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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Knirps GmbH v. Kay Tomforde
Case No. D2001-0008
1. The Parties
The Complainant in this administrative proceeding is Knirps GmbH – Landstrasse 50-52 – D-42781 Haan – Germany ("Complainant "). The Complainantґs authorized representative in this administrative proceeding is Bachem Fervers Janssen Mehrhoff, Rechtsanwälte (Attorneys at Law), Rechtsanwalt Dr. Helmut Krein, Schlagbaumer Str. 59a, D-42699 Solingen, Germany.
The Respondent in this administrative proceeding is Mr. Kay Tomforde, Mittelweg 166, D-20148 Hamburg, Germany.
2. The Domain Name and Registrar
The domain name in question is <knirps.com>. The registrar with which the domain
name is registered is Network Solutions Inc., 505 Huntmar Park Drive, Herndon, VA 20170, USA.
3. Procedural History
On January 4, 2001, the complaint was received by the WIPO Arbitration and Mediation Center ("the Center") in electronic version. On January 8, 2001, a hardcopy of the complaint was received by the Center. 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 January 11, 2001, a Request for Registrar Verification was transmitted to the Registrar. On January 12, 2001, the Registrar confirmed by e-mail to the Center that it had received the Complaint from the Complainant, that the Registrar is the registrar of the domain name <knirps.com>, that the Respondent is currently the registrant of the said domain name and that the said domain name is in "Active" status.
On January 31, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent regarding the domain name <knirps.com> by Post/Courier (with enclosures), by facsimile (Complaint without attachments) and by e-mail (Complaint with attachments). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the NSI., the Registrar of <knirps.com> (Complaint without attachments).
On February 1, 2001, the Administrative and Technical Contact sent an E-Mail to the Center, who immediately replied to it. On February 5, 2001, the Legal Representative of the Respondent sent a fax informing the Center that they no longer represent the Re-spondent. On February 23, 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.
On March 12, 2001, the Center invited Prof. Dr. Thomas Hoeren to act as a sole panelist 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 March 12, 2001. On the same date, the case file was transferred to the Administrative Panel.
In the view of the Administrative Panel, the proper procedures were followed and this Administrative Panel was properly constituted.
4. Factual Background
Given the Respondent's failure to file a Response in this case, the Administrative Panel accepts as true and accurate, all statements of fact made by the Complainant in its submissions (see: Talk City Inc. v. Michael Robertson, (WIPO Case D 2000-0009,
February 29, 2000); EAuto, L.L.C. v. EAuto Parts, (WIPO Case D 2000-0096,
April 9, 2000).
The Complainant, "Knirps GmbH", is a company incorporated under German law with subsidiaries in France, Switzerland and the Benelux countries. Knirps GmbH operates internationally, and distributes its products all over the world (see Annex 3). Since the beginning of the year 2000, Knirps GmbH is the legal successor of the ownership of the famous trademark Knirps® (see Annex 4).
The word Knirps was carefully chosen by its inventors, due to its original background. At the time when the KNIRPS® umbrellas were invented, back in 1927, the word "Knirps" was used in every day language to mean little boy, baby and equivalent meanings for very small people. Following the intentions of the founders of Knirps®, the word Knirps was chosen to illustrate the extremely small size of the umbrellas that were produced.
The trademark KNIRPS® was registered in Germany for the first time in 1929 under registration No. 3985270 (see Annex 5). Knirps GmbH acquired the trademark from the former owner "Knirps International GmbH". "Knirps International GmbH" was very well known and had a very good reputation in the area of manufacture and sale of umbrellas, parasols, and corresponding accessories, as well as a wide experience and extensive knowledge. This resulted in a great number of patent-rights, design patents and trademark registrations (approximately 250 for KNIRPS®) in Germany and world-wide. The complainant included in Annex 6 to its complaint copies of trademark registrations for the trademark KNIRPS®, such as the European registration No. 000 431122, Taiwanese registrations Nos. 70946, 146247, Chinese trademark registration Nos. 290708, 290709, in association with the marketing of the "KNIRPS® umbrellas" world wide. However, KNIRPS® has been a registered trademark for over 70 years.
