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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Henssgen Karabinerhaken GMBH v. Hovin
Case No. D2001-1462
1. The Parties
Complainant is Henssgen Karabinerhaken GmbH, Schillerstrasse 50, 42489 Wülfrath, Germany, Complainant is in this case represented by CMS Hasche Sigle Eschenlohr Peltzer Schäfer, Dr. Thomas Manderla, Bankstrasse 1, 40476 Düsseldorf, Germany.
Respondent is Hovin, Wilhelmina Druckerstraat 220, Apeldoorn, 7311 TK, the Netherlands.
2. Domain Name and Registrar
The domain name at issue is <henssgen.com>.
The Registrar is Network Solutions, Inc. 505 Huntmar Park Drive, Herndon, Virginia, VA 20170, United States of America.
3. Procedural History
The World Intellectual Property Organization Arbitration and Mediation Center (the Center) received a Complaint from Complainant on December 18, 2001, of which the Center acknowledged Receipt on December 20, 2001.
Upon request issued on December 21, 2001, the Center received a Registrar Verification on December 27, 2001. In that Verification, the Registrar confirmed that;
- It was in receipt of the Complaint sent to it by Complainant
- Network Solutions is the Registrar of the domain name
- The Registrant is "Hovin Wilhelmina Druckerstraat 220 Apeldorn, 7311 TK, NL"
- The domain name at issue is <henssgen.com>
- Administrative Contact, Technical Contact, Billing Contact is "Hsu, Ho-Chan, (HH642) Hovin, h.hsu@CHELLO.NL", with the same address as indicated for the Registrant
- Network Solutions' Service Agreement Version 5 (English) is in effect, and
- The domain name registration is in active status.
On January 25, 2002, the Center received a Response in the form of a telefax from "Henssgen Toys", signed by Ho Chan Hsu. The Center issued on the same day a Response Deficiency Notification that was communicated to the Parties by e-mail.
The Center invited Mr. Henry Olsson to serve as Sole Panelist in the case and received, on January 31, 2002, Mr. Olsson's Statement of Acceptance and Declaration of Impartiality and Independence. The same day the Center appointed Mr. Olsson as Sole Panelist and issued a Notification of Appointment of Administrative Panel and Projected Decision Date, which was communicated to the Parties. The Projected Decision Date was February 14, 2002.
The Sole Panelist considers that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
4. Factual Background
Complainant, Henssgen Karabinerhaken GmbH, is a registered company with limited liability having its principal place of business in Germany at the address indicated for Complainant. It was registered in 1932. An associate company, Henssgen International B.V., was registered in the Netherlands in 1990. Complainant has submitted extracts from the German and the Dutch Company Registers in this respect. Since October 1997, Complainant has registered the German Country-Code Top-Level-Domain named <henssgen.de>.
Respondent, Hovin, is a Dutch one-man business owned by Mr. Hsu, Ho-Chan.
In accordance with Paragraph 3(b)(xiii) of the Rules, 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 the principal office of the concerned Registrar is located.
5. Parties' Contentions
First, Complainant submits that the dispute is properly within the scope of the Policy as the registration agreement pursuant to which the domain name at issue is registered incorporates the Policy. Complainant contends that the domain name 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 respect of the domain name and that the domain name was registered and is being used in bad faith.
As regards the activities of Complainant it submits that its products mainly consist of snap hooks, produced in various sizes and for many industries. Among other items, Complainant produces furniture hooks and especially snap hooks for the furniture industry; Complainant contends that it is one of the world’s leading producers in this field, that its products are distributed throughout the world and that it has been involved in manufacture, distribution and sale of furniture hooks for over ten years.
According to Complainant "the registration in the register of companies provides protection in, among others, the Netherlands and Germany".
Complainant contends that the domain name at issue is identical to Complainant’s company name that is well known and highly appreciated all over the world and particularly in Europe for the snap hooks distributed under that name. Not only because of the high quality of Complainant’s products but also as a result of systematic promotion and costly advertising the company "Henssgen" has become one of the best and favourably known snap-hook producers in many countries throughout Europe and the world. This leading position of Complainant in this field is documented by the fact that the turnover in the years 1996 to 1999 has been between nine and ten million DM. In order to prove the variety of hook products Complainant has submitted an advertisement brochure. In view of this, it is, according to Complainant, obvious that it is highly interested in owning an international <dot.com> domain name reflecting its company name "Henssgen" in order to present and promote it via Internet.
