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WIPO Domain Name Decision: D2000-1639
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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EADS Deutschland GmbH et al. v. Wolfgang Koellen
Case No. D2000-1639
1. The Parties
The Complainants in this administrative proceeding are EADS Deutschland, GmbH, P.O. Box 801109, D-81663 Munich, Germany ("Complainant A"), and The European Aeronautic Defence and Space Company EADS N.V., Postbus 2838, 1000 CV Amsterdam, the Netherlands ("Complainant B"). The Complainants` authorized representative in this administrative proceeding is Graefe & Partner, c/o Bernd H. Harder, Attorney at law, Lucile-Grahn-Str. 38, D-81675 München, Germany.
The Respondent in this administrative proceeding is Mr. Wolfgang Koellgen, Am
Yachthafen 8, D-16761 Hennigsdorf, Germany. He is represented by Bernd
Wind, Attorney at law, Hermannstr. 36, D-56564 Neuwied, Germany.
2. The Domain Names and Registrar
The domain names in question are <eadsnv.net> and <eadsnv.com>.
The registrar with which the domain names are registered is Domain Bank, Inc.,
23 West 4th Street, Betlehem, PA 18015-1603, USA.
3. Procedural History
On November 24, 2000 the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") in electronic version. On November 28, 2000, a hardcopy of the Complaint was sent to the WIPO. It Complied with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules"). The appropriate fees were paid by the Complainant.
On December 1, 2000 a Request for Registrar Verification was transmitted to the Registrar. On December 19, 2000 the Registrar confirmed by e-mail to the Center that it had received the Complaint from the Complainants, that the Registrar is the registrar of the domain name <eadsnv.com> and <eadsnv.net>, that the Respondent is currently registered for the said domain name and that the said domain name is in "Active" status.
On December 20, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to <eadsnv.com> and <eadsnv.net> domain names to the Respondent by Post/Courier (with enclosures), by facsimile and by e-mail. A copy of said Notification was sent to the authorised representative of the Complainants by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Domainbank Inc., the Registrar of the <eadsnv.com> and <eadsnv.net> domain names.
On January 12, 2001, the legal representative of the Respondent sent a letter to the Center written in German. Until January 19, 2001 the Respondent did not submit any response to the Center. On January 19, 2001 the Center sent a Notification of Respondent Default to the Respondent advising the Respondent that the consequences of said default included inter alia that the Center would proceed to appoint a single member Administrative Panel. At the same day, the legal representative of the Respondent sent an email with his response.
On January 29, 2001 the Center invited Prof. Dr. Thomas Hoeren to act as Administrative Panel in these proceedings and having received a Statement of Acceptance and Declaration of Impartiality from the said Thomas Hoeren the Center proceeded to appoint this Administrative Panel consisting of a single member on February 1, 2001. On the same date, the case file was transferred to the Administrative Panel.
On February 5, 2001 the Panel sent an e-mail to the Complainants, the Respondent and the Center asking for further documents from the Complainants with reference to Sect. 12 of the Rules. On February 14, 2001, the Complainants sent additional documents as to the proprietorship of the trademark EADS to the Panel, the Respondent and the Panel. On February 15, 2001, the Complainants sent further documents. The Respondent did not react to these messages until the date foreseen (February 19, 2001).
In the view of the Administrative Panel, the proper procedures were followed and this Administrative Panel was properly constituted.
4. Factual Background
a) A. Complainant
The trademark EADS is registered in Germany at the German Patent and Trademark Office (DPMA) on 11-15-99 with priority of 10-14-99 (registration number 39964104). The trademark is registered for the groups 1-9, 11-14, 16-18, 21, 25-28, 34-42 of the German Classification of goods. The trademark is especially used for aeronautic, defense and space products and services. As the registration deed of the DPMA stated (Annex 3 of the Complaint), the registration is made on behalf of "DaimlerChrysler AG,Stuttgart".