Knirps GmbH is the holder of the domain names "Knirps", in particular <knirps.de>. It plans to operate on the Internet through its web sites and use them as an additional selling and marketing instrument. (Annex 11).
As a consequence Knirps GmbH wanted to register knirps.com in order to use it for the above mentioned purposes, but was unable to make a reservation. The domain name knirps was already registered under the top level .com by Respondent. The Respondent reserved the domain name "knirps.com" on July 5, 1999. (Annex 12).
Until February 2000 the site was merely on hold, without any evidence of construction or intention of use. Later Respondent first started to implement ordinary graphics after offering the domain name for sale to Complainant. During pre-dispute negotiations about the transfer of the domain name to Complainant, the Respondent argued that he plans to built a commercial web site in order to sell an insurance program designated for children and named "Knirps & Co." This insurance program is intended for a well-known German insurance company, Hanse-Merkur Versicherungs AG. Respondent claimed that he wished to sell the "Knirps & Co." program to a commercial agent of Hanse-Merkur Versicherung. During a telephone conversation between the Complainant and the Respondentt, the Respondent stated that he would sell the domain name to the Complainant "for valuable consideration within a range of several hundred thousand Deutsche Mark" (Annex 14 and 17). At a later stage, the Respondent stated that he plans to use the web site by constructing a top-generic platform (in German only) for all issues concerning parents and children, including cross-promotion for related commercial sectors. (Annex 1+www.knirps.com).
Some time later, an employee of "Der Pool – Team für Werbung", Mr. Heiner Schmitz, proposed the following procedure to the Complainant: Instead of pursuing a take-over trial through Knirps GmbH, the employee of "Der Pool – Team für Werbung" offered to expropriate the respondent and transfer the domain name to Knirps GmbH, charging "only a reasonable price covering not specified costs". The unknown amount should have been paid by check, in the name of the employee. Following receipt of the cheque by Mr. Heiner Schmitz and after having cashed it, the transfer of the domain name should have been executed. (Annex 17).
Mr. Heiner Schmitz, the employee of "Der Pool – Team für Werbung", had thorough information about the pre-dispute correspondence between Respondent and Complainant but claims at the same time not to have any personal or private contact with Respondent. Regarding the suspicious transfer procedure and thorough knowledge of Mr. Schmitz, there is clear evidence that he himself and Respondent intentionally worked hand in hand with each other in order to sell the domain name in question to Complainant.
5. Parties’ Contentions
The Complainant alleges: "knirps.com" is a virtually identical mark to "knirps", except for ".com". According to the Complainant, the word Knirps has a high degree of individuality and distinctiveness: The word is not a typical generic or descriptive word that can be used by anyone. The word has changed its meaning from "little boy" to a fixed expression in the German language for all kinds of fixed umbrellas.
The Complainant furthermore held the view that the Respondent has no rights or legitimate interests in respect of the domain name <knirps.com>. The Respondent is not an owner of any trademark, service mark, company name, product or service with a name similar to that of the domain name in question. Knirps GmbH never granted a licensing or commercial agent agreement to Respondent, as it did to companies in several countries world-wide. However, Respondent is a private person and therefore not even able to produce and distribute umbrellas. One way a domain name holder can establish a legitimate interest in the domain name is by showing that before the notice of the dispute, it used or prepared to use the name in connection with a bona fide offering of goods and services. The respondent domain name holder in the instant proceeding offers no evidence that it actually used the name "Knirps" in such a connection before the notice of the dispute, and in fact makes clear that it has not yet made such use but is rather reserving the name for future use. A clear proof is that the site has not changed since than. Also there is no question that the respondent domain name holder does not plan to make such use. On this point, the domain name holder has only put forward the bald assertion that he has plans for commercial use of the name in the way of selling it to Complainant. No evidence is offered of advertising campaigns, market tests, focus groups, logo designs, or even of plans for advertising campaigns or plans for market tests or any other plans for outlays or commitment of resources made before receiving notice of this dispute towards the use of "Knirps" in connection with a bona fide offering of goods or services.
