LeitsätzlichesAuch vor der WIPO zählen Städtenamen als Kennzeichen, wobei die Stadt Potsdam in weiser Vorhersehung auch noch eine Marke "Potsdam" für sich registriert hat. Auch dieser Panelist ist der Ansicht, dass Touristen, die nach der berühmten Stadt Potsdam suchen, in den Browser zuerst "potsdam" eingeben. Es nützte dem Inhaber der Domain nichts, dass er sie von einer GmbH kostenlos nutzen ließ - es muss ihm bekannt gewesen sein, so der Panelist, dass die Domain für die GmbH von hohem Nutzen sein würde. Erschwerend hinzu kam, dass der Respondant nicht nur eine, sondern gleich vier Domains "Potsdam" auf sich registrieren ließ.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fall Nummer: D2002-0856
Entscheidung vom 1. November 2002
1. The Parties
The Complainant is the city of Potsdam, a town located in Germany.
The Respondent is Transglobal Networx ... USA.
2. The Domain Name and the Registrar
The domain names at issue are <potsdam.com>, <potsdam.net>, <potsdam.org>, <potsdam.info> (the "Domain Names"). The registrar of <potsdam.com, potsdam.net, potsdam.org> is CORE Internet Council of Registrars. The registrar of <potsdam.info> is RegistrarsAsiaPty Ltd, Australia (collectively the "Registrars").
3. Procedural History
On September 12, 2002, the Complainant filed by e-mail a complaint (the "Complaint") with the WIPO Arbitration and Mediation Center (the "Center"). The Center received a hard copy of the Complaint on September 16, 2002. The Center acknowledged receipt of the Complaint on September 12, 2002.
On September 12, 2002, the Center requested the Registrars to verify the Domain Names in dispute. The Registrars confirmed on September 13, 2002, that they are the Registrars of the Domain Names, that the registrant of the Domain Names is Transglobal Networx Inc., 1461 A first Avenue, 360, New York City, NY 10021-229 USA and that the Policy is applicable to the Domain Names in dispute.
The Center proceeded to verify whether the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "ICANN Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "WIPO Rules"), including the payment of the requisite fees. On September 17, 2002, the Center concluded that the Complaint satisfies all of these formal requirements.
On September 17, 2002, the Center sent a copy of the Complaint to the Respondent and also to the company Potsdam.com Internetservice GmbH (the "GmbH") which is currently using the disputed Domain Names. The Center indicated this date as the formal date for the commencement of the administrative proceeding and October 7, 2002, as the last day for Respondent to file a Response. Instead of filing a Response, Respondent sent an e-mail on October 7, 2002, to the Center alleging that Complainantâ€™s counsel was not "regularly authorized" by Complainant. This e-mail evidences that Respondent had actual notice of the Complaint.
On October 8, 2002, the Center notified the Respondent that the Policy does not require any specific formalities to undertake representation of a party and further notified Respondent that it had failed to meet that deadline for filing a Response and was, therefore, in default.
On October 17, 2002, the Center informed the Parties that an administrative panel (the "Panel") had been appointed and transferred the file to the Panel.
The Panel finds it was properly constituted in compliance with the ICANN Rules and the WIPO Rules and the panelist issued a Statement of Acceptance and Declaration of Impartiality and Independence.
Having reviewed the communication records in the case file, the Panel finds that the Center has discharged its responsibility under paragraph (2)a of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Panel shall issue its Decision without the benefit of any Response from the Respondent.
4. Factual Background
The Complainant is the city of Potsdam, an ancient and well-known city in Germany. This city is famous, inter alia, as a tourist destination and the site of the well-known castle "Sanssouci".
The Complainant is the registered owner of the German trademark 39710308 "Potsdam" a copy of which is attached to the Complaint (Annex 4a. According to the Annex 4 of the Complaint, the Complainant filed this trademark as word- and design mark on March 1, 1997 for various goods and services including advertising, business administration, educational and cultural events, computer programming etc. This trademark was registered on April 22, 1997.
The Respondent is the registrant of the disputed Domain Names. As the Respondent is in default, no information regarding the business of the Respondent is available. However, the Respondent is currently permitting the GmbH to use the disputed Domain Names. The GmbH was founded in 1998, i.e. after the registration of Complainantâ€™s trademark, and is currently advertising its IT services on websites posted under the Domain Names.