The picture mark EADS is registered in Germany at the German Patent and Trademark Office (DPMA) on 01-13-00 with priority of 10-26-99 (registration number 39967237). The registration document (Annex 5 to the Complaint) refers to "DaimlerChrysler AG Stuttgart" as the rightholder.
At last, with the declaration of assignment dated February the 8th 2001 (attached as annex 18) and February the 14th 2001 DaimlerChrysler AG assigned the German trademark EADS (No. 39964104) and the trademark/picture mark EADS (No. 39967237) to EADS Deutschland GmbH (Complainant A).
The future proprietorship of EADS German trademarks is to be agreed between Complainant A and B.
b) B. Complainant
As to Complainant B, the Complaint is additionally based on the Benelux application filed 01-13-00 under No. 954544 and claims Paris Convention priority of 08-25-99 over the Ireland application, which was filed on 08-25-99 under No. 294199. The trademark EADS was registered for the international classes 7,9, 12, 13, 37, 38, 42 (Annex 7 to the Complaint).
In advance, Clifford Chance as acting lawyers of Aйrospatiale in the formation of EADS has applied for an EADS trademark in the name of the shell company Betenigma Limited (annex 15 to the Complaint). Then, the European Aeronautic Defence and Space Company N.V. which shares were being held by Aйrospatiale Matra at that time, and which changed its company name into European Aeronautic Defence and Space Company EADS N.V. (Complainant B) applied for registration of the Benelux trade mark EADS (annex 16 to the Complaint). Annex 17 to the Complaint shows the WIPO-certificate of registration of the trademark EADS.
5. Parties’ Contentions
The Complainants requested this Administrative Panel to issue a decision that the contested domain name be transferred to the Complainants. The Complainants asserted that each of the three conditions in paragraph 4(a) of the Policy is satisfied. They in particular asserted:
The domain names in question were not and are still not used for any business or private matters, though the Respondent already claimed in June that he will found a company together with several participants in Europe and in the United States. The Respondent also claimed to have spent excessive costs in order to found the company. However, summing up the Respondent‘s e-mails the most important issue for the Respondent was to sell the domain names and not to establish his own company; (2) there is no relationship between the Complainants and the Respondent, the Respondent is not a licensee of the Complainants and no otherwise permission or consent has been provided to the Respondent to use or to apply for any domain name incorporating the trademark and picture mark EADS; (3) the Respondent claimed that his company name shall be European-American-Dataexchange-Services, but there is no logical sense in adding the letters „NV" to this company name. Additionally, the Respondent states himself in one of his e-mails to the Complainant A that the firm‘s name does not reflect in all nuances the firm‘s purpose; (4) mere registration of domain names is not sufficient to establish rights or legitimate interests.
The Complainants stated that the domains should be considered as having been registered and used in bad faith. The Complainant A asked the Respondent per e-mail if he could take over the domain <eadsnv.com>. The Respondent‘s first answer and second phrase in this mail was to clarify that he had also registered other domains with the same order of letters. Thus, the Respondent directly extolled all his domain names with regard to EADS. The Respondent also stated that - „now comes just the right time for the Complainant A to get this domain which is more or less as the Complainant‘s trademark".
The Respondent tried to persuade the Complainant A vehemently to buy his domains, e.g. by writing to the Complainant A that a global player should have a worldwide known domain name. The Respondent also acknowledged in this mail that he was well informed about the Complainant A‘s turnover and knows about domain purchases in the US made by the Complainant. The Respondent went on writing that the Complainant know should be as generous as in the past concerning the purchases of domain names.
The Respondent held in his email of 19 January 2001: The Respondent was first to reserve his rights and to register the domains in question on his name. So he has at least elder rights. It might be that the abbreviation in dispute and claimed for by the Complainants nowadays may be associated with the Complainants enterprise. But firstly this might be the case only since several months, since the Complainants' enterprise has been established by the alliance of different firms from Germany, France and Spain. This alliance only has been presented to the general public, that the Complainants have claimed for, during the summer months of last year. Before that the Complainants' enterprise - and therefore the abbreviation - did not exist. Similar as other institutions and associations that use this abbreviation, the Complainants are claiming their rights. As an example for this fact the Respondent named the Europaeische Akademie des Sports" (which means translated "European academy of sports") in Germany, D 46335 Velten, which you can reach since a long time already and today as well under the domain <www.eads.de>. The Respondent refers also to other examples for example the "EADS Company in Houston, USA", www.eadslink.com, or "The EADS Group, Engeneering Architecture and Design Services" in Altoona, USA, firstname.lastname@example.org or the "Internet Advertisement agency " (www.eads.com).
