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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VITERRA AG v. ZOFIA JANZ
Case No. D2000-0729
1. The Parties
Complainant is VITERRA AG, Grugaplatz 2, 45131 Essen, Germany.
Respondent is Ms Zofia Janz, ul. Szkolna 5, 62-080 Tarnowo Podgуrne, Poland.
2. Domain Name and Registrar
The Domain Name at issue is "viterra.com"; hereinafter referred to as the "Domain Name". The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received VITERRA AG’s complaint on July 3, 2000 by e-mail. An Acknowledgement of Receipt of Complaint was sent by the Center to the Complainant (and Respondent), by e-mail dated July 7, 2000.
On July 7, 2000 a Request for Registrar Verification was transmitted to the Registrar, Network Solutions, Inc. requesting inter alia confirmation that the Uniform Domain Name Dispute Resolution Policy applies to the Domain Name. On July 14, 2000, Network Solutions, Inc. transmitted via e-mail to the Center, Network Solutions’ Verification Response, confirming that the Registrant is (Ms.) Zofia Janz and that Network Solutions’ 5.0 Service Agreement is in effect. Paragraph 8 of this Service Agreement incorporates the Policy by reference.
A Formal Requirements Compliance Check was completed by the Center on July 14, 2000. The Center verified that the Complaint meets the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).
On July 17, 2000 a Notification of Complaint and Commencement of Administrative Proceeding was transmitted to Respondent. In this notification the Center advised that the Response was due by August 6, 2000. This communication was sent to the Respondent by means of post/courier (with enclosures), facsimile (complaint without attachments) and e-mail (complaint without attachments).
On August 8, 2000 having received no Response from Respondent, the Center issued to both parties a Notification of Respondent Default. This Notification was sent to Respondent by e-mail.
On August 9 the Center received an e-mail from Ms Zofia Janz (from firstname.lastname@example.org). In that e-mail Ms Janz confirmed that she received the Acknowledgement of Receipt of Complaint dated July 7, 2000 but complains that she did not receive the Notification of Complaint and Commencement of Administrative Proceeding dated July 17, 2000. She also indicated that the domain name had been sold to a third party (Mr J. Mackowiak) by agreement dated June 14, 2000.
By e-mail of the same date the Center advised Ms Janz that the Notification of Complaint and Commencement of Administrative Proceeding had been sent to Ms Janz on July 17, 2000 by e-mail, courier and fax and that the e-mail addresses used for this communication were the same addresses that were used when sending the Acknowledgement of Receipt of Complaint dated July 7, 2000, receipt of which had been confirmed by Ms Janz. The Center also advised Ms Janz that according to para 8 of the Policy, a transfer of domain names was not possible during a pending proceeding. The Center received no further communications from Ms. Janz.
On August 10, 2000 in view of Complainant’s designation of a single panelist, the Center invited Mr. Reinhard Schanda to serve as Panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.
Having received Mr. Schanda’s Declaration of Impartiality and Independence and his Statement of Acceptance dated August 11, 2000 the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, dated August 15, 2000 in which Mr. Schanda was formally appointed as the Sole Panelist.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative 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 Respondent." This means of effort obviously had been successful since Ms Janz had confirmed receipt of the initial communication (the Acknowledgement of Receipt of Complaint). Therefore, and since Respondent has not provided a Response to the subject matter of the case itself, according to Paragraph 5(e) and 14(a) of the Rules, the Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from Respondent.
4. Factual Background
Complainant is owner of the following trademark registrations including the term "VITERRA" (see Annex 3 to the Complaint):
- German trademark no. 39904056 (word-mark "VITERRA")
- German trademark no. 39920612 (word-device-mark including the term "VITERRA")
- German trademark no. 39920614 (word-device-mark including the term "VITERRA")
- International trademark no. 724378 (word-mark "VITERRA" with protection in various countries including Poland )
Complainant has also applied for trademark protection for the term "VITERRA" in Australia, Brazil, Greece, Ireland, South Korea and the United States (see Annex 4 to the Complaint).
Complainant developed its mark and name in 1999 and has since invested significant resources in developing and promoting its "VITERRA" mark. The Complainant has been using its "VITERRA" marks in Germany since at least June, 1999 and in other countries, including Poland, since shortly thereafter. The mark already seems to be well recognized by consumers.
Complainant has incorporated numerous subsidiaries in various countries using the name "VITERRA". including incorporating a subsidiary in Poland named "Viterra Energy Services Sp.z.o.o.".
The Respondent is not a licencee of Complainant, nor is he otherwise authorised to use the Complainant’s mark.
