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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Billerbeck Schweiz AG v. Peter Billerbeck
Case No. D2001-0825
1. The Parties
The Complainant is Billerbeck Schweiz AG, a company incorporated in Switzerland, with principal place of business at Brühlmattstrasse 10, CH-5525 Fischbach-Göslikon, Switzerland.
The Respondent is Peter Billerbeck, In der Reben 64, 4114 Hofstetten, Switzerland.
2. The Domain Name and the Registrar
The domain name at issue is <billerbeck.com> (the "Domain Name"). The registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20179, USA (the "Registrar").
3. Procedural History
On June 25, 2001, the Complainant filed by e-mail a complaint (the "Complaint") with the WIPO Arbitration and Mediation Center (the "Center"). The Center received a hard copy of the Complaint on June 26, 2001, and sent the acknowledgment of receipt on June 28, 2001.
On June 29, 2001, the Center requested the Registrar to verify the Domain Name in dispute. On the same date, the Registrar confirmed that it is the registrar of the Domain Name, that it has received the Complaint, that according to its Whois Database the current registrant is Peter Billerbeck, In der Reben 64, 4114 Hofstetten, Switzerland, that the administrative contact is the same as the registrant, that the Service Agreement Version 5.0 applies to the Domain Name and that the Domain Name is in "active" status.
On July 2, 2001, the Center proceeded to verify whether the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Center concluded that the Complaint satisfies all of these formal requirements.
On July 2, 2001, the Center sent a copy of the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. On July 16, 2000, the Respondent requested an extension to file a Response. The Complainant agreed to a 14-day extension. Thereupon the Center granted an extension until August 4, 2001. On August 3, 2001, the Respondent timely filed his Response.
On August 17, 2001, the Center informed the Parties that an administrative panel (the "Panel") has been appointed.
The Panel finds it was properly constituted in compliance with the ICANN Rules and the WIPO Rules and the panelist issued a Statement of Acceptance and Declaration of Impartiality and Independence.
4. Factual Background
The Complainant, Billerbeck Schweiz AG, is a Swiss manufacturer of pillows, blankets and other bedding products. It owns a Swiss and an International Registration of the trademark BILLERBECK which is claimed notably for pillows, sleeping bags, blankets, bed covers, etc. (Annex 3).
The Respondent is Peter Billerbeck, In der Reben 64, 4114 Hofstetten, Switzerland, who registered the Domain Name on October 13, 1997.
The Domain Name resolves to an website stating "Welcome to Billerbeck family".
5. Parties' Contentions
- that the Domain Name <billerbeck.com> is identical to Complainant's trademark;
- that Complainant is part of a group of companies in the field of bedding products and that its trademark is well known in Switzerland and has been used since 1921, when the company was founded;
- that in the summer 2000, Complainant's Counsel contacted the Respondent and requested the transfer of the Domain Name to the Complainant for a payment of CHF 5'000. First, the Respondent required USD 15'000 and later he refused the transfer.
- that the Domain Name has been registered and used in bad faith with the only purpose of making the Complainant pay as much as possible for the transfer of the Domain Name because the Respondent must have known that he was infringing Complainant's trademark rights;
- that even though Respondent's surname is identical to the Domain Name, the Respondent had no real interest in the Domain Name since he was immediately prepared to sell it;
- that Respondent did not prove his interest to the Domain Name because after registration it in 1997, he made no efforts to use it.
- that the Domain Name reflects his surname. The Respondent claims that under the Swiss Civil Code one's surname enjoys legal protection of personality and takes precedence over a trademark in noncommercial contexts;
- that he had no intention to use the Domain Name for commercial purposes, rather he wanted to have his family surname registered as an internet domain name;
- that he registered the Domain Name in the ".com" gTLD because <billerbeck.ch> had already been registered by the Complainant;
- that in the beginning he had no intention to sell the Domain Name; after the Complainant's Counsel contacted him several times, he considered a transfer for a compensation of USD 15'000. Meanwhile however, he states that he is no longer prepared to sell the Domain Name;
- that he had no intention to make any profit or to act in bad faith;
- that he offered an exchange of the Domain Name for Respondent's <billerbeck.ch> domain name, but Complainant rejected the offer;
- that he started the installation of his home page back in December 2000, but that because of technical difficulties encountered with the Registrar, the homepage became available in July 2001.