The Complainant held that the Respondent offers nothing, that he or his planned services are commonly known by the name "Knirps". The Complainant also interpreted the attitude of the complainant as having the primary purpose to sell the domain name to Complainant. After failing with his selling plans, he tried to threaten the Complainant by mentioning his alternative plan to sell or otherwise transfer the domain name under valuable consideration in excess of out-of-pocket costs directly to Hanse-Merkur Versicherung. As a third try, Respondent offered the domain name in question for sale through his administrative contact, "Der Pool – Team für Werbung", Rothenbaumchaussee, 22 Hamburg, Germany. The Complainant concluded that the Respondent domain name holder wanted to sell the domain name in question to Complainant and after failing with this, he intentionally attempted to attract Internet users to his web site or other on-line locations by creating a likelihood of confusion with the complaints famous mark with the aim of eventually selling the domain name to Complainant for the above mentioned amount.
According to the complaint, the respondent therefore cannot establish any legitimate interest in the name from the guidance provided by section 4a(i),(ii) of the ICANN Policy. Also, there is, however, evidence of bad faith by Respondent. Section 4.(b) of the Policy notes as evidence of bad faith a set of factors. One factor is mentioned in section 4.b(i), sale of domain name.
The Respondent has made no submissions.
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
- that the Respondent has no rights or legitimate interests in respect of the domain name; and
- that the domain has been registered and is being used in bad faith.
a) The position of the Complainant
The trademark "Knirps" and the domain name in question are confusingly similar in the meaning of paragraph 4(a) of the Policy. 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 the Complainant and the Respondent are domiciled in Germany, to the extent that it assists in determining whether Complainant has met the burden under paragraph 4(a) 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).
Whether the disputed domain name isconfusingly similar to complainant’s markrequires considering what the overall impression is, bearing in mind the dominant components of the domain name and whether the domain name would be considered perplexing to a customer or potential customer trying to locate the Complainant on the Internet. The Complainant is using the trademark "Knirps". As the Complainant has demonstrated extensively, this trademark has been protected under national, European and international regulations for a period of over 70 years. The protection mainly relates to the use of umbrellas and parasols. The Complainant is not doing business in other areas. Insofar, the term "Knirps" might be related to umbrellas and parasols being a famous trademark for these items. Apart from that, "Knirps" is a general term in the German language that means "small child". The panelist arising himself from a German background does not agree with the view of the Complainant that nowadays the German word "Knirps" is used primarily to ask for or to describe an umbrella. The term "Knirps" is – as the Complainant himself states – still a very common description of little children within the German language.
That might have been the reason why the insurance company Hanse Merkur has chosen the term "Knirps & Co." for their new business concept in insuring childrenґs risks. However, German trademark law too protects trademarks against the danger that customers are misled by the use of the protected mark (see § 14 (2) (3) of the German Markengesetz). However, the use of the term "Knirps" for a totally different kind of business, such as an insurance product, does not intermingle with the legitimate interests of the Complainant. An average customer would not consider an insurance product for children called "Knirps" to be related to an umbrella producer and his famous umbrella "Knirps". Therefore, there are doubts whether the domain <knirps.com> used in the context of insurance contracts can be considered as being confusingly similar with the activities of an umbrella producer and his trademark "Knirps".
b) Legitimate interests
Even if the doubts expressed under a) are neglected, the complaint cannot be supported. There are indications that the Respondent might have had a legitimate interest in using the domain in question. Insofar, the panel first considered whether it should clarify the relationship between the Respondent and Hanse-Merkur "ex officio". This would however violate the ICANN – Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"). According to Paragraph 15(a) of the Rules, the Panel has to decide a complaint on the basis of the statements and documents submitted; therefore, there is no room for inquisitions of the panel. However, the panel can use the internet itself as a common source which is open for everybody. It is a common principle of civil procedure law that judges may use evident facts as evidence and can therefore refer to publicly available sources for their decisions (see for instance § 291 of the German Civil Procedure Law). As a consequence, information avaiable through the internet has been considered by the panel to solve this case.
