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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Werner Kupper [Executor of the Estate of The late Herbert von Karajan] and Eliette von Karajan v. Karajan Pty Ltd
Case No. D2000-1578
1. The Parties
The Complainants are Dr. Werner Kupper, Executor of the late Herbert von Karajan, c/o Kupper Lehner & Partner, Lowenstrasse 11, P.O. Box 8023 Zurich, Switzerland and Mrs. Eliette con Karajan of Via Suvretta 55, 7500 St. Moritz, Switzerland.
The Respondent is Karajan Pty Ltd of P.O. Box 250, Ashmore City, Queensland 4214, Australia.
2. The Domain Name and Registrar
The domain name at issue is: <karajan.com> and the Registrar is: Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on November 16, 2000 [electronic version] and on November 17, 2000 [hard copy]. The Center verified that the Complaint satisfies 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]. The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is December 15, 2000.
On November 21, 2000 the Center transmitted via email to Network Solutions, Inc. a request for registrar verification in connection with this case and on November 29, 2000 Network Solutions, Inc. transmitted by email to the Center Network Solution's verification response confirming that the registrant is Karajan Pty Ltd and that the contact for both administrative and billing purposes is John Webster.
The Complaint originally submitted contained a request by the Complainant that Exhibits 9 and 10 have certain material redacted before being referred to the Respondent. On November 28, 2000 the Complainant submitted the Complaint with the two Exhibits duly redacted, receipt of which was acknowledged by the Respondent by email dated December 13, 2000.
Having verified that the Complaint [with the Exhibits 9 and 10 so redacted] satisfied the formal requirements of the Policy and the Rules, the Center transmitted on December 15, 2000 the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by January 3, 2001. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to Karajan Pty Ltd, Mr John C Webster, P O Box 250, Ashmore City, Queensland 4214. Australia.
A Response was received from the Respondent on December 20, 2000 [electronic version] and January 3, 2001 [hard copy]. Acknowledgement of Receipt of Response was sent by the Center on December 22, 2000 to the parties.
On January 12, 2001 the Complainants made a supplemental filing in answer to the Response. Whilst largely repetitive of the submissions made in the Complaint, the Panel decides to admit this Supplemental filing on the bases that it relates to one matter raised in the Response which the Complainant had no reason to deal with in the Complaint and that by admitting this Supplemental filing from the Complainant and permitting the Respondent a right to reply, this administrative proceeding is not being unduly delayed. The Panel has in mind the requirement under the Policy [paragraph 11(b)] that both parties are to be treated with equality and that each party is given a fair opportunity to present its case.
Having received on January 10, 2000 Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was January 28, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with 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 para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Complainants' Supplemental Filing of January 12, 2001, the Respondent's Submissions in Reply of January 26, 2001, the Policy, the Rules and the Supplemental Rules.
4. Factual background
4.1 The Complainants
4.1.1 The Complainants are Dr Werner Kupper, the Executor of the Estate of the late Herbert von Karajan, and Mrs Eliette von Karajan, Herbert von Karajan's widow.
Herbert von Karajan
4.1.2 Herbert von Karajan was an orchestral conductor with a worldwide reputation. He served as principal conductor of orchestras including the Berlin Philharmonic: the Vienna Philharmonic; and the Vienna Symphony Orchestra. He was Artistic Director of the Salzburg Festival of Music and Founder of the Salzburg Easter Festival. He was awarded a number of Honorary Doctorates and received a great many awards in the field of classical music, including the Gold Medal of the Royal Philharmonic Society in London and the UNESCO International Music Prize.
4.1.3 Herbert von Karajan's international repute was enhanced by his many world tours with the Berlin Philharmonic Orchestra to the Soviet Union, the United States and Japan.
4.1.4 Herbert von Karajan's work has been released on over 400 compact discs (CDs), 20 DVDs and 20 VHS tapes. More than 200 books have been published referring to his life work. Leading music labels, such as EMI, Deutsche Grammophan (Universal Music Group) and Sony are still producing works of Herbert von Karajan. More than 200 Million CDs and traditional vinyl long playing records have been sold of Herbert von Karajan's work.