6. Discussion and Findings
To have the disputed Domain Names transferred to it, Complainant must prove each of the following (Policy, paragraph 4(a)):
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the Respondent's domain name has been registered and is being used in bad faith.
Identity or Confusing Similarity
Complainant has shown that it owns a Swiss and an International Trademark registration of the mark "BILLERBECK". The Panel therefore finds that the Domain Name at issue is identical to Complainant's trademark.
Legitimate Rights or Interests
The Policy provides, without limitation, several circumstances any of which, when proved, demonstrates Respondent's rights or legitimate interest to the Domain Name. Notably, paragraphs 4(c)(ii) and (iii) require the Respondent to submit evidence that he or his business have been commonly known by the domain name or that he is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to divert consumers or to tarnish the trademark.
The Respondent submitted documents showing that his surname is indeed Billerbeck. It appears that the Respondent registered the Domain Name in order to be identified by his surname, in line therefore with the provision of paragraph 4(c)(ii) of the Policy (Jose de Jesus Velasquez Jimenez v. Velasquez-Perez, CPA , WIPO Case No.D2001-0342). The use of one's own surname in a domain name corresponds to a legitimate customary practice and is, as a rule, sufficient evidence of a legitimate right or interest in the domain name. The scope of the Policy is limited to cybersquatting. Trademark owners shall not be allowed to use the Policy to dispossess summarily a third party of a domain name reflecting his or her surname (G.A. Modefine S.A. v. A. R. Mani, WIPO Case No.D2001-0537).
In the present case, the Respondent states "I wanted to safeguard my family's name in the Internet, for the future" and that he had no "intention to use the domain name for commercial purposes". There is no evidence whatsoever before the Panel indicating that the Respondent attempted to divert consumers or tarnish in any way Complainant's trademark (Dr. W. Kupper and E. von Karajan v. Karajan Pty Ltd., WIPO Case No.D2000-1578).
Therefore, the Panel finds that the Respondent succeeded in proving that he is commonly known by the Domain Name and, therefore, has legitimate rights and interests in the Domain Name.
Registration and Use in Bad Faith
Since this Panel has held that the Respondent demonstrated his legitimate rights and interests in the Domain Name, the issue of bad faith needs not necessarily be addressed. In any event, as already mentioned above, it appears that the Respondent had no intention to use the Domain Name for commercial purposes, but rather for private ones. This case must be distinguished from W.& G. Foyle Ltd. v. Foyle's Books Ltd. (WIPO Case No.D2000-1544) because there is no evidence here suggesting that the Respondent registered the Domain Name in bad faith in an attempted to attract for commercial gain internet users by creating a likelihood of confusion with Complainant's mark.
Furthermore, no evidence indicates that the Respondent attempted to prevent the Complainant from reflecting his mark in a corresponding domain name. On the contrary, the Panel finds that Respondent's offer to give his Domain Name in exchange for Complainant's <billerbeck.ch> is an additional evidence of Respondent's lack of bad faith. It should be noted in this context that the domain name system provides for distinct gTLDs and ccTLDs to enable the coexistence of legitimate identical second level domain names in the Internet.
Accordingly, this Panel finds that Respondent has not registered the Domain Names in bad faith.
For all of the foregoing reasons, this Panel decides that the Domain Name <billerbeck.com> registered by the Respondent is identical to the trademark "BILLERBECK" owned by the Complainant.
However, this Panel finds that the Respondent demonstrated legitimate rights and interests in the Domain Name. Furthermore this Panel finds that the Domain Name has not been registered in bad faith.
Accordingly, this Panel decides that the Complaint is denied because Complainant has not succeeded in proving the evidence required by paragraph 4(a) of the Policy.
Dated: August 28, 2001