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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

NEUSIEDLER AKTIENGESELLSCHAFT v. VINAYAK KULKARNI

Case No. D2000-1769

 

1. The Parties

The Complainant in this administrative proceeding is NEUSIEDLER AKTIENGESELLSCHAFT, having its principal place of business at Kelsenstrasse 7, A- 1032 Vienna, Austria ("Complainant") represented by office Wulf Gordian Hauser KEG, Attorneys at Law L.L.P., Domgasse 4, A-1010 Vienna, Austria.

The Respondent is VINAYAK KULKARNI, an individual, with an address at 31 Sahawas Society, Pune, Maharashtra 411052, India ("Respondent").

 

2. The Domain Name(s) and Registrar(s)

This dispute concerns the domain name <neusiedler.com> ("Domain Name") registered with BulkRegister.com, Inc., 7 East Redwood Street, Third floor, Baltimore, MD 21202, USA ("BulkRegister.com" or "Registrar").

 

3. Procedural History

A complaint ("Complaint") pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999 ("Supplemental Rules") was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") December 19, 2000, by e-mail and was received on December 22, 2000 in hardcopy. On December 21, 2000 the WIPO Center sent an acknowledgement of Receipt of the Complaint to Complainant.

On December 26, 2000, a Request for Registrar Verification was transmitted to the Registrar which confirmed by Verification Response of December 26, 2000, that the disputed Domain Name was registered with BulkRegister.com, that Respondent was the current registrant and that the Policy is in effect.

The Panel independently determines that the Complaint is in formal compliance with applicable Requirements.

No formal deficiencies having been recorded, a Notification of the Complaint and Commencement of Administrative Proceeding was sent to Respondent on December 28, 2000, setting a deadline of January 16, 2001 by which Respondent could file a Response to Complaint.

On January 16, 2001, the WIPO Center received by e-mail the Response. Furthermore on January 17, 2001 the WIPO Center received from Respondent a hardcopy of Civil Suit against Complainant in the court of Civil Judge, Pune, Maharshtra, India bearing No.R.C.S.No.42/2001. The Panel has not received any further information about that proceeding. The Panel has decided for this administrative proceeding according to the Rules, Paragraph 18 (b) to proceed to a decision.

On January 16, 2001, the WIPO Center acknowledged receipt of the Response by e-mail on January 16, 2001.

On January 19, 2001, in view of Complainant’s designation of a sole panelist, the WIPO Center invited Dr. Bernhard F. Meyer-Hauser to serve as panelist in this case and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

Having received Dr. Meyer-Hauser’s Statement on January 22, 2001, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Dr. Meyer-Hauser was formally appointed as the Sole Panelist. The projected decision date was February 5, 2001. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the Supplemental Rules.

On January 29, 2001 the WIPO Center informed the parties by e-mail that the Panel decided not to consider further submissions in the present case.

 

4. Factual Background

Complainant is a Austrian company operating in the pulp and paper industry. It is registered in the commercial register of the republic of Austria under the company name "Neusiedler Aktiengesellschaft".

Complainant is the holder of the Austrian Trademark "Neusiedler" (registration no. 9309) for the production and the distribution of paper and pulp as well of goods made from paper (class No. 27) with priority as of April 6, 1939.

In February 24, 2000, Respondent registered with BulkRegister.com the Domain Name which is at the center of this dispute.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Name is identical to a trademark in which Complainant has rights, that Respondent has no rights or legitimate interests with respect to the Domain Name, and that Respondent has registered and uses the Domain Name in bad faith.

