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and Mediation Center
Zwiesel Kristallglas AG v. WWW Enterprise Inc.
Case No. D2005-1223
1. The Parties
The Complainant is Zwiesel Kristallglas AG of Zwiesel, Germany, represented by Dr. Schmitt & Kollegen, Germany.
The Respondent is WWW Enterprise Inc., of Los Angeles, California, United States
2. The Domain Name and Registrar
The disputed domain name <zwiesel.com> is registered with OnlineNic,
Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2005. On November 29, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On November 30, 2005, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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”).
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 December 13, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2006. The Center notified the Respondent’s Default on January 3, 2006.
The Center appointed Marcin Krajewski as the sole
panelist in this matter on January 12, 2006. 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
The Complainant, Zwiesel Kristallglas AG, is a German company which produces and internationally distributes glassware and is well-known in its industry. Before the name of the Complainant was changed to “Zwisel Kristalglass AG”, it used to operate under the names of “Schott Zwiesel Glaswerke AG” and “Schott Zwiesel AG”. The Complainant has always been seated in a Bavarian town named Zwiesel.
The Complainant is the registered owner of a substantial number of trademarks consisting of, or including, the word “zwiesel”. In particular, the Complainant owns:
- the figurative trademark “ZWIESEL GLAS”, No. 2 068 910, registered in Germany on June 31, 1991,
- the figurative international trademark “ZWIESEL GLAS”, No. 623 413, registered on August 2, 1994,
- the figurative trademark “ZWIESEL GLAS”, No. 1 955 795, registered in the United States of America on February 13, 1996,
- the figurative trademark “ZWIESEL GLAS”, No. 1 580 301, registered in the United Kingdom on January 29, 2001,
- the figurative trademark “ZWIESEL GLAS”, No. TMA 458 412, registered in Canada on May 31, 1996,
- the nominative trademark “SCHOTT ZWIESEL”, No. 398 07 081, registered in Germany on March 13, 1998,
- the figurative trademark “ZWIESEL 1872” No. 304 57 439 registered in Germany on December 1, 2004,
- the figurative international trademark “ZWIESEL 1872” No. 850 601 registered on January 13, 2005.
The Complainant is also the registered owner of further figurative marks consisting of the word “ZWIESEL”.
Moreover, the Complainant owns several trademarks consisting of the word “DIVA”.
All the above mentioned trademarks are registered for international class 21 and are used in connection with glass products.
The Complainant is operating a website “www.zwiesel-kristallglas.com” and has also registered several other top-level domain names incorporating the word “zwiesel”, e.g. <www.schott-zwiesel.com> and <www.schottzwiesel.com>.
The Respondent is an entity with a stated address in California, USA.
The disputed domain name was registered by the Respondent with OnlineNic, Inc. d/b/a China-Channel.com on April 18, 2001.
The disputed domain name resolves to a website which serves as a search engine providing various sponsored hyperlinks. Originally, among those links were numerous links referring to glass products. The Complainant’s trademark “DIVA” was also used on the website.
Having noticed the use of the disputed domain name, the Complainant tried to contact the Respondent by e-mail and by telephone, but the telephone number proved to be false.
The Respondent failed to answer the e-mail, but changed his website. He changed its language into German and removed links connected with glass products. The directory style of the website providing a variety of hyperlinks remained unchanged.
The facts mentioned above have been established on
the basis of the Complaint and documents attached thereto in accordance with
paragraph 3(b)(xv) of the Rules.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular, the Complainant claims that:
(i) The domain name in dispute is confusingly similar to the trademarks in which the Complainant has rights
The Complainant claims that the confusing similarity of the domain name used by the Respondent to the Complainant’s trademarks results from the use of the word “Zwiesel”.
The Complainant contends that the word “Zwiesel” is the essential element of the Complainant’s marks and is universally recognized and relied upon as identifying the Complainant. Therefore, according to the Complainant, the public, when reading or hearing the disputed domain name, maybe led to believe that the said domain name is owned by or related to the Complainant.
