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Roco Modellspielwaren GmbH and Dipl.-Wirt.-Ing. (FH) Peter
Maedgdefrau v. Plantraco Ltd.
Case No. D2005-0112
1. The Parties
The Complainants are Roco Modellspielwaren GmbH, Hallein, Austria (“Complainant 1”) and Dipl.-Wirt.-Ing. (FH) Peter Maedgdefrau, Hallein, Austria (“Complainant 2”, together the “Complainants”). Complainants are represented by Dr. Gьnter Secklehner, Windischgarsten, Austria.
The Respondent is Plantraco Ltd., Saskatoon, Canada.
2. The Domain Name and Registrar
The dispute concerns the domain name <minitank.com> (the “Domain Name”).
The Domain Name is registered with TierraNet Inc., d/b/a DomainDiscover (the
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2005, by e-mail and on February 11, 2005, in hardcopy. On February 1, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 2, 2005, the Registrar transmitted by email to the Center its verification response (i) confirming receipt of a copy of the Complaint, (ii) confirming that the Domain Name is registered with the Registrar, (iii) confirming that the Respondent is the current registrant of the Domain Name, (iv) providing details of the administrative, technical and billing contacts for said registration, (v) confirming that the Uniform Domain Name Dispute Resolution Policy (“Policy”) applies to the Domain Name, (vi) confirming that the Domain Name will remain locked during the pending administrative proceeding, (vii) indicating that the language of the registration agreement is English, (viii) indicating that the Respondent has submitted in its registration agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the Domain Name.
The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced, on February 14, 2005. The Respondent was required to submit a response on or before March 6, 2005, pursuant to paragraph 5(a) of the Rules.
The Respondent filed a short answer to the Complaint by e-mail on March 1, 2005.
On March 1, 2005, the Center informed Respondent that if no further response would be forthcoming by March 6, 2005, the short e-mail answer of Respondent would be deemed Respondent’s formal response.
The Center provided the Complainants with a copy of Respondent’s answer of March 1, 2005, and on March 7, 2005, after Respondent’s deadline to file a further statement had lapsed, served the acknowledgement of receipt of Respondent’s Response on the Parties on March 7, 2005.
The Center then appointed Michael A.R. Bernasconi as the sole panelist in this matter on March 18, 2005, and, after having received a Statement of Acceptance and a Declaration of Impartiality and Independence from Michael A. R. Bernasconi in accordance with paragraph 7 of the Rules, notified the representative of the Complainants and the Respondent by e-mail that Michael A. R. Bernasconi has been appointed as Administrative Panel (Sole Panelist) and that the decision is anticipated by April 1, 2005.
On March 22, 2005, the Center extended the decision
due date to April 8, 2005.
4. Factual Background
Complainant 1 has been manufacturing and selling model railways and model cars for some forty years and claims a considerable reputation in particular for its model military vehicles in so-called “HO” and “N” scale. The model military vehicles are labeled “minitanks”.
Complainant 2 is the chief executive officer and owner of Complainant 1. Together with Complainant 1, he owns the trademark “MINITANK” inter alia in some European countries, the United States of America, and in Canada. In addition, Complainant 1 is running a portal in the Internet under the domain name <minitank.at>, which offers information on Complainant 1, the “minitank” product range, authorized importers and related information.
The Respondent is a company operating in the field of radio controlled toys and produces and sells a mini tank toy called “Desktop Rover”.
Respondent registered the Domain Name on June 8, 2000.
The Domain Name directly diverts the Internet user to the homepage “www.plantraco.com”,
Respondent’s portal in the Internet which serves as its official homepage.
5. Parties’ Contentions
The Complainants contend that the disputed Domain Name is identical with their trademark “MINITANK” and that the goods offered on Respondent’s homepage fall within the scope of the categories protected by the “MINITANK” trademarks which in most jurisdictions have been filed before registration of the Domain Name. Furthermore, Complainants argue that the term “minitank” is not generic but an inventive name to which Complainants are exclusively entitled. According to Complainants, Respondent has been acting in mala fide when registering the Domain Name, as Respondent must have been aware of Complainants’ entitlement to the trademark “MINITANK” at the time of registration. As a final point, Complainants contend that Respondent misuses the famous term “minitank”, because the Domain Name only redirects the Internet users to Respondent’s homepage “www.plantraco.com”.
The Respondent argues that it uses the Domain Name
to sell one of its own product lines of miniature tank toys. Respondent contends
that it had no knowledge of the brand “minitank” and that it did
not know of the “minitank” products of Complainants when it registered
the Domain Name in June 2000. In Respondent’s view, “minitank”
is a rather generic name. Finally, Respondent states that it has never received
any communication of Complainants’ in relation to the Domain Name until
it has been served with the Complaint.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
A. 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
B. the Respondent has no rights or legitimate interests in respect of the domain name; and
C. the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that the Complainants own the “MINITANK” trademarks. Whereas the initial filings for the territories of Austria and the United States date back to 1963 and 1965, the Panel notes that some of the applications, including the Canadian trademark application which was only filed in 2004, were filed after registration of the Domain Name.
