WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Hans Peter (Hape) Kerkeling v. Dr. Matthias Moench
Case No. DTV2008-0009
1. The Parties
The Complainant is Mr. Hans Peter (Hape) Kerkeling, Hamburg, Germany, represented by Rechtsanw�lte Unverzagt von Have, Germany.
The Respondent is Dr. Matthias Moench, Horni Mesto, Czech Republic.
2. The Domain Names and Registrar
The disputed domain names and are registered with Key-Systems GmbH dba .
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2008. On July 9, 2008, the Center transmitted by email to Key-Systems GmbH dba a request for registrar verification in connection with the domain names at issue. On July 10, 2008, Key-Systems GmbH dba 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”), 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 July 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2008.
The Center appointed Tobias Zuberb�hler as the sole panelist in this matter on August 28, 2008. 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 Complainant Hape Kerkeling is a famous German entertainer and comedian. He was awarded numerous prizes, among them the most prestigious awards of German television.
The Complainant invented the comic character “Horst Schl�mmer”, a fictitious journalist working for the fictitious newspaper “Grevenbroicher Tagblatt”. Schl�mmer’s “look” is grey hair, outdated spectacles, grey moustache, and crooked teeth, combined with always the same shirt, grey trenchcoat and tie. Schl�mmer thinks he is a sex symbol and regularly attempts to kiss female interviewers despite his loose false teeth. To impress women, he boasts to be earning 3’000 euros netto per month. As Schl�mmer, the Complainant published the music singles “Sch�tzelein” and “Gisela”.
The Complainant owns the German word mark HORST SCHL�MMER.
The Complainant entered into an advertising contract with Volkswagen for a viral marketing campaign to raise awareness for the VW Golf. A story was developed about Schl�mmer taking driving lessons and taking the driving exam. In the course of this campaign, the website was created by the Complainant. Videos about Schl�mmer’s driving lessons were uploaded in January 2007. In March 2007, the website was launched, after Schl�mmer took the driving test.
The campaign was active between January 23 and September 17, 2007. Numerous TV shows, newspaper articles etc. covered the story of Schl�mmer. Videos of Schl�mmer have been downloaded over seven million times and ranked No. 1 in the iTunes podcast ranking.
After the end of the campaign, Volkswagen had the disputed domain names and cancelled because the costs amounted to more than EUR 6’000 per year.
The Respondent registered the domain names at issue on 25 January 2008 and shows pornographic content and links to sex services on the respective website.
On February 21, 2008, the competent court in Cologne, Germany, issued a preliminary injunction against the Respondent to cease the use of the disputed domain names for entertainment services. The Respondent has not complied with this court order.
5. Parties’ Contentions
A. Complainant
The Complainant objects to the use of the disputed domain names by the Respondent and bases his Complaint on the following grounds:
1. The domain names at issue are confusingly similar with the Complainant’s trademark. The addition of the generic terms “blog” and “hat Golf” to the disputed domain names does not reduce the confusing similarity.
2. The Respondent makes no legitimate non-commercial or fair use of the domain name at issue. The Complainant has no connection, affiliation or other relationship with the Respondent, nor has the Complainant authorized the Respondent to use the Complainant’s mark in any manner whatsoever.
3. The Respondent is currently holding the domain name for the purpose of selling advertising space to the porn industry. The Respondent has thus registered and uses the disputed domain names with the only purpose to divert customers to its own website for commercial gain. Accordingly, the domain names were registered and are being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain names at issue are confusingly similar to the Complainant’s registered trademark HORST SCHL�MMER. A non-distinctive addition of the generic terms “blog” and “hat Golf” (“has a Golf car”), respectively, to the distinctive part of the Complainant’s trademark (SCHL�MMER) does not sufficiently differentiate the domain names from the Complainant’s mark (cf. e.g. Accor v. Domains by Proxy, Inc./Ostrid Company,WIPO Case No. D2008-0707, ).
The Complainant has thus fulfilled the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the domain names at issue. The Panel also refers to the use of the disputed domain names as explained under section 4 above. The Complainant, having made a prima facie case which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Considering the factual background of this case as set forth under section 4 above, it is apparent that the Respondent intentionally intends to attract consumers to its website for commercial gain by creating confusion about the source and sponsorship of its website.
It may also reasonably be inferred that the Respondent knew about the Complainant and the prior use of the disputed domain names for the VW Golf campaign when it registered the disputed domain name.
The Panel thus finds that the Respondent’s conduct constitutes bad faith registration and use, thus fulfilling paragraph 4(a)(iii) 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 names and be transferred to the Complainant.
Tobias Zuberb�hler
Sole Panelist
Dated: September 11, 2008
Full & Egal Universal Law Academy