The Respondent contested that the he was first to propose that the Complainants should buy the Respondents' domain names. The Complainants were the first to approach the Respondent. The Respondent had already his own costs in registering his domain names and wanted to get these costs recompensated. The transfer of the domain - due to the costs and the worthiness of the domain names - couldn't be carried out for zero.
The Respondent claimed to have had the idea - as carried out in the mentioned e-mail - to found an enterprise with other partners from small and medium sized enterprises in other countries in other continents to set up a network for dataexchange. The idea was based on the unique combination that is offered by the letters "eads". This network would allow to address the firm always under the abbreviation "eads", so as "European-African-Dataexchange-Services", "European-Australien-Dataexchange-Services", "European-Asian-Dataexchange-Services" and "European-American-Dataexchange-Services".
6. Discussion and Findings
The Policy para. 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 has been registered and is being used in bad faith.
a. Respondent’s Late Submissions.
Before reaching the merits, the Panel must decide whether to consider Respondent’s January 19, 2001 e-mail, which was sent after the deadline for response, and what weight to accord them. Under the Rules, this determination is solely within the discretion of the Panel. Rule 10(a), (d). See also WIPO Notification of Complaint and Commencement of Administrative Proceeding ("Notification of Commencement") ¶ 6 ("The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so."). The Panel has however decided to consider the responses, mainly because the time problems obviously are based upon a misinterpretation of the Respondent as to the language of his Response.
b. The legal position of the Complainant B
The case is relatively transparent as to the position of Complainant B. Therefore, his legal position will be considered firstly. It could be left open whether the mere registration of "EADS N.V." at the Commercial Register in Amsterdam on 02-17-99 (Annex 9 to the Complaint) is enough to justify a protection under UDRP. The registration of the Benelux trade EADS is a sufficient legal basis for the Complaint. The Certificate of Registration issued by the WIPO on May 25, 2000 (Annex 17 to the Complaint) demonstrates that the European Aerospace and Defence Company N.V. has registered the trademark EADS for the Benelux States on February 18, 2000 (No. 659946). The same situation can be verified in the document of the Benelux-Merkenbureau of July 3, 2000 (Annex 16 to the Complaint).
c. The legal position of the Complainant A
Quite peculiar is the legal situation of the Complainant A. He has made reference to two registration of trademarks in Germany (No. 39964104 and 39967237). However, the registration documents presented to the panel (annex 3 and 5) only relate to "DaimlerChryler AG, Stuttgart" as rightholder. Even if the Complainant A is to a certain extent linked with the company "DaimlerChrysler AG", this bondage has no automatic effect on the ownership of trademark rights. According to the documents which were firstly presented at the panel, the trademark rights in "EADS" belong to "DaimlerChyrsler", not to the Complainant A.
This led to the email of the panel of February 5, 2001 and to two answers of the Complainants dated February 14 and 15, 2001. The authority of the panel to ask for further documents is based upon Sect. 12 of the Rules. The Complainants stated that in fact Daimler Chrysler was the rightholder due to historical reasons. The Complainants additionally referred to a new declaration of assignment dated February 8 and 14, 2001 (Annex 18 to the Complaint). In this document, Daimler Chrysler assigned the German trademarks "EADS" to Complainant A.