5. Parties' Contentions
- that the Complainantâ€™s trademark and the disputed Domain Names are identical;
- that the Respondent has no right or legitimate interests to the Domain Names at issue because neither Respondentâ€™s activities nor its name have any connection to the name "Potsdam";
- that the Respondent has registered and is using the disputed Domain Names in bad faith and with the sole objective to mislead Internet users searching for information from and about the Complainant to third partiesâ€™ websites;
- that the Respondent is renting the disputed Domain Names to the GmbH for valuable consideration in excess of Respondentâ€™s out-of-pocket costs directly related to the Domain Names;
- that the Respondent is attempting to attract for financial gain to the GmbHâ€™s website Internet users expecting to find information on the Complainant.
The Respondent did not file any Response to the Complaint.
6. Discussion and Findings
To have the disputed Domain Names transferred to it, Complainant must prove each of the following (Policy, paragraph 4(a)):
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the Respondent's domain name has been registered and is being used in bad faith.
Identity or Confusing Similarity
The Panel notes that the abusive registration of geographical indicators does not per se fall within the scope of the Policy; where, however, the Complainant owns a trademark that includes, as a part of the mark, a geographic term, such trademark can be invoked in the sense of paragraph 4(a)(i) of the Policy (see for example WIPO Case D2002-0273 <sachsen-anhalt.com> with further references; WIPO Case D2000-0505 <Barcelona.com>).
The Complainant has shown that it owns a registration of the trademark "Potsdam" as word- and design mark.
The Panel finds that the trademark and the disputed Domain Names are confusingly similar and that the Complainant has established element (i) of the Policyâ€™s paragraph 4(a).
Legitimate Rights or Interests
As mentioned above in section 3, the Respondent has not filed a Response and is therefore in default. In those circumstances when the Respondent has no obvious connection with the disputed Domain Names, the prima facie showing by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest exist. WIPO Case No. D2002-0273 <sachsen-anhalt>; WIPO Case No. D2002-0521 <volvovehicles.com>.
Although the Complaint has been notified to both the Respondent and the GmbH, the Respondent has not filed a Response. The Respondent has not alleged nor presented any evidence of rights or legitimate interest in using the Domain Names. Therefore, the Panel finds that the Complainant has established element (ii) of the Policyâ€™s paragraph 4(a).
Registration and Use in Bad Faith
The Complainant alleges that the Respondent registered the Domain Names for the purpose of renting the Domain Names to the GmbH for valuable consideration in excess of out-of-pocket costs directly related to the Domain Names. While it is clear that the GmbH is currently using the Domain Names, there is no evidence on the record that the Respondent requested and/or received any amount of money from GmbH.
Paragraph 4(b) of the Policy sets out four non-exclusive criteria which, when present in the particular case, shall constitute evidence of "registration and use of a domain name in bad faith". According to paragraph 4 (b)(iv) of the Policy, there is evidence of bad faith when the Respondent by using the domain name intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainantâ€™s mark.
When looking for information on the Internet about the city of Potsdam, it is likely that Internet users will start the search by entering a domain name consisting of the name "Potsdam" into their browser. By doing so, such users would normally expect to reach some official body of the city Potsdam itself. For the public at large, when thinking of "Potsdam", the first reasonable thought is the city of Potsdam and not a company offering its IT services under such name. It is also obvious that the Respondent is allowing the GmbH to advertise its services for commercial gain. The Respondent must have been aware that the use of the Domain Names by the GmbH would divert to the GmbHâ€™s website people looking for the official site of the Complainant (WIPO Case No. D2000-1767 <unistuttgart.com>). A further indication of bad faith is that the Respondent registered the name „Potsdam" in four gTLDs, thereby effectively preventing the Complainant from adopting a domain name corresponding to its name and trademark under such gTLD.
The Panel, therefore, finds that the Respondent registered and used the Domain Names in bad faith pursuant to paragraph 4(b)(iv).
For all of the foregoing reasons, this Panel decides that the Domain Names registered by the Respondent are confusingly similar to the trademark "Potsdam" owned by the Complainant, that the Respondent does not have rights or legitimate interests in respect of these Domain Names, and that the Respondent registered and used the Domain Names in bad faith. Accordingly, the Panel requires that the registration of the Domain Names be transferred to the Complainant.