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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner

Case No. D2001-1447

 

1. The Parties

1.1 The Complainant is Delikomat Betriebsverpflegung m.b.H., a company incorporated in Austria with its registered office Vienna, Austria.

1.2 The Respondent is Alexander Lehner, of Vienna, Austria.

 

2. The Domain Names and Registrar

The domain name upon which this Complaint is based is <delikomat.com>.

The registrar of the domain name is at the date of the Complaint is Network Solutions, Inc., of Virginia, U.S.A.

 

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Name and Numbers ("ICANN") on October 24, 1999, (the "Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999, (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by email on December 11, 2001, and hardcopy on December 27, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant. The Complaint stated that a copy of the Complaint together with the cover sheet as prescribed by the Supplemental Rules were sent to the Respondent’s employer’s address and that a copy of the Complaint was sent to the Registrar of the domain name in dispute.

3.3 On December 14, 2001, the Center sent to the Complainant’s representative an Acknowledgment of Receipt of Complaint.

3.4 The Center sent a Request for Registrar Verification to Network Solutions, Inc. on December 17, 2001, by email.

3.5 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on January 8, 2002, to the Respondent by courier and by email. The Center advised the Respondent that the Response was due no later than January 28, 2002.

3.6 The Center received a further submission by the Complainant on January 10, 2002, containing a "Declaration in Lieu of an Oath".

3.7 The Center received a Response on January 28, 2002.

3.8 On January 29, 2002, the Center notified the Respondent and the Complainant’s representative that the Response did not include the statement set out in Rule 5 (b) (viii) and that the Respondent failed to comply fully with other requirements set out in Rule 5 (b) of the Rules. The Respondent was also notified that in case of non-compliance with these requirements by February 4, 2002, the Center would proceed to appoint the Administrative Panel. The Center further notified the Respondent that the Panel would be informed of any deficiencies in the Response which the Respondent failed to remedy.

3.9 On February 3, 2002, the Center received a statement by the Respondent by fax and on February 6, 2002, by post. It only confirmed the transmission of the Response by fax and post, but did not contain any new statement by the Respondent.

3.10 On February 4, 2002, the Panel invited Dr. Torsten Bettinger to serve as a Panelist in this Administrative Proceeding. Having received the Panelist’s Declaration of Impartiality and Independence, the Center issued a Notification of Appointment of Administrative Panel to the parties, and set a decision date, with the Panelist’s deadline for issuing a decision of February 20, 2002.

3.11 In an e-mail of February 15, 2002, the Center received a further submission from the Complainant’s representative. In the e-mail the Complainant stated:

"We know that the rules do not provide further supplemental submissions to be made by the parties. due to the fact that Mr. Lehner, the respondent, stated out that he did not work on projects at the complainants headquarters we are forced to provide a further submission. we are now in hand of evidence that the Respondent did provide false information in his response to our complaint."

3.12 The Center sent a Transmission of Case File to Administrative Panel by hard-copy and e-mail on February 6, 2002. The documentation was received in hard copy on February 7, 2002.

 

4. Factual Background

4.1 Activities of the Complainant

The following information is asserted as fact in the Complaint.

The Complainant, Delikomat Betriebsverpflegung Gesellschaft m.b.H is a registered company with limited liability having its principal place of business in Vienna, Austria. It was registered in 1972. The Complainant has submitted extracts of the Austrian Company register in this respect.

The Complainant sets up coffee machines under the label "Deli" in Austria and neighbouring countries. It also sells coffee with the name "Delicafe". These products are famous in its markets (Austria, Germany, Slovakia and Czech Republic) and have acquired a strong secondary meaning. The Complainant is market leader for its products in Austria.

4.2 The Complainant’s trademarks

The following information is asserted as fact in the Complaint.

The Complainant is the proprietor of the trademark registration "Delikomat and design") in Austria with priority date of April 6, 2000.

The Complainant also states that it is the registrant of numerous domain names incorporating the words "delikomat", including <delikomat.at>, <delikomat.de> <delikomat.si> and <delikomat.sk>. The Complaint states that the principal website operated by the Complainant (at <www.delikomat.at>) contains information on the products and services of the Complainant.

