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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ECKES-GRANINI GmbH & Co. KG v. Weitner A. G.
Case No. D2000-1116
1. The Parties
Complainant is Eckes-Granini GmbH & Co. KG, Ludwig-Eckes-Allee 6, D 55268 Nieder-Olm, Germany.
Respondent is Weitner A.G, Missionsstrasse 68, CH 4055 Basel, Switzerland.
2. Domain Name and Registrar
The Domain Name at issue is "granini.com"; hereinafter referred to as the "Domain Name". The registrar is Network Solutions, Inc.
3. Procedural History
WIPO Arbitration and Mediation Center (the Center) received ECKES-GRANINI GMBH & CO. KG’s complaint on August 24, 2000, by e-mail. An Acknowledgement of Receipt of Complaint was sent by the Center to the Complainant by e-mail dated August 25, 2000.
On August 30, 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 August 31, 2000, Network Solutions, Inc. transmitted via e-mail to the Center, Network Solutions’ Verification Response, confirming that the Registrant is WeitnerA.G, and that Network Solutions’ 4.0 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 to verify 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). As a result of this check on August 31, 2000, a Complaint Deficiency Notification was sent to Complainant by the Center indicating that Complainant had to submit to the jurisdiction of the courts at the location of the domain-name holder’s address according to Paragraph 1 and 3(b)(xiii) of the Rules. With Amendment to the Complaint, dated September 2, 2000, Complainant submitted to said jurisdiction.
On September 13, 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 October 2, 2000. This communication was sent to the Respondent by means of post/courier (with enclosures) and e-mail (Complaint without attachments) to firstname.lastname@example.org and "email@example.com".
On September 18, 2000, the Center received a Mail Delivery notice indicating that the address "firstname.lastname@example.org" had permanent fatal errors (and could therefore not be delivered). The Center did not receive a mail delivery failure message regarding the address email@example.com.
The Notification (plus Complaint) could not be delivered to Respondent by post. It was returned from the post authority to the Center with the indication "refusй".
On October 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 (to firstname.lastname@example.org).
On October 23, 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. Mr. Schanda’s Declaration of Impartiality and Independence and a Statement of Acceptance, dated 25 October 2000, was sent to the Center.
On October 23, 2000, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date 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." The only contact information given by Respondent in its registration data information in Registrar’s Whois database were the postal address used by the Center (unsuccessfully) and the e-mail address email@example.com also used by the Center. The communications also had been sent to "firstname.lastname@example.org" (unsuccessfully). The Domain Name does not resolve to an active web page indicating further contact possibilities. Therefore the Center followed each of the instructions of Paragraph 2(a) of the Rules.
From the evidence of Annex 17 (immediate response of Mr. M. Dülgar to the e-mail sent to "email@example.com") it can be concluded that this e-mail account is active. Therefore it also seems likely that Respondent had received the various e-mail communications sent to Respondent by the Center.
Therefore, and since Respondent has not provided a Response, 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 for the term "granini" (see Annex 2-10 to the Complaint):
- CTM No 121780 (word mark registered August 21, 1998 with various older priorities in the EC member states)
- International trademark No 633 787
- International trademark No 514 683
- International trademark No 482 453
- International trademark No R 383 132
- German trademark No 396 959
- German trademark No 2 086 541
- German trademark No 467 786
- US trademark No 1,845,829
- Canadian Trademark No TMA 222427
Complainant is also owner of a large number of other trademarks world-wide, at least containing the term "granini" amongst other brand elements.
The brand "granini" is notorious to the Panel. From the allegations in the Complaint, the evidence about sales figures, market shares and promotional activities provided with the Complaint, as well as from his own experience with the trademark "granini", the Panel concludes that the trademark "granini" is a well known trademark at least in the German speaking countries of Europe.
Respondent is not a licensee of Complainant, nor is he otherwise authorised to use the Complainant’s mark.
The Domain Name had been registered on February 4, 1999 (see Annex 1 to the Complaint).
Upon investigation on behalf of the Complainant the Respondent by e-mail, dated July 27, 2000, offered the Domain Name to the Complainant for sale for a price of USD 6.000.-- (see Annex 17 to the Complaint). Respondent is also owner of a number of other domain names, including names reflecting generic terms and geographical names (see Annex 18 to the Complaint).
5. Parties Contentions
Complainant contends that Respondent has registered the Domain Name which is identical to Complainant’s "granini" mark, that Respondent has no rights or legitimate interests in respect of the Domain Name, 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 or confusingly similar 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 "granini". This second level Domain Name is identical to the word marks of the Complainant "granini". It is therefore not necessary to determine whether the word-device-marks of the Complainant (which include the word granini) 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 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, paragraph 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 or 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;
Due to the fact that the trademark "granini" has been well known at the time of registration of the Domain Name also in Switzerland (seat of Respondent), it seems likely that Respondent had been well aware of the trademarks of the Complainant. Complainant also proved that the Respondent had offered the Domain Name for sale (see above).
From this 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 "granini" 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 "granini.com" be transferred to Complainant.
Dr. Reinhard Schanda
Date: October 30, 2000