4.1.5 Herbert von Karajan died at the age of 81 in July 1989 while rehearsing for Verdi's "Un ballo in Maschera" in Salzburg.
Exploitation of the Herbert con Karajan Name
4.1.6 In 1993 the Estate of Herbert von Karajan licensed use of, inter alia, his name to advertise Seiko watches.
4.1.7 In 1998 the Estate licensed use of his name to Volkswagen AG for marketing and public relations purposes.
4.1.8 The Herbert von Karajan Centrum Wien Ges.m.b.H was formed in 1998 to promote the name and legacy of the late Herbert von Karajan. A booklet in German published by the Center setting out its Year 2000 programme is submitted with the Complaint.
4.1.9 The Baden-Badener Pfingst Festspiele is a classical music festival taking place in Baden-Baden. The festival is internationally recognised. The Herbert von Karajan name is prominently used to support and sponsor the Festival. A booklet (in German) produced by the Baden-Baden Festival for Year 20001 is exhibited to the Complaint. That booklet contains a photograph of Herbert von Karajan whose name is dedicated to that part of the Festival from May 31 to June 10, 2001.
4.1.10 Herbert von Karajan's name continues to be used for the Salzburg Easter Festival, originally, founded in 1969 [see, paragraph 4.1.2. ante].
The Complainants' Trade Marks
4.1.11 The Complainants do not have registered trademarks for the names Herbert von Karajan or Karajan. However, they do assert that both names subsist as unregistered trademarks. In that respect, they point to the Swiss Unfair Trade Law, to common law rights in countries such as the United States of America, the United Kingdom and Australia and to (unspecified) rights of privacy, personality and name.
4.1.12 The Complainants assert that the abbreviated name Karajan is interchangeably used with the full name Herbert von Karajan and that both have been and continue to be synonymous with a "high reputation and high quality standards in music and art". The names both function as trade marks, as evidenced by the licensing and other promotional uses made of them (see above). In support of this, the Complaint cites Cases D2000-00014 and 00015 [Bennett Coleman & Co Ltd concerning the marks The Economic Times and the Times of India]: 0210 [Julia Roberts]: 0229 [Cho Yong Pil, a famous Korean pop music artist] and 0235 [Jeanette Winterson].
4.2 The Respondent
4.2.1 The Response states that the Respondent Company
"Karajan Pty Ltd was incorporated in 1984, has been in business ever since this time, we have exhibited at trade shows around the world under our company name and as an extension of our other forms of company awareness we registered our company name as a domain name in 1997."
4.2.2 The Respondent was purchased by Mr Webster's accountant as a shelf company under the name, Karajan Pty Ltd.
The Respondent's Business
4.2.3 The Response states that the Respondent
"… is an entrepreneurial company that has innovative products and unique business opportunities that are offered on our website Karajan.com. Karajan Pty Ltd has spent well in excess of 3,000 internet hours promoting the web presence of karajan.com and as well as the main domain site of karajan.com we have in excess of 50 associated sub-directories that are all extensions of the domain name karajan.com and rely solely on the main domain name for their internet existence."
4.2.4 By using the LYCOS search engine, the Respondent states that the user will locate 57 websites about Karajan Pty Ltd. The Response exhibits the following sites entitled:
- Manufacturer of Promotional, Advertising, Incentive Products and Rent-A-Pink-Pick-Up.
- Canhandles - we are offering sole exclusive State Master Franchises and Exclusive Area Franchises suitable for retail sales, corporate promotions and incentives.
- Domain Name Registration. Search for a domain name here.
- I Waz Framed Business Opportunity - supplying personalised license number plate frames and including mobile billboards which advertise a customer's business.
- Team Minchin Print Sets - colour prints from original oil paintings by Eric and Rozanne Minchin.