In particular Complainant asserts:

• that the Domain Name contains exactly the registered trademark and the company name of Complainant.
• that Complainant has not granted any license or other right of use to Respondent and, therefore, Respondent has no right to the trademark of any legal nature whatsoever.
• that Respondent does not have any other legitimate interest in using the domain which can be proven by the fact that Respondent registered the Domain Name on February 24, 2001 and up to date has not established a web-site under such domain.
• that the Domain Name has not been registered by Respondent for business purposes and for setting up a web-site, but primarily for the purpose of selling, renting or otherwise transferring the Domain Name registration to Complainant for valuable consideration in excess of the Domain Name registrant’s out-of-pocket cots directly related to the Domain Name or to prevent Complainant from reflecting the trademark in a corresponding Domain Name or for the purpose of disrupting the business of Complainant.
• that Respondent is aware of the fact that he impeaches the rights of Complainant in the above-mentioned trademark and the name rights.
• that Respondent acted in bad faith, because he did not reply to Complainants requests to transfer the domain to Claimant submitted by mail and registered mail on October 12, 2000 and October 25, 2000.
• that "Neusiedler" is a word totally unknown to the Indian language but is a typical Austrian expression, denominating one of the biggest lakes of the country in the Eastern part of Austria ("Neusiedlersee") and having been denominating Claimant's business and its business activities for decades. Respondent became aware of Complainant’s activities in Asia and planned to exploit the good reputation of Complainant’s trademark. Therefore, Complainant concludes that Respondent was aware of the fact that the Domain Name is identical to the trademark and to the company name in which Complainant has exclusive rights when applying for the registration of the Domain Name. The Domain Name has therefore been registered in bad faith.
• that Respondent acted in bad faith by breaching his registration contract with Bulkregister.com, Inc. when he falsely stated that the registration of the Domain Name did not infringe the rights of any further party.

Consequently, Complainant requires the transfer of the Domain Name registration to Complainant.

B. Respondent

The Respondent takes the view:

• that Complainant has failed to prove that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent chose this particular Domain Name because it is the name of a famous lake and this name if known to people all around the world.
• that the word "Neusiedler" exists in encyclopaedias and dictionaries and therefore is a generic word and Complainant cannot claim exclusive rights to the use of that word. The word "Neusiedler" is famous as being a lake in Europe and not as a company in Austria.
• that the name of Complainant is not sufficiently famous and that Respondent had absolutely no knowledge of the existence of Complainant prior to receiving inquiries about the Domain Name. Under the trademark laws in most countries, coined words deserve exclusive rights, not generic words such as "Neusiedler". There are other business and non-profit entities in Europe that share the name "Neusiedler". Since the name of the Compliant is neither sufficiently famous nor unique, it should be considered generic; generic words cannot form the basis of a complaint under Uniform Domain Name Dispute Resolution Policy.
• that Complainant has failed to prove that the Domain Name has been registered and is being used in bad faith as well as that the Domain Name was registered for the purpose of selling, renting or otherwise transferring the Domain Name registration to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Name. Respondent has never offered to sell the Domain Name to Respondent and Respondent has never communicated with Complainant.
• that Complainant has failed to prove that the Domain Name was registered to prevent Complainant from reflecting the mark in the corresponding Domain Name. The word "Neusiedler" is a generic word to be found in encyclopaedias and dictionaries; and Respondent chose that particular name because it is the name of a famous lake. The Domain Name was registered by Respondent on February 24, 2000. Complainant could have registered that Domain Name prior to that date, but chose not to do so. Lack of planning on Complainant’s part does not constitute bad faith on Respondent’s part.
• that Complainant and Respondent are not direct competitors and Respondent has made no attempts to disrupt Complainant’s business.
• that Respondent has made no attempt to attract for commercial gain, Internet users to Respondent's web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on Respondent's web site or location. As of this time, there has never been a web site present at www.neusiedler.com and therefore there is no likelihood of any kind of confusion.
• that Respondent registered the Domain Name on February 24, 2000 and has spent the last 10 months getting ready to put up a web site. Since Respondent resides in India, a third world country, it takes months, if not years, to get a dedicated IP address and a leased line that is necessary to connect a web server to the Internet. Considering the realities on the ground, a 10 month delay in putting up a web site is not excessive. Respondent has pointed out these facts to contrast the behavior of Complainant from that of Respondent. Internet has been used for e-commerce since 1995 in the more advanced countries of Europe and North America, but Complainant failed to register the Domain Name before February 2000, a delay of nearly 5 years. Complainant’s deliberate decision not to register the Domain Name while it was still available only indicates that the Domain Name is not vital to Complainant’s business. Since the domain names are registered on the first-come-first-server basis, the only recourse to Complainant, once it came to realize the magnitude of it’s mistake, was to engage in a practice that has come to be known by the uncharitable name "Reverse Domain Name Hijacking".

