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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bundesrepublik Deutschland (Federal Republic of Germany)
Hostmaster Hostmaster of Earthlink Inc.
Case No. D2002-0427
1. The Parties
The Complainant in this administrative proceeding is Bundesrepublik Deutschland (Federal Republic of Germany) represented by Auswaertiges Amt (Federal Ministry of Foreign Affairs), ("Complainant"). Complainant’s contact details are Dr. Florian Reindel, c/o Auswärtiges Amt, Werderscher Markt 1, 10117 Berlin, Germany. Complainant's authorised representative is RA Johannes Zindel, Rae Jones Day Reavis & Pogue, Grueneburgweg 102, 60323 Frankfurt am Main, Germany.
According to the Registrar's WHOIS database, the Respondent is Hostmaster Hostmaster of Earthlink Inc. ("Respondent"), 1430 W. Peachtree St. NW, Suite 400, Atlanta GA 30309, United States of America. Administrative contact is RJG Engineering Inc., Gerhard Lauck, Lincoln, Nebraska 68506, PO-Box 6426, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <auswaertiges-amt.biz> ("Domain Name"), registered with Register.com, Inc., 575 8th Avenue, 11th Floor, New York, NY 10018, United States of America.
3. Procedural History
A complaint ("Complaint"), pursuant to the Uniform Domain Name Dispute Resolution Policy, implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy, implemented by ICANN on the same date ("Rules"), was submitted to the WIPO Arbitration and Mediation Center ("the Center") on May 3, 2002, by e-mail.
The Acknowledgement of Receipt of Complaint was submitted to the Complainant by the Center on May 10, 2002.
On May 14, 2002, a Request for Registrar Verification was transmitted to the Registrar, which confirmed on the same day with its Verification Response that the disputed Domain Name was registered with Register.com, Inc. and that Respondent was the current registrant of the disputed Domain Name.
The Center informed Complainant in a Complaint Deficiency Notification on May 15, 2002, about the fact that "Hostmaster Hostmaster of Earthlink Inc." and not "Signature Domains Inc." (as mentioned in original Complaint of May 3, 2002) is the registrant of the Domain Name and should therefore also be listed as Respondent in the Complaint. Complainant amended the Complaint accordingly on May 22, 2002.
A Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") was transmitted to the Respondent on May 23, 2002, setting a deadline of June 12, 2002, by which the Respondent could file a Response to the Complaint.
On June 13, 2002, the Center informed Respondent of his default to comply with the deadline for the submission of a Response and that it would be the Panelist's sole discretion whether to consider a response submitted after the set deadline. The Panelist would like to note that Respondent until today has failed to submit any response to the Complaint.
Complainant requested a single-member panel and the Center invited the undersigned to serve as sole panelist. A Statement of Acceptance and Request for Declaration of Impartiality and Independence was duly signed and returned to the Center on June 18, 2002.
The Center transmitted to the parties on June 18, 2002, a Notification of Appointment of Administrative Panel and Projected Decision Date as of July 3, 2002. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
"Auswaertiges Amt" is the historical German expression for the German Federal Ministry of Foreign Affairs. The Ministry of Foreign Affairs is a public authority of the Federal Republic of Germany. The Federal Republic of Germany as complainant has not registered its marks and names, but claims to have common law service mark rights to the name "Auswaertiges Amt". Complainant maintains that the expression is well known in Germany to designate the Ministry of Foreign Affairs which renders its services, such as providing public information under this name.
Complainant asserts that the notion "Auswaertiges Amt" is used in the course of trade as for example books are published free of charge and against payment. As a result of this trading activity the designation "Auswaertiges Amt" complies with the standards of § 4 No. 2 German Trade Mark Law. According to these legal standards, service- and trademark-rights are established not only by registration, but also by active use in public which is a use in the course of trade insofar as the sign has acquired a secondary meaning as a trademark within the affected trade circles. Hence, Complainant alleges that "Auswaertiges Amt" is a common law service-mark which is protected in the Federal Republic of Germany.
Complainant further alleges that the described activities of the German Federal Ministry of Foreign Affairs are a form of trade directed towards the German people and the notion "Auswaertiges Amt", because it is well known in Germany, has come to be associated with the services offered by Complainant. Consequently, the designation "Auswaertiges Amt" has been used as a sign in the course of trade and therefore acquired a secondary meaning as service mark in the minds of the German population, the "affected trade circle".
This Complaint is the third proceeding between the two involved parties. In Bundesrepublik Deutschland (Federal Republic of Germany) v. RJG Engineering Inc., WIPO Case No. D2001-1401, the panel decided that the domain names <bundesinnenministerium.com>, <bundesinnnenministerium.net>, <bundesinnenministerium.org> and <verfassungsschutz.org> should be transferred to Complainant. In Bundesrepublik Deutschland (Federal Republic of Germany) v. RJG Engineering Inc./Gerhard Lauck, WIPO Case No. D2002-0110, the same remedy was granted to Complainant for the domain names <bundesjustizministerium.com>, <bundesjustizministerium.net>, <bundesjustizministerium.org>, <bundesinnnenministerium.biz> and <verfassungsschutz.biz>. According to Complainant and the descriptions given in the WIPO Cases referred above, Respondent used some of these domain names to lead to a website carrying an association with the Nazi Party. The website is described as a secondary website with an invitation to visit the main website <nazi-lauck-nsdapao.com>. Complainant submits that Respondent has created a pool of "illegal domain names" relying upon German government notations, so that if one of the domain names is ordered to be transferred or cancelled, Respondent will use the next one to mislead internet traffic. After all the mentioned domain names now are transferred to Complainant, Complainant speculates that it has to be expected that Respondent will use in future the Domain Name at issue <auswaertiges-amt.biz> in the same way as the others before, hence to mislead Internet traffic to Respondent’s Nazi-Website.