5. The Parties' Contentions
5.1 The Complainants
The Complainants contend that the Respondent has registered as a domain name a mark which is essentially the same as the Complainants' marks HERBERT VON KARAJAN and KARAJAN, which marks have been and continue to be synonymous with a high reputation and high quality standard in music and art. The Complainants also contend that the Respondent has no rights or legitimate interests in respect of the domain name in issue, that the Complainants have not consented to use of the marks by the Respondent and that the Respondent has registered and is using that domain name in bad faith.
5.2 The Complainants' rights in the two Trade Marks
The Complainants assert trade mark rights on the bases stated in paragraphs 4.1.11 and 12 (ante).
The Respondent does not appear to challenge the subsistence of such rights.
5.3 Identical or Confusingly Similar
- The Complainants state that use by the Respondent of the domain name in issue, albeit for a website the content of which has nothing to do with the late Herbert von Karajan infringes the Complainants' long lasting existing legal rights.
- Further, the Complainants say that use by the Respondent is to attract internet users to his website by creating a likelihood of confusion with the trademark and name KARAJAN.
The Respondent's case is as follows:
- The domain name and the website to which it resolves do not purport to be associated in any way with the image of the late Herbert von Karajan. The website and its associated sub-directories do not promote music and are not in any, shape or form passing off the Respondent's business as or for that of activities now carried on by the Complainants under the HERBERT VON KARAJAN name or mark.
- The Respondent does not seek through its domain name any association with the Complainants’ said activities.
- The Respondent has been trading since 1984 under the corporate name, Karajan Pty Ltd, without occasioning confusion with the activities of the Complainants. The Respondent is aware of no contact by a consumer using the domain name in issue seeking information on or contact with the Herbert von Karajan Foundation.
- There are other third party uses of the KARAJAN name and mark, for example the domain name karajan.net was registered on April 10, 2000 by a Korean Company [Tak, Soonho] which manufacturers and sells injection moulding machinery.
In their Supplemental Submission of January 12, 2001 the Complainants state that, as a result of their protest, the holder of the <karajan.net>domain name has ceased using that name which is no longer in operation.
5.4 Rights or Legitimate Interests
The Complainants' case is that:
- By the date that the domain name in issue was registered [May 8, 1997], the Complainants' rights in the names and marks KARAJAN and HERBERT VON KARAJAN were already established worldwide, including in Australia, which is where the Respondent's business is based.
- The Respondent's website shows no link to the work or life of Herbert von Karajan.
- The Respondent has never been commonly known by the domain name.
- Use by the Respondent of the domain name in issue infringes the anterior rights of the Complainants in the marks HERBERT VON KARAJAN and KARAJAN [paragraph 5.3 above].
- Any use by the Respondent of the domain name in issue is not in good faith. This is evidenced by the fact that its website offering domain name registration [paragraph 4.2.4 above] offers well known third party trademarks such as 49ers.com; denver-broncos.com; and newyork-giants.com.
The Respondent's case is that:
- Before any notice of the dispute, the Respondent was using the name karajan from 1984 as part of the corporate name Karajan Pty Ltd and from 1997 as the domain name in issue in connection with the a bona fide offering of goods and services; see, paragraph 4.2.4 above.
- That the Respondent has as a business been commonly known by the domain name in issue. In this respect the Respondent states that it has spent in excess of 3,000 internet hours promoting the web presence of <karajan.com> - see, paragraph 4.2.3 above.
- That the Respondent is making a legitimate fair use of the domain name in issue without intent (for commercial gain) to misleadingly divert customers from the Complainants, still less to tarnish the Complainants' marks. The Respondent's use is fair because it is not infringing any trade mark or other rights of the Complainants. Because the Respondent's businesses are so far removed from the activities for which the Complainants use the marks, there can be no intent to divert classical music enthusiasts to the Respondent's website to the detriment of the Complainants' rights or to thereby tarnish the Complainants' rights in the marks.