The first source is the homepage in question (http://www.knirps.com). This website opens to a marketplace for a children insurance (last visit to the homepage on
March 20, 2001). The homepage includes a frame on the left side where topics like "Ideas for fathers", "Ideas for mothers" or other children-related issues are mentioned. A few links lead to a description of child-related issues, such as a list of childrenґs shops and some homepages with information on pregnancy. The logo of the insurance company "Knirps & Co." is mentioned in the frame in the original version as it has been used by Hanse-Merkur (see http://www.hanse-merkur.de under section "Produkte"). If you click on the link "Knirps & Co", you are entering a site which contains the logo of Hanse-Merkur and an extensive description of their product "Knirps". In addition, the homepage mentions at the bottom "Die Kinderversicherung mit Zukunft. Kontakt: Kay Tomforde" (The children insurance with future. Contact Kay Tomforde). The telephone number mentioned at the bottom of the homepage (0172/400 400 1) is valid as the panel has checked itself.
Insofar, it does not matter that several links are dead and lead to further sites under construction. The Complainant critized the homepage of the Respondent as it only contains most simple graphics and is not updated (see Annex 14 where the homepage was described as having "eine unglaublich primitive Navigation ohne jeden Inhalt und Konzept"). As a matter of fact, the homepage can be considered as being rather gapful and boring. But it is not the task of the panel to decide upon the marketing and design qualities of a homepage. The Respondent has made reasonable efforts to build up a commercial website in relationship to the "Knirps & Co." Insurance product of Hanse-Merkur.
It has to be taken into consideration that Hanse-Merkur does not sell the product only by itself. Unlike the description made by the Complainant, Hanse-Merkur has an extensive system of intermediaries which are distributing their product, i..e. as independent agents. This structure can be found by taking a look at the homepage of Hanse-Merkur (http://www.018055makler.de/index_ns.htm). The Respondent seemed to have some relationship with Hanse-Merkur. In Annex 17, Peter Kühne (an employee of the Complainant) referred to a telephone call where the Respondent expressed his plans to "develop activities for the insurance company he pretended to work for as commercial agent". The same was mentioned in a statement of March 30, 2000 (Annex 14).
Similar indications might be found in the internet. The panel has used meta search engines to look for "Kay Tomforde" in the WWW. On http://www.baby-messe.de/ausst/resonanz.htm, a report on a baby fair organized in 1999 can be found. There, a short review was published which mentions the Respondent as the author. The text states at the end "Hanse-Merkur Versicherungsgruppe, Hamburg, Kay Tomforde". This fact demonstrates that there must have been a relationship between the Respondent and Hanse-Merkur. Thus, the Respondent might have registered and used the domain in question for building a service related to "Knirps & Co", a product of Hanse-Merkur.
c) Bad faith
Even if a confusing similarity exists between the domain in question and the trademark "Knirps", and the Respondent was not regarded as having legitimate interests for his behaviour, there are no indications for bad faith in this case.
d) The examples of "bad faith" mentioned in Paragraph 4(b)
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the Administrative Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating 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; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
None of these circumstances can be found in the existing case. Nothing indicates that the Respondent is a competitor or linked with a competitor of the Complainant. The Respondent’s purpose in the registration could not have been to disrupt the business of a competitor. In addition, it cannot be proven that the Respondent has intentionally attempted to attract internet users to his web site for commercial purposes. As a matter of fact, the Respondent prevents the Complainant from using the mark in a corresponding trademark. But there is no evidence that the Respondent has engaged in a pattern of such conduct as it has been foreseen in Paragraph 4(b)(ii).
The Complainant has stressed the point that the Respondent wanted to sell the domain name "for several hundred thousand Deutsche Mark". He argued that this amounts to "bad faith" according to Paragraph 4(b)(i). However, the facts described by the Complainant himself in Annex 17 has to be taken into consideration. The text states:
"Over a period of several weeks I called Mr. Tomforde to find out about his plans with the internet domain in question. He was not able to give definite answers to my questions, except that he might develop activities for the insurance company he pretended to work for as commercial agent. During another phone conversation he suddenly mentioned his great plans with the website on a national basis, including cross-promotions. (...) During the phone calls, Mr. Tomforde explicitly emphasized several times that he agrees to sell the domain to Knirps GmbH, Germany for the payment of an adequate price of several hundred thousand Deutsche Mark."