 

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, Complainant must prove the following:

(i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,

(ii) that Respondent has no legitimate interests in respect of the Domain Name; and,

(iii) that the Domain Name has been registered and used in bad faith.

The Policy expressly stipulates in the cited Paragraph that "the complainant must prove that each of these three elements are present". This sentence seems to say that the complainant has the burden of proof as to each of the three elements above. This would require Compliant to prove a negative which is a difficult or even impossible task. The Policy itself is not consequent in the allocation of the burden of proof. In Paragraph 4(c) it transfers to Respondent the task to demonstrate the rights and legitimate interests in the domain name. This Paragraph suggests that it is Respondent who bears the burden of proof as to Paragraph 4(a)(ii). Faced with this seeming contradiction, various Panels have investigated the question of the burden of proof with different conclusions (Do The Hustle, LLC v. Tropic Web, WIPO Case No. 2000-0624 with various references to other cases). The majority of the Panel decisions on this point have taken the position that Complainant has the general burden of proof; but in the scope of Paragraph 4(a)(ii), once the complainant has made something credible (prima-facie evidence), the burden of production shifts to Respondent to show that it has rights or legitimate interests in the domain name at issue by providing concrete evidence.

I Identical or Confusingly Similar Domain Name

The domain name at issue is <neusiedler.com>. The Panel finds that the relevant part of this domain name "Neusiedler" is identical with the trademark registration of the word "Neusiedler" held by Complainant and the registered company name of Complainant.

II Respondent’s Rights or Legitimate Interests in the Domain Name

A. Rights

Complainant contends that Respondent has no rights of any legal nature to the Domain Name. Respondent, on the other hand, replies that the word "Neusiedler" is a geographic term which is therefore of a generic nature. Therefore, Complainant cannot claim an exclusive right to the use of that word.

The word "Neusiedler" in the Domain Name is - uncontested by the Parties - derived from the name of a lake in the frontier area of Austria and Hungary. The exact name of the lake is "Neusiedler See" or "Neusiedler Lake" which is obviously a geographic term. The substantial part of the geographic term "Neusiedler Lake" is "Neusiedler". This part of the geographic term alone is sufficiently determined with regard to the geographic sense of its content. Therefore, the Panel finds that "Neusiedler" is - even without the add-on "-lake" - a geographic term.

The entitlement to and the admissibility of the use of geographic terms in domain names is an often discussed issue; especially in cases where the geographic region (e.g. a city) itself claims to have a better right in the name and consequently in the Domain Name (and even these decisions are not beyond controversy). In contrast to that, Complainant in the present case is not factually connected to the geographic term (such as a city would be), but it is the owner of a identical trademark and is therefore merely commercially related to the geographic term at issue.

Complainant did not adduce any substantiation or evidence that the term "Neusiedler" is sufficiently famous to be considered as a non-generic word. Furthermore, the word is not generally associated with Complainant’s brand by the general public, but with the lake in Austria. Outside of the paper business - and from a worldwide viewpoint - it has a stronger significance as a geographic term than as a trademark or company name. Since the parties in this proceeding apparently are not direct competitors, the Panel needs not to investigate the legal implications of that situation.

The trademark - as well as the company name - "Neusiedler" of Complainant can not grant a right of exclusive use of the geographic term. Geographic names can not be monopolized by registering a trademark or company name. The use of geographic terms as such in domain names or otherwise by third parties is generally possible despite of a trade-mark registration.