Complainant contends that Respondent publishes an English language home page under the domain name <henssgen.com>. The text, of which Complainant has submitted a printout, reads: "HOVIN. Thank you for visiting our Website; this Site is under Construction and will be available very soon. We are manufacturer of furniture, curtain fitting, snap hooks and many other plastic and metal products. For more information, please email <email@example.com> or fax: 0031-555760081." According to Complainant, Respondent has installed an automatic transition/transcription on the Internet transmitting messages to his own home page <hovin.com> whenever <henssgen.com> is addressed. Respondent’s homepage shows that Complainant and Respondent are direct competitors in the market of furniture and snap hooks. This is also shown i.a. by the text in the Dutch Register of Companies where Respondent’s business is registered and its activities are indicated as "Im- and export, wholesale trade of furniture, metal and plastic products."
In fact, according to Complainant, Respondent registered the domain <henssgen.com> for the intentional sole purpose of disrupting the business of Complainant as a competitor and to attract for financial gain potential clients of Respondent’s own website through the automatic transition/transcription device, something that is a clear use of the domain in bad faith.
Complainant further contends that e-mails from Complainant’s clients are directly transferred to Respondent which thus receives valuable confidential information. For instance, an e-mail from an important French client addressed to <m.Gerhard@henssgen.com> was automatically transmitted to Respondent which thus was given confidential information about prices, names of clients and orders.
Furthermore, Complainant contends that Respondent has no rights or legitimate interests in respect of the domain name at issue, and the name "Henssgen" was never used by Respondent nor would Complainant have allowed it.
On the basis of these contentions, Complainant request that the Administrative Panel issue a decision that the contested domain name, as a first option, be transferred to Complainant or, as a second option, be cancelled.
As mentioned above the Center received a Response from Respondent by fax on January 25, 2002. In a Response Deficiency Notification the same day, the Center requested Respondent to remedy six specified deficiencies by January 27, 2002, and Respondent was informed that upon the expiry of that date, regardless of whether the Center received the information requested, it would proceed with the appointment of the Administrative Panel; the Panel would be informed about the deficiencies that Respondent failed to remedy. This notification was sent by e-mail to the Respondent and the Administrative Contact/Billing Contact and the Technical Contact/Zone Contact.
As mentioned above, the Administrative Panel was appointed on January 31, 2002. At that date no information, in required form or otherwise, had been received from Respondent.
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 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 in the form of a fax 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. In the view of the Panel several of the deficiencies pointed at in that Notification are important in the sense that they principally aim at ensuring equality in the proceedings and in particular to give Complainant a possibility to comment upon the contentions by Respondent. Nothing indicates that Respondent has communicated its fax observations to Complainant which has, therefore been deprived of any opportunity to comment upon them. The Panel is conscious of the possible arguments in favour of considering the fax that it would not in fact prejudice the Complainant or affect the outcome of this case. However, to take the fax into account on the basis of such arguments could set a precedent which would be contrary to the wording of the Rules and the objective of providing an efficient and expeditious procedure for the resolution of domain name disputes.
From the Registrar Verification follows that the Policy is applicable to this case. Consequently, Respondent is required to submit to a mandatory administrative proceeding as now initiated in respect of the domain name 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 with 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 parts of this decision the Panel discusses each of those elements.
Identity or Confusing similarity
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 Policy is applicable only to conflicts between, on the one hand, trademarks or service marks and, on the other hand, domain names. Consequently, the first question is whether Complainant is the holder of a trademark right.
In this respect the Panel notes that Complainant bases the Complaint on the company name "Henssgen" which is obviously registered in the Company Registers in Germany and the Netherlands. No evidence has been submitted to the effect that Complainant has registered "Henssgen" as a trademark or a service mark in any of the two countries mentioned, nor has Complainant explicitly invoked that "Henssgen" would enjoy trademark protection on any other legal basis. On the other hand, Complainant has, as jurisdictional basis for the proceeding, explicitly referred to and quoted Paragraph 4(a) of the Policy to the effect that the domain name is identical or confusingly similar to a "trademark or service mark in which Complainant has rights." The Panel therefore concludes that Complainant invokes trademark rights in the sign "Henssgen" as a basis for the Complaint and that the Panel has to consider whether any trademark right is present in this case.