To date, the Domain Name <auswaertiges-amt.biz> leads to a "under construction" website of Earthlink Inc. who is the Registrant of the Domain Name at issue. However, as can be seen from the Whois Database (Annex 1 of Complaint), the administrative contact organization of Respondent is RJG Engineering Inc. and Mr. Gary Lauck is the administrative contact name for Respondent. Hence, the responsible organization behind Respondent is the same as in the previous two proceedings (RJG Engineering Inc.). Gerhard Lauck, head of the Nazi Party NSDAP/AO (see Annex 7 of Complaint) describes himself in a letter to the Center of October 4, 2001, as President of RJG Engineering Inc. (see Annex 10 of Complaint).
5. Parties’ Contentions
Complainant contends that:
- the Domain Name is identical to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name was registered and is being used in bad faith; and
- the Domain Name <auswaertiges-amt.biz> should be transferred to the Complainant.
Additional respective contentions of the Complainant may be contained in the following discussions and findings.
As mentioned above, Respondent has been notified in accordance with paragraph 2(a) of the Rules, but failed to submit a Response in accordance with the requirements under the Policy. Thus, Complainant's allegations are deemed to be non contested.
6. Discussion and Findings
Paragraph 4(a) of the policy directs that the Complainant must prove each of the following:
"(i) that the Domain Name registered by the Respondent 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 Domain Name has been registered and used in bad faith."
Identical or confusingly similar Domain Name: Policy 4(a)(i)
The domain name at issue is <auswaertiges-amt.biz>. In the absence of contrary evidence from Respondent, the Panel accepts Complainant’s submissions as to service and trade mark use and finds that Complainant has unregistered service mark and trade mark rights in Germany under § 4 No. 2 of the German Trade Mark Law with respect to the notion "Auswaertiges Amt". The Panel has taken note of and agrees with the two decisions in favour of Complainant cited in the Complaint (Government of Canada v. David Bedford a.k.a. DomainBaron.com, WIPO Case No. D2001-0470; and Government of Canada v. federalcourtofcanada.com, AF-0563), holding that in order to come within the scope of Policy Paragraph 4(a) trademarks need not to be registered.
It is clear that the mark "Auswaertiges Amt" is confusingly similar to the Domain Name <auswaertiges-amt.biz> registered by Respondent. The addition of the notion ".biz" and the slash between the two words are insignificant distinctions that do not remove the likelihood of confusion. Therefore this Panel concludes that there exists a confusing similarity between the Domain Name at issue and Complainant’s protected trademark/service mark.
In any event, the Respondent does not contest this point.
The Panel holds that the Complainant has established element (i) of the Policy's paragraph 4(a).
Respondent's Rights or Legitimate Interests in the Domain Name: Policy 4(a)(ii)
It is first convenient to recall that, according to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."
Respondent has not provided any evidence of legitimate rights or interests in the above sense, and has not shown any other circumstances reflecting rights or legitimate interests in the disputed Domain Name.
Hence, Complainant has fulfilled its burden of proof under paragraph 4(a)(ii) of the Policy.
Domain Name Registered and Used in Bad Faith: Policy 4(a)(iii)
The third element to be established by Complainant is that the Domain Name has been registered and used in bad faith.
Paragraph 4(b) states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name:
"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or
(ii) you [Respondent] have registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or your location."
Complainant alleges that Respondent registered the Domain Name in bad faith and that it will be used in bad faith if Respondent starts to use the Domain Name. Complainant asserts that Respondent has registered the disputed Domain Name with the intent to deceive internet users and mislead internet traffic meant for the Federal Ministry of Foreign Affairs to a Nazi homepage. Complainant contended and proved (see Annex 7 of Complaint) that Respondent on its main website <nazi-lauck-nsdapao.com> states that the domain names disputed in the two previous decisions between the parties will probably only be working for a short time and will cease to function soon. Furthermore, Respondent gives instructions on how to save blocked addresses and lists new alternative URL’s. The Panel agrees with Complainant that there is a real danger that Respondent will use the Domain Name at issue <auswaertiges-amt.biz> in the same way, thus misleading internet traffic to a Nazi-Website. Such intentional diversion of internet users constitutes bad faith under the Policy.
Therefore the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by the Complainant, and Respondent's bad faith registration and use of the Domain Name have been proven.
In view of the circumstances and facts discussed above, the Panelist decides that the disputed Domain Name is confusingly similar to the unregistered service- and trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that Respondent's Domain Name has been registered and will be used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panelist requires that the disputed Domain Name <auswaertiges-amt.biz> shall be transferred to the Complainant.
Bernhard F. Meyer-Hauser
Dated: July 1, 2002