The question is whether these additional submissions can be accepted especially where the submissions relate to new facts. The assignment of rights between Daimler Chrysler and Complainant A has been signed only a few days after the email of the Panel. The action of Daimler Chrysler is apparently a reaction to these domain proceedings. In order to avoid a rejection of the Complaint, Daimler Chrysler and Complainant A changed the legal situation by signing the assignment deed. In these specific circumstances, the question of the admissibility of the evidence has to be considered very carefully. A solution can only be found in considering the question whether it is more suitable to file a new Complaint. If this panel disregards the assignment between Daimler Chrysler and Complainant A and consequently dismisses the Complaint to that extent Complainant A would immediately file a second Complaint. It is likely that he would win the second Complaint based upon the considerations made below. Therefore, it would be a formalistic and unreasonable decision if the panel does not consider the new documents.
The assignment of February 8 and 14, 2001 (Annex 18 to the Complaint) relates to the German trademarks EADS no. 39964104 and no. 39967237. There are no doubts that this assignment is valid at least under German trademark law. It is most suitable to adapt German law as Daimler Chrysler, Complainant A and the Respondent are domiciled in Germany. The German Trademark Act provides that the assignment of trademarks can be done by contract without any formalities. The registration of the new rightholder is not necessary for the validity of the assignment (see § 27 (3) of the German Trademark Act; cf. Federal Supreme Court, Gewerblicher Rechtsschutz und Urheberrecht 1981, 573, 574 – Nocado; Fezer, Markenrecht, 2nd. Ed. Munich 1999, § 27 Notes 20 and 35).
The trademark "EADS" and the domain names in question are confusingly similar in the meaning of para. 4a UDRP. The Rules (paragraph 15(a)) provide that a Panel shall decide a Complaint on the basis, inter alia, of "... any rules and principles of law that it deems applicable." Since Complainant A and the Respondent are domiciled in Germany, to the extent that it assists in determining whether Complainant A has met the burden under paragraph 4a of the Policy, the Panel can look at applicable decisions of the German Courts (see among others Jeanette Winterson v. Mark Hogarth, Case No. D 2000-0235). As to Complainant B, the legal situation in the Netherlands has additionally to be taken into consideration.
Whether the disputed domain names are confusingly similar requires considering what the overall impression is, bearing in mind the dominant components of the domain name and whether the domain names would be considered perplexing to a customer or potential customer trying to locate the Complainants on the Internet. The disputed domain names have two components, that is, "eads" (the Complainants' trademark which is common to both) and "nv", (which is a common legal abbreviation for a Dutch company). The common component, "eads", is identical to the Complainants' trademarks. The component "nv" is known in the Netherlands as a common abbreviation for certain company names (Naamloze Vennootschap/Company Limited by Shares). Therefore, "nv" has to be regarded as a generic term which does not decrease the danger of a likelihood of confusion. Consequently, Complainant B which has a domicile in the Netherlands is prima facie concerned by the use of the domain names in question. It should also be taken into consideration that it is totally unclear what the Respondent wanted to do with the domain name. If he sells the domain names to a person working within the Dutch market or of he wants to use the domain for online marketing directed to the Netherlands, there could be a sufficient likelihood of confusion from the point of view of the potential customer.
The discussion is more complicated as to Complainant A. The Complainants themselves do not refer to that question in their Complaint. In Germany where Complainant A and the Respondent are domiciled, the meaning of "nv" is unknown. Insofar, combining two different Complainants with two different trademark law backgrounds seems again to be unsatisfactory in this case. Normally, the Panel should have used that argument to cancel the Complaint insofar as Complainant A is concerned. However, the Panel has decided to take additionally into consideration that Germany and the Netherlands are two countries with strongly interdependent markets. Furthermore, the two Complainants are working closely together on a common, international market for aeroproducts where territorial borderlines do not play an important role. In the light of this very specific situation, it might be argued that the use of the term "nv" does not avoid confusions even between the German trademarks "EADS" and the domain names in question.
e. Legitimate interests
As to the second requirement under paragraph 4(a) of the Policy, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names at issue. The Respondent claimed to have had the idea to found an enterprise with other partners from small and medium sized enterprises in other countries in other continents to set up a network for dataexchange. The idea was based on the unique combination that is offered by the letters "eads". This network would allow to address the firm always under the abbreviation "eads", so as "European-African-Dataexchange-Services", "European-Australian-Dataexchange-Services", "European-Asian-Dataexchange-Services" and "European-American-Dataexchange-Services".
