Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Zeitverlag Gerd Bucerius GmbH & Co. KG v. The Web Group

Case No. D2005-0725

 

1. The Parties

The Complainant is Zeitverlag Gerd Bucerius GmbH & Co. KG, Hamburg, Germany, represented by Rechtsanwдlte Senfft, Kersten, Nabert & Maier, Germany.

The Respondent is The Web Group, Washington DC, United States of America, represented by ESQwire.com Law Firm, United States of America.

 

2. The Domain Name and Registrar

The domain name <zeit.com> (the “Disputed Domain”) is registered with eNom, Inc, United States of America (the “Registrar”).

 

3. Procedural History

3.1 A hardcopy of the Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2005, and acknowledged by the Center on July 8, 2005.

3.2 On July 8, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On July 8, 2005, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and indirectly providing the Respondent’s administrative, billing, and technical contact details by directing the Center to the Who-Is details in relation to the Respondent.

3.3 In response to a notification by the Center on July 12, 2005, that the Complaint was administratively deficient, the Complainant electronically submitted an amendment to the Complaint on July 18, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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”).

3.4 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 July 27, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was August 16, 2005. On August 9, 2005, the Respondent’s solicitor requested that the Complainant consent to a 14 day extension of time for filing the Response and in response the Complainant consented to a 7 day extension. On August 10, 2005, the Center granted an extension of time until August 23, 2005. The Response was electronically filed with the Center on August 23, 2005.

3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on September 12, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.

 

4. Factual Background

4.1 On the basis of the documents submitted by the parties the following facts appear not to be in dispute between the parties.

4.2 The Disputed Domain is <zeit.com>. Zeit is the German word for “time”.

4.3 The Complainant is the German publishing house of the weekly best-selling German newspaper DIE ZEIT which it has published since 1946.

4.4 The Complainant has four separate registrations for the trademark DIE ZEIT within Europe and has registered and operates an online news website from the domain name <zeit.de>.

4.5 The exact legal nature of the Respondent is unclear but it is based in the United States of America.

4.6 The Respondent registered the domain name <zeit.com> in May 2003.

4.7 On August 29, 2004, the Respondent entered into an agreement with Sedo GmbH whereby Sedo hosted the <zeit.com> domain name under its domain name parking scheme. Sedo posted paid advertising links on the hosted page relating to the word “zeit” and later to the word “uhren” (the German word for “clock”).

4.8 The Respondent offered the <zeit.com> domain name for sale via the page hosted by Sedo and, on January 13, 2005, the Complainant made an otherwise unsolicited anonymous offer to purchase it. The Respondent did not contact the Complainant to offer to sell the <zeit.com> domain name to it.

4.9 On March 10, 2005, Sedo received a letter from the Complainant alleging that by hosting the Disputed Domain it was infringing the Complainant’s trademark. Sedo consequently stopped hosting the Disputed Domain. Since this time the Respondent has used the Disputed Domain name to host an animated clock.

4.10 On April 22, 2005, the Complainant’s legal representative wrote an email to the Respondent asking it to cease using and cancel the registration of the Disputed Domain. On May 6, 2005, the Respondent’s legal representative sent a one-line email response saying:

“I will respond shortly to your letter concerning the Web Group’s domain name zeit.com”.

4.11 On May 19, 2005, the Complainant’s legal representative sent an email to the Respondent’s legal representative advising that unless the Respondent canceled the registration it:

“would continue legal action if your client should not cancel the registration immediately. Alternatively, our client should give yours a last chance to negotiate a business solution … until Thursday May 26th”.

The Respondent did not reply to this email.

 

5. Parties’ Contentions

A. Complainant

5.1 The Complainant’s factual and legal contentions can be summarized as follows.

Identical or Confusingly Similar

5.2 The Complainant has rights in the registered trademarks for “DIE ZEIT” and in its registered domain name <zeit.de>. The Complainant has substantial goodwill and reputation and makes extensive use of its marks which are consequently well-known worldwide.

5.3 In the United States of America, where the Respondent is resident, the DIE ZEIT newspaper is brought to the public’s attention as a consequence of a “co-operation-agreement” with the New York Times and contributions to German language and academic institutes. DIE ZEIT is also printed and sold in the United States of America. The Complainant contends that it has therefore “acquired a trademark through use at US common law”.