The Panel finds that the word "Neusiedler" is a geographic term. The identical trademark and company name of Complainant does not have an exclusive effect with regard to the use of the geographic term as such in domain names or otherwise by third parties. Thus, Complainant’s trademark or company name does not exclude the rights in the Domain Name of Respondent.

B. Legitimate Interest

Complainant considers the fact, that Respondent did not use the Domain Name during ten months after the registration, as proof in itself for Respondent’s lack of a legitimate interest in the Domain Name. This is not correct. The registration of a Domain Name does not include the duty to use it. The non-use (or the period of time it takes to prepare a web-site in a particular case) by itself is neither evidence of illegitimacy of the registration nor an indication as to the purposes of the registration.

Complainant has not adduced sufficient indications or evidence for a lack of a legitimate interest by Respondent. Even though Respondent also fails to specify such legitimate interest, the Panel finds that in the light of the Policy Complainant carries the burden of proof.

C. Conclusion

The Panel finds, that Complainant failed to prove or to make credible (prima facie-evidence) that Respondent has no right or legitimate interest in the Domain Name. Therefore, it is irrelevant that Respondent itself did not disprove Complainant’s allegations.

III Domain Name Registered and Used in Bad Faith

Complainant alleges bad faith of Respondent because Respondent did not answer to Complainant’s letters and e-mail of October 12 and 25, 2000. Such behavior by Respondent may be considered as impolite or inopportune, but it can not - by itself - be considered as conclusive evidence for a bad faith registration or use of the Domain Name.

In addition, Complainant contends that Respondent’s bad faith is evident because the word "Neusiedler" is unknown in the languages spoken in India and therefore Respondent has planned to exploit the good reputation of Complainant’s trademarks which he would have known because of Complainant’s business activities in Asia. It is not apparent to the Panel how Complainant assumes Respondent’s knowledge of the trademark based on Complainant’s business activities. Complainant does not demonstrate the geographical extension of its business activities in Asia and Respondent does not seem to be working in Claimant’s business field. Therefore, it is not evident to the Panel that Respondent should have known Complainant’s company name or trademarks.

In addition, the argument regarding the languages spoken in India is not a valid one. It is a typical characteristic of the Internet that it is not limited by any country or language barriers. Although it may play a part in a panel’s assessment of a decision, registering a domain name or a geographic term in a language other than that of the Registrant can not be interpreted per se as an indication of bad faith. Holding otherwise would mean that a great number of English language registrations of domain names by non-English nationals, such as Germans and/or Austrians, would be contentious.

Complainant contends that Respondent was aware of the fact that it has infringed upon the trademark and name rights of Complainant. The alleged knowledge of Respondent is neither supported by any arguments nor is it proven. Respondent on his part contends that he had absolutely no knowledge of the existence of Complainant prior to receiving inquiries about the Domain Name. Therefore the Panel can not further investigate the alleged infringement of the trademark and name rights.

The alleged breach of Respondent’s registration contract with the Registrar is not by itself proof of a bad faith intention of Respondent. With respect to the contested knowledge of Complainant’s trademarks and name rights, we refer to the statements above.

The Panel finds, that Complainant failed to prove Respondent’s bad faith in registering or using the Domain Name.

 

7. Decision

For all of the foregoing reasons, the Panel decides that Complainant failed to prove or render sufficiently credible the lack of right or legitimate interest of Respondent in the Domain Name as well as Respondent’s bad faith in registering and using the Domain Name. Accordingly, the Complaint is denied.

The Panel decides this case based on the contentions and evidence before it at the present stage. Nothing in this decision shall prevent Complainant from filing another complaint if the factual basis of the case should change in the future, e.g. if Respondent starts to use the Domain Name in any way contradicting the Policy (Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703 and Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490).

 

 

Dr. Bernard F. Meyer-Hauser
Sole Panelist

Dated: February 5, 2001