The website under to the Domain Name as viewed on May 16, 2000 displayed hyperlinks to the Complainant’s website as well as to the Complainant’s major competitors (see Annex 6). It also disclosed the German Phrase "Wir laden SIE bald ein!" ("we will invite you soon").
Upon investigation on behalf of the Complainant the Respondent by telephone offered the Domain Name to the Complainant for sale on June 8, 2000.
5. Parties Contentions
Complainant contends that Respondent has registered the Domain Name which is identical to Complainant’s "VITERRA" mark, that Respondent has no rights or legitimate interests in respect of the Domain Name and in view of the Complainant’s trademark registrations in numerous countries could not legitimately acquire trademark rights for the term "VITERRA", and that the Domain Name has been registered and is being used in bad faith. Consequently, Complainant requires the transfer of the Domain Name registration to the Complainant.
Respondent has not contested the allegations of the Complaint and is in default.
6. Discussions and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1. that the Domain Name registered by the Respondent is identical to the trademark in which the Complainant has rights; and
2. that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
3. that the Domain Name has been registered and is being used in bad faith.
(1) Identity or Similarity of Trademark and Domain Name
The relevant part of the Domain Name is "VITERRA". This second level Domain Name is identical to the word marks of the Complainant "VITERRA". It is therefore not necessary to determine whether the word-device-marks of the Complainant (which include the word VITERRA) are also to be regarded as identical or similar to the Domain Name.
(2) Rights or Legitimate Interests of Respondent in Domain Name
According to Paragraph 4(c) of the Policy for purposes of Paragraph 4(a)(ii) the following circumstances, in particular but without limitation, shall demonstrate rights or legitimate interests of Respondent:
(i) Respondent’s 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, before any notice to Respondent of the dispute; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has no trademark or service marks rights; or
(iii) Respondent is making a legitimate non commercial 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.
According to the principle negativa non sunt propanda it is sufficient for the Complainant to establish a prima facie evidence that the Respondent lacks a legitimate interest in the Domain Name (see also Eauto, Inc. v. Available-Domain-Names.com, d/b/a Intellectual-Assets.com, Inc., case no. D 2000-0120, para 6.1.).
From the evidence provided by Complainant with the Complaint nothing seems to indicate that Respondent has any rights or interests in respect of the Domain Name according to Paragraph 4(c)(i-iii) of the Policy, or any other rights legitimate interest. It would have been the task of the Respondent to show such legitimate interests in the Domain Name within a Response to the Complaint. Based on the Complaint the Administrative Panel is convinced that the Respondent has no rights or legitimate interest in respect of the Domain Name.
(3) Registration and Use in Bad Faith
According to Paragraph 4(b) of the Policy for the purpose of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, shall be evidence of the registration and use of a Domain Name in bad faith:
(i) Circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name; or
(ii) Respondent has registered the Domain Name in order to prevent the owner of the trademark from reflecting the mark in a corresponding Domain Name, provided that Respondent has engaged in a pattern of such conduct;
The Domain Name was registered several months after the Complainant registered its trademarks and started to use the term "VITERRA" on the markets. Complainant gave evidence that on May 16, 2000 the website under the Domain Name viterra.com displayed the Complainant’s trademark and logo (Annex 6; according to the Complaint designed as a hyperlink to the Complainant’s website at www.viterra.de). It also showed names and logos of competitors of the Complainant. It also included a phrase in German language.
This evidence seems to indicate that the person(s) responsible for the content of the website under the Domain Name on May 16, 2000 had been well aware of the Complainant, its name and the markets the Complainant operates on, since the website also showed specific competitors of the Complainant. The evidence also seems to indicate that the phrase contained on the website in German language was intended to address a German audience, such as the Complainant is.
Complainant also stated that the Respondent had offered the Domain Name for sale on June 8, 2000.
From the evidence provided by Complainant with its Complaint prima facie it seems likely that Respondent has registered the Domain Name for the purpose of transferring the Domain Name to Complainant for valuable consideration and/or to prevent Complainant from reflecting the mark in a corresponding Domain.
It would have been the duty of Respondent to show that the registration of the Domain Name was for other purposes than those mentioned above.
Based on the information given in the Complaint and the evidence provided attached to the Complaint, the Administrative Panel therefore is convinced that the Domain Name has been registered and is being used by Respondent in bad faith as provided by Paragraph 4(a)(iii) of the Policy.
In light of the foregoing, the Administrative Panel decides that the Domain Name registered by Respondent is identical to Complainant's VITERRA mark, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that Respondent’s Domain Name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Administrative Panel requires that the registration of the Domain Name "viterra.com" be transferred to Complainant.
Dr. Reinhard Schanda
Date: August 23, 2000