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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

HT Troplast AG vs. Julian Gorniok

Case No. D2001-0926

 

1. The Parties

Complainant is HT Troplast AG, Mülheimer Strasse 26, D-53840 Troisdorf, Germany. Its authorised representative in this case is Tobias H. Strömer, Strömer Rechtsanwälte, Duisburger Strasse 5, 40477 Düsseldorf, Germany.

Respondent is Julian Gorniok, 3 Park Place Ealing, London W5 5NQ, United Kingdom. Respondent's telephone number is +44(181)567 3911 and Respondent's e-mail addresses are <postmaster@trocal.com> and <julian.e.gorniok@uk.pwglobal.com>.

 

2. Domain Name and Registrar

The domain name at issue is <trocal.com>. The Registrar is Melbourne IT, Ltd.D/B/A Internet Names Worldwide, Australia.

 

3. Procedural History

The World Intellectual Property Organization Arbitration and Mediation Center (the Center) received a Complaint in electronic form on July 19, 2001, and in hardcopy form the following day. On July 23, 2001, the Center acknowledged receipt of the Complaint. The same day the Center issued a Request for Registrar Verification and received a Verification Response on July 24, 2001.

According to that Response:

- A copy of the Complaint was sent to the Registrar by Complainant,

- The domain name at issue was registered with that Registrar,

- Respondent was the current Registrant,

- The Uniform Dispute Resolution Policy applies to the domain name,

- The current status of the name was active,

- The creation date and the registration date for the domain name at issue was 2000-02-14 and the expiry date was 2002-02-14,

- "Organisation name" was Julian Gorniok with the mailing address indicated above,

- The Administrative Contact and the Technical Contact was Julian Gorniok with the above-mentioned mailing address and with e-mail address as also indicated above.

On July 31, 2001, the Center issued a Notification of Commencement of Administrative Proceeding which was transmitted to Respondent by post/courier (with attachments) and by e-mail (without attachments). On August 13, 2001, the Center received the returned Notification from Respondent's postal address.

The Center issued a Notification of Respondent Default on August 23, 2001, which was communicated to the Parties by e-mail.

The Center then invited Mr. Henry Olsson to serve as Sole Panelist in the case and received on August 28, 2001, Mr. Olsson's Statement of Acceptance and Declaration of Independence and Impartiality. The Center appointed Mr Olsson as Sole Panelist on August 28, 2001, and issued a Notification of Appointment of Administrative Panel and Projected Decision Date which was communicated to the Parties by e-mail. The Projected Decision Date was September 11, 2001.

The Sole Panelist considers that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.

According to the Complaint, a copy of it together with the cover sheet was sent to Respondent on July 18, 2001, by postal or courier service with postage prepaid and return receipt requested. Complainant has not indicated that that communication was returned. The e-mail communication of the Notification of Complaint sent to <julian.e.gorniok@uk.pwcglobal.com> was returned because user was not listed in the public Name and Address Book. The e-mail with that Notification sent to the other e-mail seems to have gone through. As indicated above, the Notification of Complaint sent by post/courier was returned to the Center. As regards the Notification of Respondent Default, that was sent to Respondent's above-mentioned e-mail address it seems not to have been delivered, while nothing in the file indicates that the e-mail Notification of Appointment of Administrative Panel did not arrive to Respondent.

The Panel notes that the communication of the Complaint by Complainant to Respondent seems to have worked. The Panel furthermore notes that the Center has done everything possible to communicate the relevant Notifications to Respondent by mail/courier service and by e-mail. On the basis of these considerations, the Panel concludes that Respondent has been made duly aware of the Complaint and the other relevant steps in this case and that there is, from that point of view, no obstacle to considering the case.

 

4. Factual Background

Complainant, HT Troplast AG, is a public limited company established under the laws of the Federal Republic of Germany. It has its principal place of business in Troisdorf, in Germany, and is registered in the Companies' Register (District Court Siegburg) HRB 4242. It is a subsidiary of the German Rütgerswerke AG, which is a globally operating plastics processing company with a number of affiliate companies in the world, including in the United Kingdom.

Nothing is known in the case about Respondent's business activities.

Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of the Complaint, to the jurisdiction of the courts where Respondent is located, as shown by the address given for the domain name holder in the concerned Registrar's Whois database at the time of the submission of the Complaint to the Center.