5.5 Registration and Use in Bad Faith
- The Respondent clearly misappropriated the worldwide fame of the late Herbert von Karajan when adopting its corporate name in 1982, since the preceding year (1981) Herbert von Karajan had conducted 10 concerts in Japan amid much publicity, including presentation of the compact disc audio system with the then President of Sony, Mr Ako Movita. There is a discrepancy as to the year when the Respondent states that he acquired the company, Karajan Pty Ltd. He states that it was in 1982 in a letter to the Complainants dated July 28, 2000 but in the Response states that Karajan Pty Ltd was incorporated on February 29, 1984.
- That it is just not credible that the Respondent when registering the domain name in issue had never heard of the late Herbert von Karajan. It is on a par with maintaining that he had never heard of the Beatles, Michael Jackson or the Rolling Stones either.
- The Respondent is infringing the Complainants' anterior rights in the names and marks HERBERT VON KARAJAN and KARAJAN.
- The Respondent has no rights or legitimate interests in the domain name in issue.
- There is a pattern of conduct of the Respondent making unauthorised use of third party marks, such as the famous basketball teams identified in paragraph 5.4 above.
The Respondent's case is that:
- As a fact, until notice of this dispute, he had never heard of Herbert von Karajan.
- Karajan Pty Ltd is an off the shelf company bought in that name for the Respondent by his accountant in 1982 or 1984.
- The Respondent carried out a standard search of the Whois Database to ascertain the availability of the domain name in issue before it was registered in March 1997 and found that Karajan with all 3 of the .com; .org; and .net suffixes was available.
- That the Complainants did not register a domain name, <karajan.org>, until July 14, 1998 and made no complaint to the Respondent in relation to the domain name in issue until 2 years later.
- Adoption of the domain name <karajan.com> was a national extension of the existing businesses of the Respondent's Karajan Pty Ltd company which had by that time been in existence for some 13 to 15 years.
- That the businesses carried on under the domain name in issue are entirely different to the activities of the Complainants [paragraph 5.3 ante].
- That, having regard to the entirely disparate activities / businesses of the parties, the Respondent manifestly could not have had any intention of disrupting the Complainants' business, nor has registration of the domain name in issue had that effect.
- That the Respondent has made no offer to sell the domain name in issue to the Complainants for valuable consideration in excess of its documented out of pocket expenses relating to that domain name or at all.
- That there has been no attempt to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainants' marks. First, the Respondent has no knowledge of any instance of confusion. Second, the Respondent's activities are so far removed from those for which the Complainants license and use the HERBERT VON KARAJAN and KARAJAN names and marks that it is simply not credible to suggest that by using the domain name in issue the Respondent is seeking to benefit from sponsorship, affiliation or endorsement of its website through using the KARAJAN name / mark.
- That the Respondent's website offering registration of other domain names is entirely unrelated and, therefore, irrelevant to this Complaint. The Respondent states that it does not operate under the domain names incorporating third party names / marks [paragraph 5.4 above]. The Respondent states that it has domain names registered which it offers to sell or lease through DIRECTNIC, a domain name registration company in Louisiana, United States of America.
6. Discussion and Findings
6.1 The Policy paragraph 4a provides that the Complainant must prove each of the following:
- that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
6.2 The Complainant's Rights in the 2 Trade Marks
6.2.1 On the evidence before it, the Panel is satisfied that the Complainants have trade mark rights in the name HERBERT VON KARAJAN.
6.2.2 As to the Complainant's assertion that they also have trade mark rights in KARAJAN simpliciter, this is not supported by the evidence served with the Complaint. However, the Panel understands that the name KARAJAN is not a common name in Austria or in Germany and the Panel is prepared to accept that in the field of classical music the name KARAJAN is very well known and is associated with the famous conductor, the late Herbert von Karajan.
6.3 Identical or Confusingly Similar
Ignoring the .com suffix, the domain name is identical with the Complainants' KARAJAN mark. The Complainants therefore, meet the requirements of paragraph 4a(i) of the Policy.
Although not necessary to this Decision, it is an interesting point as to whether identity is sufficient to satisfy the requirements of paragraph 4a(i) of the Policy or whether there must also be confusing similarity. The Panel inclines to the view that identity, if established, is sufficient. But, even if there is identity, that does not itself have the result that the anterior trademark owner must always succeed against the later registered domain name. The other conditions of paragraph 4a(i) of the Policy must also be satisfied.