5.4 The only difference between the Complainant’s trademarks and the Disputed Domain <zeit.com> domain is the word “Die”, which is merely the German for “the”. What is more, in common parlance (presumably in Germany) the predominant everyday abbreviated form of the newspaper’s name is “Zeit”.

5.5 The Complainant contends that there is a “danger of confusions among Internet users, who are looking for the Complainant’s site and accidentally find” the Disputed Domain.

Rights or Legitimate Interests

5.6 The Respondent is not commonly known by the Disputed Domain, nor does it own a trademark or conduct business under a trade name corresponding to the Disputed Domain.

5.7 The Complainant has never had any business relations with the Respondent nor has it licensed or authorized the Respondent to use its trademarks.

5.8 The Respondent has no rights or legitimate interests in respect of the Disputed Domain.

Registered and Used in Bad Faith

5.9 The Respondent offered the Disputed Domain for sale via the page hosted by Sedo. This page also hosted sponsored advertising links.

5.10 On January 13, 2005, via the host page, the Complainant (acting anonymously) made an offer to buy the Disputed Domain for €100. In response, the Respondent offered to sell the Disputed Domain to the offeror for €100,000. The Complainant made a further offer of €500 to which the Respondent did not reply.

5.11 After the Respondent’s domain name parking scheme with Sedo was terminated the Respondent altered the website to its current design; removing the advertising links and in their stead posting an animated clock. The Disputed Domain is still for sale. The Complainant alleges that the Respondent acted in bad faith by virtue of offering the Disputed Domain for sale.

5.12 The Complainant contends that on the facts the Respondent registered the Disputed Domain in circumstances set out in the Policy (at Paragraph 4(b)) as evidencing bad faith under Paragraph 4(a)(i) of the Policy.

5.13 In particular, the Complainant contends that the Respondent:

(1) registered the Disputed Domain primarily for the purpose of selling it to the Complainant for consideration exceeding the Respondent’s out-of-pocket costs; and

(2) used the Disputed Domain in order to profit by diverting Internet users’ attention from the Complainant’s well-known newspaper to the advertising on the Respondent’s website.

In support of these two contentions the Complainant cites The Gleaner Company, Ltd. v. iCon Ally case, WIPO Case No. D2000-1155 and the Ottaway Newspapers, Inc. v. Cameron Barrett case, WIPO Case No. D2001-0726.

B. Respondent

5.14 The Respondent’s factual and legal contentions can be summarised as follows.

Identical or Confusingly Similar

5.15 The Complainant has trademarks for DIE ZEIT but not for the word “zeit” standing alone. Therefore, the Disputed Domain is not identical to the trademarks in which the Complainant has rights.

5.16 The word “zeit” is a common German word meaning “time”. “Time” is a word commonly associated with newspaper titles and therefore the Complainant’s mark is used in a generic or descriptive manner.

5.17 The difference between the Complaint’s mark “DIE ZEIT” and the Disputed Domain <zeit.com> is the word “Die”. This difference is enough to prevent the Disputed Domain from being confusingly similar to the Complainant’s mark. This is because “zeit” is a generic/ descriptive word and consequently a small difference between the Disputed Domain and the Complainant’s trademarks should render the two to be not confusingly similar. The Respondent cites various US cases and UDRP cases to support this. The UDRP cases are AOL Inc v. Megaweb.com, Inc NAF No. 463099 (<ciq.com> and others), Branch of AM.Corp v Fluxx, Inc., NAF No. 103809, Deer Valley Resort Co., v Intermountain Lodging NAF No. 471429 (<deervalleycondos.us>), Thomas Cook Holdings Ltd v Aydin, WIPO D2000-0676 (<hot18to30.com>) and Bank of America v Klika, NAF No. 161458 (<banqueamerique.com> and others).

Rights or Legitimate Interests

5.18 The Respondent presents evidence of the extensive use made of the word “zeit” absent from any connection with the Complainant: on WebPages; in registered trademarks; in German newspaper titles and in other domain names (for example, <diezeit.com> which belongs to a Spanish entity). The Complainant does not have exclusive rights to the word “zeit”.

5.19 The Respondent has, it is claimed, a legitimate interest in the Disputed Domain because “zeit” is a common word. In support the Respondent cites cases which it asserts demonstrate a shift in the balance of the rights/interests enquiry in favor of a domain name holder when the domain name consists of a simple descriptive term (regardless of language).