 

5. Parties' Contentions

A. Complainant

General

First, Complainant submits that the three elements indicated in Paragraph 4.a of the Policy are at hand in that the domain name at issue is confusingly similar to a trademark or a service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain name and that Respondent has registered and is using the domain name in bad faith.

Identity or Confusing Similarity

Complainant submits that it is the owner of the German trademarks "Trocal" (word mark, since 1961), "TROCAL" (word mark and design mark, since 1970) and "TROCAL" (word mark and design mark, since 1999); those marks are registered in classes 6, 17 and 19. In addition, the three trademarks are also the subject of international registrations under the Madrid Agreement and the Madrid Protocol, since 1998, 1973 and 1999, respectively (with renewals).

Complainant contends that it has been using the trademarks for more than 30 years for its products. "TROCAL" is, according to Complainant, one of the leading brands in the field of window and door technology, and it produced the first mass-produced PVC windows in 1954, and part of Complainant's production is the TROCAL profiles. Complainant is also the owner of a number of domain names, such as "trocal.be", "trocal.ch", trocal.ru", trocal.at", trocal.cz", trocal.es", trocal-profile.de" and <trocal-profiles.com>.

As Complainant plans to use the trademark, the integration of Internet strategies plays an important role.

Rights or Legitimate Interests

First, Complainant contends that, as has been found in a number of other domain name cases, once a Complainant provides a prima facie showing of the facts, the burden of proof concerning those particular facts shifts to Respondent who has to provide concrete evidence that it has rights or legitimate interests in the domain name.

In this context Respondent is, according to Complainant, not a holder of any trademark "trocal" or a similar mark, nor is this his name. There is no evidence of Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Also, the domain name has never been used as an e-mail address.

In May 2000, when Complainant took the first contact with Respondent, the website "www.trocal.com" was a mere redirection to the address "www.domainsnet.com/regfor.htm" which page only states that "This domain name has been registered by DomainsNet." There has been no attempt to use that site. Respondent, in an e-mail of June 11, 2000, mentioned that it was in the process of developing a local portal under the name "truly local" or, in short, "trocal." There is, according to Complainant, no obvious reason to abbreviate "truly local" to "trocal" Respondent has not provided any documentary evidence to substantiate that assertion, and, once Complainant has produced a prima facie showing, Respondent would have to submit concrete evidence of at least demonstrable preparations in order to rebut Complainant's showing. Also, has not reported what the structure of that local portal would be like nor has it been shown which steps of realizing it that it has taken. No business plan or possible business partners have been indicated.

Respondent has, according to Complainant, not been commonly known by the domain name at issue. Furthermore, Respondent is not making any legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert customers or to tarnish the trademark or service mark at issue. Until now Respondent has not used the domain name at issue and it never claimed to use it, but its only intention of using it is to purchase to the Complainant.

In view of these circumstances, Complainant asserts that it has made a prima facie showing that Respondent has no rights to, or legitimate interests in, the domain name. The burden is now on Respondent to rebut this showing by providing concrete evidence to the contrary.

Registration and Use in Bad Faith

First, Complainant contends that circumstances indicate that Respondent registered the domain name at issue primarily for the purpose of selling, renting or otherwise transferring it to the owner of the trademark or service mark for a valuable consideration in excess of the domain name registrant's out-of-pocket costs directly related to the domain name.

Generally, this contention is, according to Complainant, supported by Respondent's failure for substantial period of time to make good faith use of the domain name for its business. Furthermore, in the above-mentioned e-mail from Respondent to Complainant the former stated that "(i)f the company you represent wanted to buy 'trocal.com' then I would consider selling it". In a later mail – also submitted in the case – Respondent suggests that further steps depend on the price, with an indication that Respondent had bought a number of domain names in the range between USD10,000 to 50,000 where it had been felt to be valuable to Respondent's company. In the view of Complainant such a price exceeds the costs for the domain name registrant's out-of-pocket costs directly related to the domain name. Instead, in the absence of any credible evidence to the contrary, an offer of USD70 would accurately reflect those costs. The price suggested indicates, according to Complainant, Respondent's bad faith.

Remedies Requested.

In accordance with Paragraph 4.b.(i) of the Policy and for the reasons described, Complainant requests the Administrative Panel to issue a decision that the domain name at issue <trocal.com> be transferred to Complainant.