4.3 Activities of the Respondent

The Respondent is an private individual. The Complaint states that he is neither a licensee of the Complainant or otherwise authorized to use the Complainant’s mark in any manner, nor is he active in a business area which would justify the registration of the disputed domain.

The Respondent has not registered the word "DELIKOMAT" as a trademark or service mark in any country of the world.

The website did not show any content until September 2001. At some point between September 2001, and December 2001, the domain name <delikomat.com> site was redirected to the website at <deli.com>.

 

5. The Complainant’s contentions in the Complaint

5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant asserts that the relevant part of the domain name in dispute is the expression "delikomat", which is clearly identical with or confusingly similar to the trademark registration "DELIKOMAT and Design".

5.3 In reference to the element in paragraph 4(a)(iii) of the Policy, the Complaint recites paragraph 4(b) of the Policy and sets out the following circumstances, which it states to be evidence of the registration and use of the domain name in bad faith under this paragraph:

- Through the Complainant’s exclusive use of the trademark, the DELIKOMAT mark has become famous. The Complainant contends that the Respondent knew about these facts because he was working for the Complainant on some projects.

- The Respondent allegedly has been offering the sale of the disputed domain to the Complainant. The only target of the registration of the domain by the Respondent was to sell it to the Complainant.

- The Respondent is not making legitimate non-commercial or fair use of the domain name. There is no evidence to suggest that the Respondent is using the domain in a legitimate, non-commercial manner.

- The Respondent has registered the domain name in order to misleadingly divert consumers seeking the Complainant’s internet site to the Respondent’s forthcoming internet site or internet sites of yet not known third parties.

In support of the Complaint, the Complainant has submitted an affidavit of its managing director, Mag. Andreas Nemec, whose sworn statements included the following statements:

1. This enterprise is the market leader in the area of the set up of coffee machines in Austria.

2. The registered labels of Delikomat Betriebsverpflegung Ges. m.b.H. namely "Delikomat" and "DeliCafe" have acquired secondary meaning in Austria.

3. The Respondent, Mr. Alexander Lehner, worked at the headquarters of the Complainant from January 1997, to September 2000. I was informed that Mr. Alexander Lehner has offered the sale of the domain name <delikomat.com> to Delikomat Betriebsverpflegung Ges. m.b.H. Delikomat Betriebsverpflegung Ges. m.b.H has rejected this offer.

 

6. The Respondent’s contentions

6.1 In his e-mail dated January 28, 2002, the Respondent states that he never worked directly or indirectly for the Complainant and that he never offered the domain name to the Complainant.

6.2 He further asserts that he registered the domain name on December 21, 1999, half a year before the Complainant registered the trademarks and that at the date of the registration no trademarks were entered worldwide. He states that he acted in good faith.

 

7. Discussion and Findings

A. Procedural Matters

7.1 The Panel notes that the Center received the Response within the specified time, but that the Response contained the following deficiencies:

(1) The Response did not contain the full statement specified in Rules, Paragraph 5(b)(viii), requiring that a response: "Conclude with the following statement followed by the signature of the Respondent or its authorized representative:

"Respondent certifies that the information contained in this Response is to the best of Respondent's knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."

(2) The Response did not specify a preferred address and preferred method for case-related communications to the Respondent.

(3) The Response did not state whether the Respondent elected to have the dispute decided by a three member panel as required by Rules, Paragraph 5(b)(iv), or whether the Respondent agreed with the Complainant’s election of a single-member Panel.

(4) The Response did not identify any other legal proceedings that have been commenced or terminated in connection with or relating to the domain name, as required by rules, Paragraph 5(b)(vi).

7.2 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 principles of law that it deems applicable. In the case of 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 submitted a Response to the Center but has not, despite the opportunity given, remedied any of the deficiencies indicated by the Center. The Panel cannot find that such exceptional circumstances are present as mentioned in Paragraph 14 that would excuse the lack of compliance with the requirements by the Rules and Supplemental Rules. However as admitting the submissions in the Respondent’s e-mail would not in fact prejudice the Complainant or affect the outcome of this case, the Panel has decided to consider the Respondent’s submissions.