5.20 During the period in which Sedo hosted the Disputed Domain, the posting of pay-per-click advertising to the hosted page constituted legitimate commercial use of the Disputed Domain. The current use of the Domain Name, namely the display of an animated clock on the webpage, constitutes legitimate non-commercial use. Various cases are cited in support of these contentions. This demonstrates a legitimate right or interest of the Respondent in the Disputed Domain under Paragraphs 4(c)(i) and (iii) of the Policy.

Registered and Used in Bad Faith

5.21 It is asserted that there is no evidence that the Respondent’s selection of a domain name containing the word “zeit” had anything to do with Complainant. “Zeit” is a common word subject to substantial third party use. The reason the Respondent registered the Disputed Domain is simply because “zeit” is a common word.

5.22 The Respondent relies on its other registrations of foreign common word domain names including: <douce.net> - “soft” in French, <experimentos.net> - “experiments” in Spanish, <journalistiek.org> - “journalistic” in Dutch, <incontri.org> - “encounter” in Italian, <motores.org> - “engines” in Portuguese, <neige.org> - “snow” in French, <lutfen.com> - “please” in Turkish, <universitet.org> - “university” in Swedish.

5.23 The Complainant has limited presence in the United States of America where the Respondent is resident. For example, it puts forward evidence to the effect that the extent of the Complainant’s circulation in the United States is 1,600 copies. The Respondent cites various cases to support the proposition that the fact that a complainant’s mark is well-known in its own country is not enough to infer that its mark is well-known in another country in which a respondent resides.

5.24 The Respondent states that it “did not even have knowledge of the Complainant or its German newspaper DIE ZEIT when it registered the Disputed Domain”.

5.25 The Respondent denies the Complainant’s allegation that, by using the Disputed Domain, the Respondent has intentionally attempted to confuse and attract Internet users interested in the Complainant’s mark to its own website.

5.26 The Respondent denies the Complainant’s allegation that the Respondent acted in bad faith by virtue of offering the Disputed Domain for sale. Offering a domain name for sale is not in itself evidence of bad faith; it must have been registered primarily in order to sell it to the complainant who owns the mark. There is no evidence that the Respondent had knowledge of the Complainant’s mark when it registered the Disputed Domain, let alone that it registered the Disputed Domain to sell it to the Complainant.

5.27 The Respondent contends that the cases cited by the Complainant (The Gleaner Co. and the Ottoway Newspapers cases) can be differentiated on their facts. Various reasons are provided in this regard including the fact that in each of those cases the panel accepted the complainant’s assertions where no response was filed.

Reverse Domain Name Hijacking

5.28 The Respondent contends that a finding of reverse domain name hijacking is warranted because “the Complainant knew or should have known at the time it filed the Complaint that it could not prove that the [Disputed Domain] was registered in bad faith” (Futureworld Consultancy Pty Ltd. v. Online Advice, WIPO No D2003-0297).

5.29 The Respondent supports this contention by reference to the common nature of the word “zeit”; the lack of presence of the Complainant in the United States of America; and to two other domain names, <zeit.us> and <zeit.biz>, which are parked on “www.Sedo.com” but regarding which Sedo has received no complaints.

 

6. Discussion and Findings

6.1 The Panel has reviewed the Complaint and the Response together with their annexed documents. In light of this material, the Panel sets out its findings below.

6.2 The Complainant must prove each of the following elements of Paragraph 4(a) of the Policy:

(i) The 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.

A. Identical or Confusingly Similar

6.3 There are two separate elements which the Complainant must prove under Paragraph 4(a)(i) of the Policy. Firstly, the Complainant must provide evidence showing that it has rights in a trademark or service mark. Secondly, the Complainant must show that the Domain Name is identical or confusingly similar to the trade or service mark in which it has rights.

6.4 In respect of this first element, the Complainant relies upon its registered trademarks for DIE ZEIT. These trademarks include Community Trademark No. 002418093 filed on October 16, 2001, for the words “Die Zeit” (the “CTM”). The Complainant has provided evidence of registration of the CTM and other trademarks in the form of printouts of the online databases of the relevant Trademark Registries.

6.5 The Respondent does not deny this and, on the basis of the Complainant’s evidence, the Panel accepts that the Complainant has made out the first element of Paragraph 4(a)(i).