This argumentation is unconvincing. The Respondent has not given any evidence for any preparatory work in these projects. There are no hints that the Respondent really wanted to build up the networks mentioned above. The domain names in question are not connected as the panel has checked itself. There are no indications that the Respondent has ever connected the domain names and used them for building up his business plans. Firm names like "European-African-Dataexchange-Services" seem to be very artificial and a mere invention to justify the use of the domain name "EADS" ex post. Even if the Respondent wanted to use the domain name "EADS" for these purposes, there is no justification for using the Dutch annex "nv" and the domain names in question "eadsnv".
Apart from that, the mere registration of a domain name does not justify a legal priority. The Respondent very often argues that he is the rightholder in "EADS" as he has been the first to register the domain name "Eadsnv" (see for instance the email of 15 August 2000; Annex 10 to the Complaint). However, the registration of "net" or "com" domain names is based upon the principle of "first come, first served". Thus, the registration of a trademark cannot be compared with the registration of a domain name where priority considerations have their origin.
f. Bad faith
Paragraph 4(b) (i) of the Policy provides that for the purposes of paragraph 4(a)(iii) a domain name is registered and used in bad faith if for instance circumstances indicate that the 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 or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name. An offer to sell a domain name registration to the trademark owner or a third party for an excessive price is one of the hallmarks of a cybersquatter and has been cited in a number of WIPO decisions as evidence that a domain name has been registered and used in bad faith. In the case of Wrestling Fed’n Entertainment, Inc. v. Bosman (D1999-0001), an offer to sell domain name for $1,000 was evidence of bad faith. Similarly, in the case of Stella D’oro Biscuit Co. v. Patron Group (D2000-0012) bad faith has been asserted where somebody tried sell a domain name for $2,300.
According to the Complainants, the Respondent has tried to sell the domains to the Complainants at excessive costs. The documentation of this is nebulous. Only two emails of the Complainants to Respondents have been copied in Annex 10 and 11 of the Complaint; the emails of the Complainants to the Respondents are missing as well as for further information as to the negotiations of the parties. Nevertheless, the email of the Respondent of 28 June 2000 highlights his mentality in using the domain names. The text (written in German; an English translation has not been provided) states: "Ein Unternehmen, das sich an einem Mark(t) mit einem Volumen von mehr als 60 Milliarden US Dollar pro Jahr beteiligen will (...), hält ein Angebot für eine Domaine von 15K schon für zu hoch!?" This text has to be interpreted to the extent that the Respondent seemed to have made an offer to the Complainants for the transfer of the domain names. His offer apparently included a price of "15K", that means "15.000". It remains unclear whether that figure relates to 15000 German Mark or even US-Dollar. However, even a price of 15.000 German Mark (around 7500 $) is clearly in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name.
The Respondent himself has not demonstrated in his argumentation that he had additional costs which justify the high price of 15.000 German Marks. He only referred very broadly to the value of the domain names for his business. However, he had not implemented any of the business concepts he perhaps planned to do, especially in the area of transcontinental exchange. Consequently, the domain names are not connected; there is no homepage of the Respondent under operation using these domain names. Therefore, his claims cannot be justified by reference to the value of his (non-existing) business plans. The costs for registering a new domain can also not be considered within the frame of the UDRP. These costs have to be paid by the Respondent anyway – irrespective of any Complaint. The UDRP only allows to claim the recompensation "directly" related to the domain name in question (see Lapponia Jewelry Oy vs Rautelin Oy, Case No, D2000-1728).
Based on the above findings, the Panel hereby decides that the Domain Names <eadsnv.net> and <eadsnv.com> shall be transferred to the Complainants.
Prof. Dr. Thomas Hoeren
Dated: February 21, 2001