6.4 Rights or Legitimate Interests
6.4.1 Has the Respondent brought himself within any of the circumstances prescribed by paragraph 4c of the Policy or otherwise demonstrated rights or legitimate interests in the domain name in issue?
6.4.2 The first issue to be addressed is whether before July 2000 - when the Complainants first put the Respondent on notice - the Respondent was making bona fide use of the domain name in issue. On the evidence before it [as set out above] the Panel must conclude that the Respondent was trading legitimately under the domain name.
6.4.3 Second, it would appear that the Respondent was commonly known by the domain name in issue.
6.4.4 Third, there is no evidence to suggest that the Respondent's use of the domain name in issue is intended misleadingly to divert consumers or to tarnish the 2 marks in issue.
6.4.5 Consequently, the Panel finds that the Respondent has - on the evidence before it - made out a case of rights and legitimate interests, such that this Complaint must fail to meet the requirements of paragraph 4a(ii) of the Policy.
6.5 Registered and Used in Bad Faith
6.5.1 Although it may be incredible to the Complainant that the Beatles, Michael Jackson, the Rolling Stones and the late Herbert von Karajan have not all achieved comparable worldwide notoriety, the Panel takes the view that those whose interests do not extend to classical music may not have heard of Herbert von Karajan, Max Reinhardt, Wilhelm Furtwängler, Simon Rattle, Claudio Abbado, Leonard Bernstein or other world famous conductors (past and present). The Panel does not, therefore, disbelieve the Respondent when he states that he had never heard of Herbert von Karajan before this Dispute.
6.5.2 The Panel has held that - on the evidence before it - the Respondent has established rights and legitimate interest in the domain name in issue, so that this is not a ground upon which the Complainants can rely as indicating registration and use in bad faith.
6.5.3 Although the Panel has admitted the Supplemental Submission of January 12, 2001 from the Complainants, the Complainants have produced no evidence to suggest that:
- the Respondent's Karajan Pty Ltd company was not incorporated in either 1982 or 1984
- the Respondent's website has not been offering legitimate goods and services since before the Respondent received notice of this Complaint. The fact that the Respondent may, or may not, be involved in unauthorised exploitation of third party trademarks [i.e. 49ers: Denver Broncos: New York Giants] does not render its legitimate offering of goods and services illegitimate. Further, to put it in context, a number of the domain names offered on the Respondent's website are quite generic. For example, BettaGolf.com; WePrintBusinessCards.com; PrestigeVehiclesforSale.com; 4x4VehiclesAndAccessories.com etc; or
- evidence of actual confusion between the Respondent's website and the activities of the Estate of the late Herbert von Karajan during the 2 years between registration of the domain name in issue and the correspondence which preceded this Complaint. The Complainants were presumably aware of the March 1997 registration of the Respondent when they registered karajan.org in July 1998.
6.5.4 Nor is this a case where the Respondent has tried to sell the domain name in issue at an overvalue and thus adopted a pattern of action normally associated with a cybersquatter.
6.5.5 In the circumstances, the Panel finds that the Complainants have failed to meet the requirements of paragraph 4a(iii) of the Policy. Trademark owners bringing Complainants under the Policy must appreciate that the Panel must make its decision on the basis of the statements and documents submitted to it. Whilst the Panel must ensure that each Party is given a fair opportunity to present its case, it is upon the evidence before it - taken in conjunction with the Policy, the Rules and applicable laws - that the Panel makes its determination. As another Panelist has correctly observed, we are not legislators but arbitrators. Whilst the Panel may have some sympathy with the Complainants in this case, the facts before it are simply not sufficient to sustain a successful Complaint under the Policy.
For the foregoing reasons, the Panel decides that the Complainants have not satisfied the requirements of paragraphs 4a(ii) and (iii) of the Policy and the Complaint, therefore, fails.
Dated: February 5, 2001