7.3 The Panel further notes that the Center received a further submission by the Complainant on January 10, 2002, and on February 15, 2002. The submission of January 10, 2002, contained an Affidavit by Mr. Andreas Nemec, former Managing Director of the Complainant. The submission of February 15, 2002, contained several billings from the Company "Systems Management" in Vienna that show that the Respondent had provided computer services for the Complainant. Neither of them were requested by the Panel pursuant to Rule 12.

Rule 12 of the Rules unambiguously provides that the Panel may request, in its sole discretion, further statements or documents from either of the Parties. There is no provision in the Rules for a party to file an additional submission without leave of the Panel. This is because, under the expedited process provided under the Policy and Rules, each party is given one opportunity to put forward all the material on which it wishes to rely and is expected to do so.

The question whether Rule 12 shall be constructed as precluding acceptance of additional unsolicited submission has been considered in a number of panel decisions:

In J.P.Morgan v. Resource Marketing (D2000-0035) the 3-member panel said:

"A number of panel decisions have considered a Reply or Rebuttal without comment. See, e.g., Cedar Trade Associates, Inc. v. Ricks, (FA93633); Aero-Turbine, Inc. v. Mcayman, Ltd., (FA93675); Travel Services, Inc. v. Tour COOP of Puerto Rico, (FA92524); Heelquick!, Inc. v. Goldman, et al., (FA92527). Because the distinguished panelists in these cases did not discuss this issue, the Panel in the present case does not have the benefit of their reasoning. However, looking at the Rules and the decision in Easyjet Airline Co., Ltd. v. Steggles, (WIPO Case No. D2000-0024), the Panel is persuaded that documents, whether designated "replies" or "rebuttals," are not called for in the Rules. Paragraph 12 of the Rules provides for additional submissions only at the Panel’s request, in its sole discretion. The Panel is persuaded by the reasoning of Easyjet, supra, that such unrequested submissions should not be considered. Id. at paragraph 5,I."

The Panel in Easyjet refused to admit the material simply because there is no express provision in the Rules.

The Panel in Viz Communications, Inc. v. Redsun dba <www.animerica.com> and David Penava (WIPO Case No. D2000-0905) referenced the JP Morgan Decision and came to the following conclusion:

"With respect to the learned Panelists in JP Morgan, this panel does not interpret Rule 12 as precluding acceptance of additional uninvited submissions under the panel’s general powers conferred by Rule 10, particularly having regard to the panel’s duty under Rule 10(b) to ensure each party is given a fair opportunity to present its case. If a Respondent raises matter which the Complainant could not have been expected to have addressed in its Complaint, admission of an uninvited reply may be warranted in the interests of fairness. It would be an odd result if the panel may request a reply in such circumstances under Rule 12 but must refuse an uninvited reply on the same topic, simply because there is no express provision for such a reply in the Rules."

The Panel follows the reasoning of the Panel in Viz Communications and accordingly finds that it is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions.

In this case, after consideration of Complainant’s supplemental submissions the Panel has decided to accept the Complainant’s supplemental submissions as they do not address topics which the Complainant could have addressed in its Complaint.

B. Substantive Matters

7.4 Pursuant to paragraph 4(a), the Complainant must prove that each of the following three elements are present if the Complaint is to prevail:

(i) The Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

7.5 Domain Name identical or confusingly similar to Complainant’s trademark

The domain name in dispute is <delikomat.com>. The Complainant has a trademark registration in Austria for "Delikomat and design". The Panel finds that the design does not have a relevant distinguishing function and that the dominant part of this mark is "Delikomat".

The Panel further finds that the domain name is confusingly similar to Complainant’s mark. It is well established that the specific top level of the domain name such as ".org", ".net" or ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See WIPO cases Nos. D2000-0135, D2000-0429 and D2000-1400).

Therefore, apart from the gTLD suffix forming part of the domain name which does not have a relevant distinguishing function in determining whether a domain name is identical or confusingly similar, there is no difference between the disputed domain name and the dominant part of the Complainant’s "DELIKOMAT" trademark.