This statement can only be interpreted to the extent that the Respondent primarily registered the domain name for building up a homepage on the insurance product "Knirps & Co." Consequently, he constructed a homepage with that content which is still under operation. The Complainant himself tried to get into contact with the Respondent in order to ask for a transfer of the domain name. In the course of these discussions, the Respondent might have said that he would (only) transfer the domain name against high payments. But this reaction of the Respondent does not justify the assumption that he has registered the domain name primarily for getting excessive fees from the trademark owner.
The good faith behaviour of the Respondent is also demonstrated by Annex 14. There, the same employee of the Complainant which drafted Annex 17 summarized the discussions with the Respondent for internal purposes. The text is written in German; the following translation has been prepared by the panel:
"During this period (sc. February 2000) I called Mr. Tomforde to ask him for his intentions. Mr. Tomforde was apparently astonished about my call and as to my questions on his plans he couldnґt say anthing concrete."
The reaction of the Respondent, his astonishment, demonstrated that he didnґt register the domain name in bad faith. The described feeling can only be understood if the Respondent had made the registration for his insurance plans. Then he was of course astonished to hear that the Complainant wanted to use the domain and claimed to have trademark rights in the term "Knirps". He might have then changed his mind as to the exploitation. That explains why he referred to big business plans in later telephone calls – including the idea to settle a high amount of money paid for the transfer of the domain. But this change of views has nothing to do with the good faith situation at the time when the Respondent registered the domain name.
Finally, "bad faith" cannot be justified by reference to the employee of "Der Pool – Team für Werbung". It might be that Mr. Schmitz has proposed to transfer the domain name to Knirps for an unknown price. But Mr. Schmitz expressly stated that he has nothing to do with the Respondent. He wanted to get a check personally to himself. The statement of the employee of the Complainant in Annex 17 mentioned that according to Mr. Schmitz, "the transfer of the domain was supposed to be executed without the knowledge of Mr. Tomforde". It should be taken into consideration that "Der Pool – Team für Werbung" were administering the domain name for the Respondent and acted as his technical contact. Therefore, employees of "Der pool – Team für Werbung" were in a position to handle the transfer of the domain name independently of the Respondent. Therefore, this attempt of selling the domain name has nothing to do with the Respondent.
As a consequence, there is no sufficient proof that the Respondent has registered or acquired the domain name for getting excessive fees according to Paragraph 4(b)(i). The complaint argues in an unfair way where it states that the primary purpose and first step of the plan of the Respondent was to sell the domain name to the Complainant. The evidence of the Complainant itself proves that the first aim of the registration was to build up an insurance homepage under the domain name in question.
e) Other elements of "bad faith"
Therefore, other grounds for justifying the assumption of "bad faith" have to be checked. The provision of Paragraph 4(b) only contains a non-exclusive list of circumstances which indicate bad faith. Several WIPO domain name panels have extended the scope of the term "bad faith" (cf. Telstra Corporation Ltd. V. Nuclear Marshmallows, Case no. D2000-0003; Stralfors AB v. PDS AB, Case No. D2000-0112; McNeil Consumer Brands Inc. V. Mirweb Solutions, Case No. D2000-0612). Such an extensive interpretation should however be regarded as being dangerous. The element of bad faith is not part of the trademark law systems of most countries. Regularly, the infringement of trademarks and similar rights can be prohibited in cases of wilful and negligent actions; in the case of strict liability, the intention of the infringer is even totally irrelevant. Therefore, the UDRP only deals with a specific sector of trademark infringement, i.e. cases of wilful infringements. Therefore, it is not the task of a WIPO domain name panel to solve all infringement cases; the scope of competence of such a panel is restricted compared to the possibilities of national courts.
In the present case, there is no reason to apply this broad concept of "bad faith". On the one hand, the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Germany and in other countries. On the other hand, there are however indications in the complaint itself that the Respondent contemplated good faith use of the domain name.
With specific reference to Paragraphs 4(i) of the Policy and 15 of the Rules, this Administrative Panel decides that the Respondent has not used the domain name <knirps.com> in bad faith. Accordingly, this Administrative Panel decides that the said domain name <knirps.com> should not be transferred to the Complainant.
Prof. Dr. Thomas Hoeren
Dated: March 20, 2001