained to the Panel anything about that logo or how it uses it (if at all). It does not appear to be a registered trademark (though it does feature as part of the US ORWO Trademark Application). The Complainant’s present website does not so far as the Panel can see make use of the ORWO block logo anywhere but (as the Respondent notes) uses a completely different logo. Again a simple Google search appears to show that the ORWO block logo was historically applied to items (films, tapes, etc.) manufactured by the Complainant’s predecessors. The Respondent has made reference to the logo being similar to a logo used by Orwo Haus. The Panel does not know anything about that organisation but has identified a website (“www.orowhaus.de”) which does indeed make use of the logo. The website is in German but appears to relate to some sort of music venue called “orwohaus”. The Panel does not know anything further about this organisation.
The position in the United States is extremely unclear. There is no evidence before the Panel as to the Complainant or its predecessors having any business in the United States. It nevertheless seems clear that the Respondent has adopted the name ORWO and the ORWO block logo because of its historic association with the ORWO business in Germany. His own website states: “ORWO FAMILY. ORWO is a brand of Excellence in Color and Black & White film products, Made in Germany. ORWO has formed a worldwide Family made up of Film Studios, Post Production facilities, Film Labs, and other companies involved in the development of new techniques in the cine-film sector.” He says he has done so under a license from “ORWO North America (Campbelll Representation Inc)”. The Panel has been provided with no information about who this company is or what it does – although as outlined in the factual background above it has filed the US ORWO Trademark Application. A simple Google search for “orwo north america” locates a website at “www.orwonorthamerica.com” which says “ORWO Film, exclusively distributed and marketed in the Americas, through ORWO North America (ORWO N.A), documents and preserves art, culture and history”. It is not clear what entity operates this website and so it is not clear to the Panel whether this website is anything to do with Campbell Representation Inc.
So far as the ORWO US Trademark Application is concerned the Panel sought further information about this by means of the Procedural Order. Neither Party has provided anything useful. The Complainant stated “The Campbell Representation Inc is unknown to us. The same is true for the US-mark which could not be retrieved”. That is not really a satisfactory explanation. THE ORWO US Trademark Application can readily be retrieved by means of a search for the term ORWO on the publicly available US Patent and Trade Mark Office Website. The Panel would have expected the Complainant to have some sort of position with regard to this application – either it accepts it is legitimate, or it objects to it. Simply ignoring it leaves the Panel in considerable difficulty (see below).
The Respondent now says he has concluded an agreement with the Complainant and appears to suggest that renders the present Complaint redundant. He has not however produced a copy of the agreement in question despite the Center asking him to do so. The Complainant (who was copied in on the Respondent’s submissions to the Center) has not denied that an agreement exists – which the Panel would have expected it to do so were that the case. It seems to the Panel more likely than not that some kind of agreement exists but the Panel does not know what it says. The Panel is left unsure of the present position.
All of the above make the present position extremely unsatisfactory. It is clear that this is not a straightforward case of “cyber squatting” that the Policy is primarily intended to deal with. The Panel considers this is a case which is very close indeed to being simply unsuitable for determination under the UDRP – see Clinomics Biosciences, Inc. v. Simplicity Software, Inc.,WIPO Case No. D2001-0823 (panel declining to rule on the merits after finding that the dispute centered on subject matter outside the scope of the UDRP Policy). However for reasons explained below the Panel has concluded that there is sufficient material before it for it to reach a conclusion under the Policy – in any event the result is the same as in either case the Complaint does not succeed.
Substantive Matters under the PolicyTo succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has rights in the ORWO Trademark. The Panel finds the Disputed Domain Name is identical to this trademark. It is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the present circumstances it seems more likely than not that (i) above applies; (ii) may also apply although in the light of the Panel’s finding on (i) (below) the Panel does not need to address this.
The Respondent says he has been using the Disputed Domain Name for “nearly four years” – it was registered on February 24, 2019, so the Panel assumes the Respondent means he has used it since it was registered. It is used in relation to a film and TV studio business which is clearly a substantial bona fide business. It appears that the proceedings in Germany (see above) all took place in 2021 so it seems to the Panel more likely than not that the Respondent’s use commenced prior to him having any notice of a dispute with the Complainant.
Clearly in these circumstances paragraph 4(c)(i) is potentially applicable. The only issue then is as to the meaning of “bona fide”. It seems to the Panel that paragraph 4(c)(i) cannot simply apply if a business exists which has deliberately adopted another person’s trademark as its name, otherwise the Policy would be inapplicable to all cases in which a respondent was operating a business, which is clearly not its intention. The words “bona fide” must encompass the Respondent’s knowledge and motives in choosing the name in question – if done deliberately to trade off, or take advantage of the Complainant’s name or reputation, then the “bona fide” requirement is not met.
Is this such a case? The Panel has found resolving this issue to be difficult given the facts of this case. The term “Orwo” has clearly been adopted by the Respondent because of its historical connections with the Complainant or its predecessors. The Respondent says however he has a licence to do so from Orwo North America which appears to be a trading name of a company called Campbell Representation Inc. That company has filed the US ORWO Trademark Application. No one has properly explained to the Panel who this company is and whether or not it is entitled to apply for this trademark.
Overall the Panel has reached the conclusion that in these circumstances there is insufficient information before it to reach a conclusion that the Respondent was not acting bona fide. The Panel is reinforced in this view by virtue of the fact that the Respondent has apparently obtained a licence to rights of some kind under the US ORWO Trademark Application. It seems to the Panel that the status of this trademark application, and the Respondent’s rights under it, is a matter which should properly be dealt with by the US Courts, not under the Policy. See in particular Hansgrohe AG. v. Kaiping Aosgrohe Hardware Factory / Wang LibinWIPO Case No. D2010-0954 where the panel stated:
“The Panel notes that in effect the Complainant is requesting the Panel to rule that a registered right owner has no legitimate interest in its registered mark under the Policy. It is commonly agreed that ‘UDRP panels are not equipped to resolve complex disputes – such disputes are better dealt with by the courts’ (Levantur, S.A. v. Media Insight,WIPO Case No. D2009-0608). The Panel concurs and finds that this present matter is better suited to the appropriate court.”
It seems to the present Panel this is a case where a determination that the Respondent lacked a legitimate interest is one which would in substance impinge upon the competence of the US Courts, given the US ORWO Trademark Application. The Panel does not know anything about the company that has made this application and does not think it can safely conclude it was made merely to bolster the Disputed Domain Name. In reaching the conclusion the Panel also has in mind that the Complainant has not sought to oppose the US ORWO trademark application. In this regard it is not clear to the Panel whether the Complainant was aware of this application before the present proceeding but it is now aware of it and has not given the Panel any indication as to what (if anything) it intends to do about it.
The Panel therefore concludes that on balance, so far as the Policy is concerned, the Complainant has not discharged its burden of establishing that the Respondent lacks rights or a legitimate interest in the Disputed Domain Name.
C. Registered and Used in Bad FaithIn the light of the Panel’s finding above the Panel does not need to determine this issue.
7. DecisionFor the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Sole Panelist
Date: December 3, 2021