That the date of registration of the mark is after registration of the Domain Name is of no moment. The issue under this first factor is whether the Complainant has rights as of the time of the Complaint (See WIPO Case No. D2000-0270). Whether the registration date is relevant for the finding of bad faith will be discussed at the appropriate stage (see below).

The Panel thus finds that the Complainant has proven paragraph 4(a)(i) of the Policy.

7.6 The Respondent has no rights or legitimate interests in the Domain Name

The Respondent has not presented before the Panel any evidence of his use of or preparation to use the disputed domain name which would support a finding that the Respondent has a legitimate interest or rights in the domain.

Accordingly the Panel finds that the Respondent does not have any rights or legitimate interests in the domain name <delikomat.com>.

7.7 Domain Name has been registered and is being used in bad faith

7.7.1 The final factor the Panel has to consider is whether the Respondent acted in bad faith when he registered the domain name <delikomat.com>.

The Respondent states that he never worked directly or indirectly for the Complainant and that he never offered the domain for sale to the Complainant. He claims that he acted in good faith as he could not find any trademark registration at the time of the registration of the domain name.

The Panel finds that the statement of the Respondent lacks credibility for two reasons.

(1) The evidence submitted by the Complainant, and confirmed by the sworn statement of the Complainant’s managing director, clearly show that the Respondent in fact provided various computer services for the Complainant from 1997 to 1999 contrary to statements made in the Response. There is therefore no doubt that the Respondent knew the Complainant’s business and the products marketed under the DELIKOMAT sign.

(2) The statement in the Response that the Respondent was acting in good faith when registering the domain is hardly believable, as the domain name in question (<delikomat.com>) is a fantasy word without any meaning in German nor in English, nor any other language. A search on the Internet for the term "Delikomat" conducted by the Panel on February 20, 2002, only shows search results that have a connection with the Complainant’s business. In the circumstances, the only possible explanation for the Respondent’s selection of the domain name is that the Respondent has registered the domain name primarily for the purpose of selling it to the Complainant or to disrupt or otherwise harm the reputation of the Complainant.

The fact that the Complainant’s trademark was registered half a year after the Respondent registered the domain name at issue does not hinder the finding of bad faith. According to Para 4 (a) the trademark needs not to be registered to fall under Para. 4 of the Rules. It should be emphasized that the Policy has adopted a very broad concept of "trademark or service mark." It simply mentions "a trademark or service mark in which the Complainant has rights" and thus also considers trademarks that enjoy protection on the basis from actual use or the acquisition of secondary meaning.

The Panel concludes that in fact the Complainant has used the sign "Delikomat" in the course of trade in such a way that the sign has acquired secondary meaning as a trademark and that, for the purposes of the dispute, in all likelihood enjoys trademark protection according to § 9 III Austrian Unfair Competition Law, before the registration of the domain name.

The Panel thus finds that the Respondent registered and used the domain <delikomat.com> in bad faith.

7.7.2 The Respondent uses the domain in bad faith at the moment. Regarding the situation of the Respondent, the circumstances have not changed. Whether or not he tried to sell the domain to the Complainant is not relevant for the present case. The Respondent still uses the domain <delikomat.com> even though there is no connection on his part to the well-known entity "delikomat" which has a registered trademark.

7.8 The Respondent did acted in bad faith when he registered the domain in December 1999. The elements of Rule 4 (a) of the Rules are fulfilled.

 

8. Decision

The Panel thus decides that:

1) the domain name <delikomat.com> is confusingly similar to the trademark "delikomat";

2) the Respondent has no rights or legitimate interest with respect to the domain name <delikomat.com>;

3) the domain name <delikomat.com> has been registered and used in bad faith by the Respondent.

Pursuant to paragraph 4(i) of the Policy and pursuant to paragraph 15 of the Rules, the Panel requires that the Registrar, Network Solutions, transfer the name <delikomat.com> to the Complainant.

 

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Dr. Torsten Bettinger
Sole Panelist

Dated: February 20, 2002