6.6 In considering the second element of Paragraph 4(a)(i), “.com” can be ignored. Therefore, the only difference between the Disputed Domain and the CTMis the word “Die”. “Die” is, of course, simply the German word for “the”.

6.7 The Respondent maintains (as set out in greater detail earlier in this decision) that because “zeit” is a common word, a small difference, in this case the omission or inclusion of “die”, is enough to render the Disputed Domain and the Complainant’s mark not confusingly similar.

6.8 In this respect the Respondent relies upon the following passage from America Online, Inc. v. Megaweb.com, Inc., Naf Case No. 463099 (May 26, 2005)):

“in the Internet context, consumers are aware that domain names for different Websites are quite often similar, because of the need for language economy, and that very small differences matter”.

6.9 The segment from the AOL case cited, is in fact a quotation from the US decision in Entrepreneur Media Inc v Smith, 279 F.3d 1135,1147. This was applied by the panel in the AOL Inc v. Megaweb.com case to a situation where the comparison in question was between the mark “ICQ” and the domain names, <ciq.com>, <ixq.com>, <jcq.com>, <ncq.com>, <ocq.com>, <qcq.com>, <ucq.com> <vcq.com>, <kcq.com> and <ycq.com>.

6.10 The Panel finds AOL Inc v. Megaweb.com to be of little assistance in this case. The same is true of the other cases cited by the Respondent (i.e. NATIONSBANK mark compared with <nationsbanking.com>, DEER VALLEY mark compared with <deervalleycondos.us>, CLUB 18-30 mark compared with <hot18to30.com> and BANKAMERICA compared with <banqueamerique.com>). There are a number of reasons for this.

6.11 Firstly, the facts in this case are somewhat different from those in the cases cited by the Respondent. Here, the difference is simply the absence of the German word for “the”. The most significant element of the CTM i.e. the word “Zeit”, remains. Further, “the” is precisely the type of word which an Internet user looking for the site of an undertaking whose name commences with “the” might consider redundant. Therefore, this case is, for example, factually very different from the situation in the AOL case cited where the differences comprised one letter in the context of a three letter trademark. In the Thomas Cook case matters are further factually complicated by the fact that the relevant mark was subject to certain disclaimers.

6.12 Secondly, the choice of cases relied upon by the Respondent is somewhat selective. There are a number of UDRP cases which suggest that the test of confusing similarity is not as rigorous as the cases cited by the Respondent might suggest. Take for example the recent case of Niset Marketing Systems CCC v. Silver Lining WIPO Case No. D2005-0560 where <globalguestspeaker.com> was held to be confusingly similar to the trademark “guest speaker”. It is noticeable that in this case the panel characterized the confusing similarity test as a “low threshold”.

6.13 Thirdly, some of the cases cited by the Respondent rely upon various cases from national trademark law on the question of confusing similarity. However, the Panel is of the view that this is something that should only be done with very great care. The question of “confusion” and “likelihood of confusion” in national trademark systems are often ones that involve considerations of a wide range of factors including the classes of goods and services in respect of which the trademark is registered and the manner in which the alleged offending sign is used¹. In UDRP cases there is a somewhat more abstract comparison of the mark and the domain name. So for example, the content of the website linked to a domain name (although it may be very relevant to other questions) will usually be ignored when assessing the question of confusing similarity (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).

6.14 Bearing all of these factors in mind the Panel has little difficulty in coming to the conclusion that on the particular facts of this particular case there is confusing similarity between the Disputed Domain and the CTM. Whatever the exact height of the “threshold” of confusing similarity may be, the Panel finds that the Complainant has exceeded it in this case. In the circumstances, there is no need to consider the Complainant’s contentions based upon other registered trademarks or alleged US common law rights.

6.15 The Panel concludes that the Complainant has proved both of the elements of Paragraph 4(a)(i) of the Policy.

B. Preliminary consideration of fact

6.16 Before considering whether the Complainant has “proved” the elements of the Policy at Paragraph 4(a)(ii) and (iii) it is convenient first to determine a question of fact. Did at the time of registering the Disputed Domain, the Respondent know of the Complainant or its trade name use or trademark registrations?

6.17 Although this is not expressly alleged by the Complainant, the Complainant clearly believes this to be the case. It is inherent in the Complainant’s allegations of bad faith.