In this respect the Panel refers to Article 4 of the German Trademark Act which contains provisions on the coming into existence of trademark protection. That provision prescribes: "Trademark protection shall accrue
1. by registration of a sign as a trademark in the Register kept by the Patent Office
2. through the use of a sign in the course of trade insofar as the sign has acquired a secondary meaning as a trademark within the affected trade circles; or
2. by notoriety as a trademark within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property (Paris Convention)."
Complainant has submitted an advertisement brochure containing information about the variety of hook products marketed by it. The Panel has no reason to doubt Complainant’s contention that it has been involved in the manufacture, distribution and sale of furniture hooks for more than ten years and that it is well known at least in Europe for its snap hooks and is one of the world’s leading producers in this field. Also, the e-mail from the foreign client which was redirected to the website <firstname.lastname@example.org> seems to indicate that Complainant was known also internationally.
On the basis of these considerations, the Panel concludes that in fact Complainant has used the sign "Henssgen" in the course of trade in such a way that the sign has acquired a secondary meaning as a trademark in the affected trade circles and that, for the purposes of this dispute, the sign "Henssgen" is found to enjoy trademark protection under Article 4, item 2. of the German Trademark Act.
The domain name at issue contains the trademark with the addition of the notion "com" which is, in the view of the Panel, an insignificant distinction that does not remove the likelihood of confusion.
These considerations lead the Panel to the conclusion that there exists a confusing similarity between the domain name at issue and Complainant’s protected trademark.
Rights or Legitimate Interests
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 has invoked that the sign "Henssgen" was never used by Respondent, nor would Complainant have allowed Respondent to do so; Respondent has consequently no rights or legitimate interests in the domain name at issue.
As mentioned above, Respondent has not submitted any Response in prescribed form but has only sent a telefax containing some observations on the Complaint. Thus, Respondent refers in that telefax to a telephone conversation four years ago with a manager of Henssgen International BV where the manager in question did not complain about the use of the domain name <henssgen.com> for Respondent’s product lines for toys and baby products. Furthermore, Respondent indicated in the telefax, inter alia, that as from June 30, 2001, the two domain names <hovin.com> and <henssgen.com> are run on different servers.
It may well be that there have been discussions between Respondent and a representative of Complainant’s Dutch company about the use of the sign "henssgen" in the Netherlands for products other than those which form Complainant’s main business. It is also possible that, in that context, there may or may not have been any objections in relation to that use. Because of Respondent’s failure to remedy deficiencies in the Response, Complainant has not been given any opportunity to comment on Respondent’s allegations. On the other hand, Complainant has in the Complaint clearly stated that it has never allowed Respondent to use "henssgen" in its domain name, and Respondent has furnished no explanation why the name of the German company was chosen as company name/domain name for Respondent.
On the basis of the statements made in this case and with no further evidence available – in particular no statements in prescribed form from Respondent - the Panel can, for the purposes of this dispute, only conclude that Respondent, as Complainant contends, has no rights or legitimate interests in the domain name.
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. Paragraph 4.b then sets out the circumstances which in particular but without limitation shall, if found to be present by the Panel, be considered as evidence of registration and use in bad faith.
Complainant has contended that Respondent has registered the domain name at issue for the sole purpose of disrupting Complainant’s business as a competitor and to attempt to attract for financial gain potential clients to Respondent’s home page by means of an automatic transition/transcription device.
As indicated above, Respondent has not submitted any Response in prescribed form but has made some comments in a telefax to the Center which comments have been referred to under the preceding headline and on which Complainant has not been given any opportunity to comment.
The Panel notes that the documents submitted or statements made in the case do not explain why Respondent registered Complainant’s - very distinct – trademark as its own domain name and, in particular, do not explain why Respondent set up the automatic transition device that redirected messages to the domain name at issue to Respondent’s own home page.
On balance and in the absence of any further information and in particular in the absence of further explanations by Respondent the Panel can only conclude that circumstances present point in the direction that in fact the domain name at issue was registered and is being used in bad faith.
On the basis of the foregoing the Administrative Panel concludes that it has been established that the domain name at issue is confusingly similar to the trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain name at issue and that the domain name has been registered and is being used in bad faith.
In accordance with Complainant’s first request and with reference to Paragraph 4.i of the Policy, the Panel requires that the domain name <henssgen.com> be transferred to Complainant.
Dated: February 11, 2002