B. Respondent

Respondent has not submitted any Response and is in Default.

 

6. Discussions and Findings

Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

In the case of a Default by a Party, Paragraph 14 of the Rules prescribes that if a Party in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case, Respondent has not submitted any Response and has consequently not, despite the opportunity given, contested any of the contentions by Complainant. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained, or referred to, in the Complaint and the documents submitted to support those contentions.

As stated by the Registrar, the Policy is applicable to the domain name registration at issue.

Paragraph 4.a of the Policy directs that Complainant must prove each of the following:

- that the domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights,

- that Respondent has no rights or legitimate interests in the domain name, and

- that the domain name has been registered and is being used in bad faith.

In the following part of this Decision, the Panel discusses each of those elements.

Identity or Confusing Similarity

In this respect, Complainant has, according to Paragraph 4.a(i) of the Policy to prove that the domain name at issue is identical or confusingly similar to a trademark or a service mark in which Complainant has rights.

The documentation submitted by Complainant shows that Complainant owns registrations both in Germany and internationally of the wordmark "trocal" and the word and design mark "TROCAL" Complainant has stated that the mark has been used for a long time and is well-known in the field of plastics technology. The Panel accepts these contentions.

The domain name at issue incorporates the trademarks with the addition of ".com". In the view of the Panel this is an insignificant distinction which does not remove the likelihood of confusion.

On the basis of these considerations the Panel concludes that there exists in fact a confusing similarity between the domain name and Complainant's trademarks.

Rights or Legitimate Interests

In this respect Complainant has, according to Paragraph 4.a(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name.

In this respect, Complainant contends basically that Respondent is not a holder of any trademark "trocal" or any similar mark, that the mark is not his name, that the domain name has not been used in serious way but only redirected viewers to another domain stating only that the domain had been registered by "DomainsNet", that Respondent's assertion about the development of a local portal under the name "trocal" as an abbreviation of "truly local" is a purely evasive defence, that Respondent has not been commonly known by the domain name and that Respondent is not making any legitimate non-commercial or fair use of the domain name without an intent misleadingly to divert consumers or to tarnish the trademark at issue. Complainant has submitted a copy of the website in question and of certain e-mails from Complainant to Respondent.

Respondent has not, in this case, commented upon the contentions by Complainant nor submitted any documentation; Respondent has, however, in an e-mail of June, 2000, informed about the development of the local portal.

The circumstances in the case, and the documents provided as evidence, support Complainant's contention about Respondent's lack of rights or legitimate interests in the domain name. The Panel, in particular, attaches importance to the absence of any information or documentation about Respondent's work on, or plans for, the use of the domain name.

On the basis of these considerations the Panel concludes that Respondent has no rights or legitimate interests in the domain name at issue.

Registration and Use in Bad Faith

Complainant has, according to Paragraph 4.a.(iii) of the Policy, to prove that the domain name has been registered and is being used in bad faith.

Complainant has in this context referred to Respondent's failure for a substantial period of time to make good faith use of the domain name for its business and to two e-mails in June 2000, where Respondent suggested the possibility of a sale of the domain name and in that context mentioned that Respondent's company had registered a number of domain names in the range of USD10,000–50,000.

The Panel notes in relation to the issue of bad faith the absence of indications about Respondent's work on, or plans for, the domain name and the suggestion about the possibility of sale of the domain name depending on the price. Even if the later of the two e-mails did not directly propose a sale, the Panel must, in views of the circumstances, conclude that Respondent in fact suggested such a sale and that the price mentioned is clearly higher than out-of- pocket costs directly related to the domain name.

On the basis of these considerations the Panel finds that Complainant has sufficiently established that the domain name at issue was in fact registered and is being used primarily for the purpose mentioned in Paragraph 4.b(i) of the Policy and that consequently, Complainant has proved bad faith as prescribed under Paragraph 4.a(iii) of the Policy.

Conclusions

On the basis of these considerations the Panel concludes that it has been established that the domain name at issue is confusingly similar to the trademarks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith

 

7. Decision

In accordance with Complainant's request and with reference to Paragraph 4.i of the Policy the Panel requires the domain name <trocal.com> to be transferred to Complainant.

 


 

Henry Olsson
Sole Panelist

Dated: August 31, 2001

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/d2001-0926.html

 

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