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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
August Storck KG v. Unimetal Sanayi ve Tic A.S.
Case No. D2001-1125
1. The Parties
The Complainant is August Storck KG of Waldstrasse 27, Berlin, Germany ("Storck").
The Respondent is Unimetal Sanayi ve Tic.A.S. of Buyukdere Cad. No. 107/7 Bengun Han Gayrettepe, Istanbul, Turkey ("Unimetal").
2. The Domain Name and Registrar
The Domain Name at issue is <merci.com> and the registrar is Network Solutions, Inc., of Virginia 20170, USA.
3. Procedural History
A Complaint pursuant to the Rules and Supplemental Rules was lodged on hard copies on September 14, 2001, and by email on September 26, 2001, with the WIPO Arbitration and Mediation Center. An acknowledgment of the receipt of the Complaint was sent on September 17, 2001.
On October 1, 2001, all the appropriate procedural requirements were met, and the Respondent was duly notified in accordance with the Rules and the Supplemental Rules. To date no Response has been received, either within the time limit under the Rules, or subsequently.
All payments appear to have been duly made by Storck.
The panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, and the language of the proceeding is English.
4. Factual Background
Storck is the owner of a wide portfolio of international trademarks with the trading name "merci" in relation to chocolate and similar goods. A schedule of trademarks and copies of the appropriate certificates were annexed to the Complaint document. Storck has demonstrated that the trade marks in question have been in constant use for over 30 years, the first trade mark having been registered in Germany in 1967. It is of relevance, given the domicile of the Respondent, that Storck has registered trademarks in Turkey.
5. Parties’ Contentions
Storck has contended that the Domain Name in question is identical or confusingly similar to its trade mark, that Unimetal has no right or legitimate interest in respect of the Domain Name, and that the Domain Name has been registered and is being used in bad faith.
Storck points to the long historical use of the name "merci" on the international market for chocolate products. In addition to providing evidence in the form of trade mark certificates, Storck has also helpfully submitted a survey carried in 1995, demonstrating that 70% of customers in Belgium were aware of the brand "merci" and that that awareness had arisen to 78% by 1999, as a result of promotion and advertising.
Storck further contends that Unimetal has no right or legitimate interest in respect of the Domain Name. It points to the fact that although registered in 1996, the Domain Name does not and has never resolved to an actual website. Storck also points to the fact that, to the best of its knowledge and belief, Unimetal does not own any registered trade mark for the name "merci", nor does it manufacture and/or distribute any products under that name.
In relation to its contentions on the question of bad faith, Storck refers to an informal exchange in 1997, in the course of which Unimetal indicated its willingness to transfer the Domain Name for a payment of US$100,000.
Storck also points to the history of its use of domain names by Unimetal, and in particular the decision in Alain Delon Diffusion S.A. .v. Unimetal Sanayi ve Tic A.S. Case No. D2000-0989 (October 26, 2000).
Storck contends that inaction (i.e. passive holding) of a Domain Name can amount to bad faith, and refers to previous decisions of administrative panels to support this assertion.
As indicated above, to date the panel has received no Response from Unimetal. Nothing was filed within the appropriate time limit, and nothing has subsequently been received accompanied by a request to be heard "out of time".
6. Discussion and Findings
In the absence of any contention to the contrary from Unimetal, the panel has no basis on which to do anything other than to accept the factual contentions made on behalf of Storck. Accordingly, in each and every respect these are taken as read.
In relation to the assertions regarding the applicability of the UDRP to the circumstances, the panel has given due consideration to the Complaint. First, as regards the identicality of the Domain Name to the trade mark, it is a well established principle that the mere fact that the mark is being used with the suffix ".com" is not sufficient to avoid a confusion of identicality in the absence of any other distinguishing features. Accordingly, the panel is happy to conclude that in this case the Domain Name in question is, for all purposes, identical to the trade makes owned by Storck.
In relation to the questions of rights and legitimate interests, Storck has contended that the well-known nature of its trademark, and the absence of any evidence of preparation to use the Domain Name for any legitimate purpose by Unimetal is sufficient to satisfy this requirement under the UDRP. The panel, having given due consideration to all the contentions and other circumstances agrees that there is no evidence of any rights or legitimate interests on the part of Unimetal in relation to the Domain Name of which Complaint is made.
As is usual in these cases, it is the last issue, namely that of "bad faith" which gives rise to the most factual consideration and discussion. It is the obligation of the Complainant to demonstrate that bad faith has occurred. UDRP Policy and Rules are quite clear on this point. Accordingly, the absence of a Response from Unimetal is not in its itself sufficient to satisfy this limb of the test.
It is important for us to deal with the question of "use". This panelist has commented in previous cases that, in extreme circumstances, a very literal interpretation of the wording "is being used" could render the UDRP completely toothless, and that cannot have been the intention when the Policy was drawn up. As a result, there have been a number of decisions by panelists indicating quite clearly that inaction can constitute use in bad faith. This panelist does not necessarily accept that that is the case, but is prepared to agree that general inaction accompanied, as in this case, by other factors, can be sufficient to constitute use in bad faith.
UDRP contains helpful guidance as to how the Complainant may seek to demonstrate bad faith on the part of the Registrant. There are four, non-exclusive, circumstances which can be paraphrased as follows:
(i) There is evidence that the Registrant obtained the domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or to a competitor.
(ii) The Registrant obtained the Domain Name in order to prevent the owner of the trademark or service mark from reflecting that mark in a corresponding Domain Name.
(iii) The Registrant obtained the Domain Name primarily for the purpose of disrupting the business of a competitor.
(iv) The Registrant has intentionally attempted to attract for commercial gain Internet users to his website or other on-line location by creating a likelihood of confusion.
There is no specific rule that any one or all of these circumstances must be met in order that bad faith should be proved, but it is certainly helpful if such a circumstance can be demonstrated.
In this case, Storck has given cogent evidence to the effect that when the existence of the Domain Name was first raised with Unimetal, the Domain Name in question was offered to Storck at a price of US$100,000. As indicated above, in the absence of any contention by Unimetal to the contrary, this must be accepted as factually correct.
There can be no clearer evidence of bad faith on the part of the Registrant, Unimetal, particularly in the light of the total failure over a 5 year period to make any use whatsoever of the Domain Name in question. There is no need to go further.
In the circumstances the panel finds that all the three required elements under the UDRP have been satisfied and the Complaint is therefore upheld.
In the light of the foregoing the panel decides that the Domain Name registered by Unimetal is identical to the trademarks of Storck, that Unimetal has no legitimate interest in respect of this Domain Name and that the Domain Name in issue has been registered and used in bad faith.
Accordingly, the panel requires that the registration of the Domain Name <merci.com> be transferred to Storck.
Gordon D. Harris
Dated: November 23, 2001