The Domain Name at issue consists of Complainants’ trademark “MINITANK”, to which only the suffix “.com” is added. The suffix “.com” is a generic top level domain name, which of course is without legal significance to render a domain name dissimilar or to prevent customer confusion. The distinctive element of the Domain Name is obviously the term “minitank”, while the suffix “.com” is of descriptive nature only.
The Domain Name and the trademarks of the Complainants are thus confusingly similar and the first criterion, as per paragraph 4(a) of the Policy, is established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy defines the circumstances which, if proved, establish a registrant’s rights or legitimate interests to a disputed domain name.
There is no evidence that the Respondent is commonly known by the disputed Domain Name or has been authorized by Complainants to use the “minitank” name and trademarks.
Equally, a non-commercial use of the Domain Name is out of discussion as it is undisputed that Respondent uses the Domain Name for promoting and selling goods.
The issue before the Panel in relation to rights or legitimate interests of Respondent to the use of the Domain Name is therefore, whether Respondent’s offering of goods may be characterized as “bona fide”. This question is further addressed in connection with the Panel’s below findings under the heading of bad faith.
C. Registered and Used in Bad Faith
Respondent uses the Domain Name as a market place for its products by redirecting the user who enters the Domain Name to its homepage. On this homepage, Respondent is selling various remote control toys and devices. One product offered is the so-called “Desktop Rover”, a remote control, caterpillar tank-like vehicle.
The difficulty lies in the fact that the Domain Name, although descriptive or generic in relation to the offered good, may be a trademark for others. This difficulty is expounded by the fact that, while ‘minitank’ may be considered a common word in English speaking countries, this may not be the case in other countries, such as Austria.
Therefore, although offering of a minitank vehicle may be bona fide, this is different if it were shown that <minitank.com> has been chosen with the intent to profit from or otherwise abuse Complainants’ trademark rights to bait Internet users.
The fact that the Domain Name is identical to the “MINITANK” trademark of Complainants is in itself insufficient evidence of the intent to profit from or otherwise abuse such trademark rights. After all, this is to be expected, in view of the territorial nature of trademark rights and the fact that, as set out above, terms which are descriptive or generic for particular goods in a particular country may be considered valid trademarks for other goods in a country with a different language.
Complainants have not evidenced facts which might indicate that Respondent knew or should have known of their trade name use or trademark registrations, such as a direct relationship or a wide reputation of or extensive publicity in connection with Complainants’ trade name or trademarks. Nor has it been shown that Respondent is in particular (also) active in the Austrian or European market.
The record contains insufficient evidence that Respondent had such knowledge when registering the Domain Name since the Canadian trademark registration of “MINITANK” was not granted until 2004, therefore after the registration of the Domain Name by Respondent. In this connection it is noted that nothing in the Policy can be construed as requiring a person registering a domain name to carry out a prior trademark search in every country of the world for conflicting trademark rights, as implicitly advocated by Complainants.
Since it is therefore not demonstrated that Respondent at the time of registration of the Domain Name knew or should have known of the existence of the “MINITANK” trademarks, there is no evidence suggesting that the Domain Name has been chosen by Respondent with the intent to profit or otherwise abuse Complainant’s trademark rights. The Panel is therefore of the view that Respondent does not use the trademark of Complainants to improperly bait Internet users.
As a further point to consider, on Respondent’s homepage, no “MINITANK” brand products are offered and there is no use of the word “minitank” either. The website thus contains no false suggestion of a link between Respondent and the Complainants and their products and trademarks and no false suggestion that Respondent would be a trademark owner or an agent of the Complainants.
As a further consideration with regard to the question of a bona fide offering of Respondent’s goods, the Panel notes that Respondent has not registered multiple domain names containing the trademark “MINITANK”, but only the “.com” domain name. The registration of this domain name, under which a corresponding offering of goods is conducted, for which the Domain Name is descriptive, cannot be qualified per se as an abusive pattern of conduct. Furthermore, from a research of the Panel conducted on the Internet on March 31, 2005, it appears that with the exception of the “.com” and the “.at” domain names, no other ending for a “minitank” domain name is presently occupied. Regardless of the fact that Complainants already use their trademark as a domain name, there can thus be no mentioning of Complainants being cornered in the market by Respondent’s use of the “.com” domain name.
Summarizing, in this case Complainants have not presented evidence that undermines
the bona fides of Respondent’s use. As a final remark, whether
the Respondent’s activities constitute trademark infringement is not for
the Panel to decide. If Complainants wish to pursue that issue, other forums
are available (see Dr. Ing. h.c. F. Porsche AG v. Laurent Del Fabbro,
WIPO Case No. D2004-0481; DaimlerChrysler
A.G. v. Donald Drummonds, WIPO Case No.
For good order’s sake, the Panel notes that
the Domain Name is the only domain name in dispute in these proceedings (cf.
paragraph 8 of the Complaint). In the circumstances, Complainants’ requested
remedies as per paragraph 12 of the Complaint that “both contested domain
names be transferred” to Complainant 2, can only be interpreted by the
Panel as a misprint. In any event, if this would not be the case, the request
to have “both” domain names transferred would – in relation
to a domain name different from the Domain Name – have to be dismissed
for a lack of substantiation.
The Complainants have failed to meet the third element of the Policy. Accordingly, Complainant’s request as to the domain name <minitank.com> is denied.
Michael A. R. Bernasconi
Date: April 8, 2005