(ii) The Respondent has no rights or legitimate interests in respect of the domain name in dispute
The Complainant states that the Respondent is not a licensee or representative of the Complainant and has not been otherwise authorized by the Complainant to use the disputed domain name.
The Complainant claims that the Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services. Moreover, the Respondent has never been known under the name “zwiesel” and does not make a legitimate non-commercial or fair use of the disputed domain name
(iii) The domain name in dispute was registered and used in bad faith
In support of this position, the Complainant provides that the Respondent must have been aware of the Complainant’s marks and wanted to refer to the Complainant. This is proven by the original content of the Respondent’s website which included “DIVA”, also a trademark of the Complainant, and links to websites referring to glass products.
Moreover, the Complainant contends that before choosing a name for its website, it was reasonable for the Respondent to undertake a search in order to check whether the domain name would not violate third parties’ rights.
According to the Complainant, the intention of the Respondent was to take financial advantage of the Complainant’s well-known marks. Every link on the Respondent’s website activated by an Internet user enables the Respondent to collect financial remuneration.
Moreover, in order to prove that the Respondent’s behavior is a part of an overall pattern, the Complainant refers to earlier WIPO UDRP cases, where, in similar circumstances, decisions were rendered against the Respondent.
The Complainant also contends that the Respondent’s failure to provide proper telephone number constitutes an additional indication of the bad faith registration of the disputed domain name.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the following facts must be established in order to grant the Complainant a remedy:
(1) 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
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The relevant part of the domain name in dispute is “zwiesel”. For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the suffix “com” must be disregarded as being simply a necessary component of a generic top level domain name.
The Panel accepts the Complainant’s allegations that the word “zwiesel” is the essential element of the Complainant’s marks and is universally recognized and relied upon as identifying the Complainant. Actually, in cases of some of the Complainant’s figurative trademarks, the word “zwiesel” is the sole element of the trademark.
In the Panel’s opinion, the fact that the word
“zwiesel” is a geographical term does not mean that it can not be
protected under the Policy. In many previous UDRP cases, it was found that while
geographical indications are not protected per se under the Policy, they
may qualify for protection as trademarks if registered as such, see e.g.: WIPO
Case No. D2004-0242 <mexico.com> with further references; WIPO
Case No. D2002-0856 <potsdam.com>, <potsdam.net>, <potsdam.org>,
<potsdam.info>; WIPO Case No. D2001-0680
<henniez.com>; and WIPO Case No. D2000-1217
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Even though registering a domain name consisting of a city might, in certain circumstances, create a right or a legitimate interest under the Policy, the Panel finds that in the circumstances of this case, it is more likely that the Respondent registered the disputed domain name having the Complainant in mind, with the intention to profit from the Complainant’s goodwill and reputation of its trademark.
The Panel is satisfied with the Complainant’s statement that the Respondent was not in any way authorized to use a domain name that included the word “zwiesel”. The Respondent has not provided evidence of circumstances of the type specified in Paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the domain name in dispute.
Accordingly, based on the case file, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove registration and use in bad faith of the disputed domain names.
The Panel agrees that the original content of the Respondent’s website (which included another one of the Complainant’s trademarks and links to other websites referring to glass products) is sufficient evidence that the Respondent must have been aware of the Complainant’s marks and wanted to refer to the Complainant.
Moreover, the evidence shows that the Respondent is
engaged in a strategy of registering domain names similar to well-known trademarks
in order to maximize Internet traffic and therefore gain financial remuneration
for every link on its website activated by Internet users, see WIPO
Case No. D2004-0765, WIPO Case No. D2004-1078,
WIPO Case No. D2005-0384, and WIPO
Case No. D2005-0311. This means that the Respondent has attempted to attract,
for commercial gain, Internet users to its website, by creating a likelihood
of confusion with the Complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of the Respondent’s website. In accordance
with paragraph 4 (b)(iii) of the Policy, this finding leads to the conclusion
that the domain name in dispute has been registered and used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii)
of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <zwiesel.com> be transferred to the Complainant.
Date: January 23, 2006