6.18 This is not at first sight an unreasonable stance for the Complainant to take. This Panel (admittedly comprising a single European panelist, but one who is not a German speaker) is quite prepared to accept that Die Zeit has a degree of fame that extends significantly beyond its German home. The Respondent does not accept that the Complainant is “well known” in the United States but even the Respondent accepts that the Complainant has at least some degree of business in the United States. Further the Respondent makes no bones of the fact that it registered the Domain Name knowing that “zeit” is a German word. It is not unreasonable to suspect that a person with such knowledge registering the domain name <zeit.com> might also know that the ccTLD equivalent of that domain name i.e. <zeit.de> was used by the Complainant.

6.19 Also the Respondent cites amongst the other non-English generic words that it has registered as domain names the Dutch word for “journalistic” as part of <journalistiek.org>. Exactly how many such generic words the Respondent has registered is not clear, but the fact that of eight such words relied upon in the Response one has obvious associations with the newspaper industry is to say the least curious.

6.20 However, suspicions although they may be reasonable are not sufficient. Whilst one might expect the Complainant’s newspaper to have a degree of fame in the United States and perhaps one that extends significantly beyond a limited number of readers of the newspaper in the United States, it is not inherently improbable given the Disputed Domain’s generic nature that the Respondent might have registered the Disputed Domain without knowledge of the Complainant’s newspaper. Further, ordinarily there is no obligation on a registrant to check whether a word used in a domain name may be used in some other domain name by another business. There have been cases where a panel has held that a respondent should have undertaken such checks and has “constructive” knowledge of the complainant’s interests (see for example Red Nacional De Los Ferrocarriles Espanoles v. Ox90, WIPO Case No. D2001-0981 and Sibyl Avery Jackson v. Jan Teluch WIPO Case No. D2002-1180). However, the circumstances of those cases were very unusual and it is not suggested by the Complainant that similar circumstances exist in this case.

6.21 The fact that the links on the original website operated from the Disputed Domain tend to relate to time and time keeping rather than anything journalistic also tends to support the Respondent’s position. Similarly it is noticeable that it was the Complainant that approached the Respondent in respect of the sale of the Disputed Domain not vice versa.

6.22 In the opinion of the Panel of even greater significance here is the fact that this is not a case where the Respondent is being coy about its knowledge of the Complainant at the time of registration. Yes, the Respondent in very large part asserts that the evidence brought by the Complainant is not sufficient to enable a panel to infer that the Respondent had knowledge of the Complainant’s interest in the word “zeit”. However, the Respondent does not leave it there. The Respondent clearly and unequivocally asserts in its Response that the “Respondent did not even have knowledge of Complainant or its German newspaper Die Zeit when it registered the Disputed Domain”. This assertion is supported by a signed declaration in similar terms from one Mr. Gates, an individual who describes himself as the “general manager” of the Web Group and the person who was directly responsible for the registration of the Disputed Domain.

6.23 On the evidence brought forward by the Complainant in this case, the Panel is not prepared to conclude that Mr. Gate’s statement is untrue. The burden of proof in this case falls upon the Complainant and the Complainant has failed to satisfy that burden. The Panel is therefore not prepared to find as a matter of fact that the Respondent at the time of registration of the Disputed Domain knew of the existence of the Complainant or the Die Zeit newspaper.

C. Rights or Legitimate Interests

6.24 The Respondent makes reference to the fact that it is now operating an electronic clock from a website under the Disputed Domain. Nevertheless, the Panel does not think that even the Respondent seriously maintains that it was for this purpose that the Respondent registered and initially used the Disputed Domain.

6.25 Instead the Respondent’s purpose appears to have been to obtain revenues through “pay-per-click” advertising links and/or through sale of the Disputed Domain. Where the domain name in question is an ordinary word and in the absence of knowledge of the Complainant’s interest in the Disputed Domain, the Respondent maintains that it is inherent in the first come first served nature of the domain name registration process that it has a legitimate right and interest.

6.26 There is nothing wrong per se in domain name trading. However, given the Panel’s finding on bad faith, it is not necessary to consider this issue further.

D. Registered and Used in Bad Faith

6.27 Paragraph 4(b) of the Policy describes four circumstances each of which constitutes evidence of the registration and use of a domain name in bad faith under Paragraph 4(a)(iii) of the Policy.

6.28 The Complainant relies on Paragraphs 4(b)(i) and 4(b)(iv) which can be paraphrased as follows:

4(b)(i) - circumstances indicating that the Respondent registered the Disputed Domain primarily for the purpose of selling it to the Complainant for consideration exceeding the Respondent’s out-of-pocket costs;

4(b)(iv) - by using the Disputed Domain, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the host page of the Disputed Domain, by creating a likelihood of confusion with the Complainant’s mark.

6.29 Given the finding of fact reached by the Panel in this case that the Complainant has failed to show that the Respondent was aware of the Complainant’s interest in and use of the word “Zeit” at the date of registration, the Complainant’s contentions in this respect inevitably fail.

6.30 The two cases relied upon by Complainant are of little assistance to it. The first of these is The Gleaner Company, Ltd v. iCon Ally, WIPO Case No. D2000-1155. In this case the Gleaner Company Limited owned and operated an on-line newspaper, “The Jamaica Gleaner Online”, at the domain name <jamaica-gleaner.com>. The Respondent, it was alleged, used its website at the disputed domain name, <jamaicagleaner.com>, to redirect traffic to its website at “www.yush.com”. The panel accepted the complainant’s contention that the registration was in bad faith. Given the nature of the domain name in question this is not unsurprising. Further, the respondent did not file a response. There is no clear analogy with the circumstances of the case currently before the Panel where the Disputed Name is highly generic in nature and the Respondent has filed a detailed response denying knowledge of the Complainant’s interest in the Disputed Domain.

6.31 The second case relied upon by the Complainant is Ottaway Newspapers Inc v. Cameron Barett, WIPO Case No. D2001-0726. It is said that this case supports the proposition that the offer to sell the Disputed Domain is prima facie evidence of bad faith. It is certainly the case that such an offer can constitute such evidence. However, in this case given the generic nature of the Disputed Domain and the Panel’s conclusions as to the knowledge of the Respondent of the Complainant’s interest in the word “zeit” at the time of registration, the Panel does not find that the offer made in this case constitutes such prima facie evidence.

6.32 In conclusion, the Complainant fails in its allegation of bad faith registration and use in this case. As a result it has failed to make out Paragraph 4(a)(iii) of the Policy.

E. Reverse Domain Name Hijacking

6.33 The Respondent contends that a finding of reverse domain name hijacking is warranted because “the Complainant knew or should have known at the time it filed the Complaint that it could not prove that the Disputed Domain was registered in bad faith”.

6.34 The burden of proof is upon the Respondent to show this and it is the view of the Panel that it has failed to discharge that burden.

6.35 For the reasons already described in this decision, this Panel is of the view that it was not unreasonable to suppose at the time that the Complainant brought this Complaint that the Respondent knew of the Complainant’s interest in the “zeit” name. In essence the Respondent’s case appears to be that since “zeit” is a generic German word, the Complainant ought to have known that its Complaint was bound to fail. However, there have been a large number of cases where a complainant has succeeded in UDRP proceedings not withstanding the generic nature of the domain name in question (see for example the case cited under paragraph 7.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).

6.36 A particularly important factor in considering the allegation of reverse domain name hijacking in this case is that the Complainant raised its concerns in correspondence with the Respondent (emails of April 22 and May 19, 2005). The Respondent could have substantively responded to the Complainant’s concerns at this time. It would have been open to the Respondent to make it clear at that stage that at the time of registration of the domain name it had no knowledge of the Complainant or the Complainant’s newspapers. For reasons best known to the Respondent is did not do so.

6.37 The Respondent was of course under no obligation to respond in a timely fashion to such correspondence. However, it should be no surprise to a respondent that failure to respond to a complainant’s concerns raised prior to the date of commencement of proceedings under the Policy is a factor that a panel may take into account when considering a subsequent allegation of reverse domain name hijacking.

 

7. Decision

7.1 For all the foregoing reasons, the Complaint is denied.

---

Matthew S. Harris
Sole Panelist

Dated: September 26, 2005

---

¹ The Panel notes that in the Entrepreneur Media case referred to in AOL the court refers to the Sleekcraft factors in this respect. Similarly in Sabel B.V. v. Puma A.G. (Case C-251/95), which is cited in Thomas Cook Holdings Ltd v Aydin, the ECJ refers to the global appreciation test.