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Beiersdorf AG v. Web4comm Srl Romania
Case No. DRO2005-0002
1. The Parties
The Complainant is Beiersdorf AG, Hamburg, Germany, represented by Anwaltskanzlei Schultz-Suechting, Germany.
The Respondent is Web4comm Srl Romania, Bucharest, Romania, represented by
Lia Pardau’s Lawyers Cabinet, Romania.
2. The Domain Names and Registrar
The disputed domain names <beiersdorf.ro> and <nivea.ro> are registered
3. Procedural History
The complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2005. On April 20, 2005, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the domain names at issue. On April 28, 2005, RNC.ro transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, that the Uniform Domain Name Dispute Resolution Policy applies to the domain names 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 April 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2005. The Response was filed with the Center on May 19, 2005.
The Center appointed Petter Rindforth as the Sole Panelist in this matter on June 2, 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.
On June 13, 2005, the Complainant filed a Supplemental Filing with the Center, which was communicated the Panel on June 14, 2005. According to the Rules, it is in the sole discretion of the Panel to determine whether to admit and consider the Supplemental Filing in rendering its decision. In this case, the Panel considers the Supplemental Filing to being filed too late during the proceedings, and it will therefore not be taken into consideration as such.
The Panel shall issue its Decision based on the Complaint, the Response, the
Policy, the Rules and the Supplemental Rules. The case before the Panel was
conducted in the English language.
4. Factual Background
Complainant is one of the world’s leading companies in cosmetics and skincare. Its NIVEA brand is based on NIVEA Crиme, produced and sold for the first time in 1911. Today, Complainant and its products are on the market in over 50 countries, including Romania. NIVEA is the world’s largest skin and personal care brand with per capita sales of € 4.33 in Europe. Complainant’s Group sales amounted in 4,673 billion euros (2003). The marketing budget in IV/2003 was 1,307 million euros and 998 million euros for NIVEA only. The English version of Complainant’s Annual Report for 2003 provided as Annex 4b of the complaint.
The trademarks NIVEA and BEIERSDORF are registered trademarks in a great number of countries, including Romania (lists of registrations world wide are provided as Annex 5 and 6 of the complaint. Copies of Certificates of Registration for NIVEA and BEIERSDORF in Romania provided as Annex 10 and 11 of the complaint). Complainant has also registered NIVEA and BEIERSDORF under a number of ccTLDs around the world, with the exception of Romania (a list of Complainant’s domain name registrations is provided as Annex 7a and 7b of the complaint). A market survey shows that the “spontaneous awareness” for NIVEA in Romania amounts to 57% and the “prompted awareness” amounts to 89% (a copy of the report is provided as Annex 8 of the complaint).
The Respondent registered the disputed Domain Name <nivea.ro> on July 25, 2001,
and <beiersdorf.ro> on February 1, 2002. No specific information is provided
about the Respondent’s business activities except for what is stated below
by the Complainant.
5. Parties’ Contentions
Complainant states that BEIERSDORF and NIVEA are notorious trademarks, and that consumers world wide are familiar with the trademark NIVEA and the trademark / company name BEIERSDORF and relates these marks to the Complainant.
Complainant further states that the relevant parts of the Domain Names are the expressions “Beiersdorf” and “Nivea” respectively, which are identical to the Complainant’s company name and its registered trademarks. The Domain Names may lead to the conclusion that they have been registered by a branch or subsidiary of Complainant, thereby misleading and creating confusion among the relevant public. No trader would legitimately choose these marks unless seeking to create an impression of association with Complainant.
Respondent does not have any trademark right in BEIERSDORF or NIVEA. Complainant has not licensed nor otherwise permitted Respondent to use any of the trademarks or to apply for, or use, any domain name incorporating any of those marks and/or Complainant’s company name.
There is no evidence of Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services. Respondent has not been commonly known by the Domain Names, and is not making a legitimate non-commercial or fair use of them.
The disputed Domain Names are not functional since the date of their registration. In this respect, Complainant points out that it has been repeatedly and consistently expressed in various earlier administrative panel decisions that it is possible for inactivity by a Respondent to amount to a disputed domain name being used in bad faith; occupying an entry in the DNS is “use” in any event since it has a blocking function.
Complainant argues that in the present case, the element of bad faith registration and use is established by the following facts:
(i) The company name and trademark BEIERSDORF as well as the trademark NIVEA is well-known all over the world and also in Romania. It is inconceivable that Respondent would not be aware of this fact.
(ii) Respondent has registered a number of other domain names infringing third
party’s trademark rights such as <thebodyshop.ro>, <the-body-shop.ro>,
<chrysler.ro>, <rexona.ro>, <volksbank-leasing.ro>, <wrigley.ro>
and <osram.ro> (printouts from ROTLD Whois database, showing these registrations,
provided as Annex 12 of the complaint). The Respondent has been involved in
a previous proceeding (see Praktiker AG v. web4COMM SRL Romania, WIPO
Case No. DRO2003-0001).
(iii) The words “Beiersdorf” and “Nivea” do not have any meaning in the Romanian or English language, and they do not even exist in those languages, thereby supporting the fact that Respondent was well aware of Complainant, its activities and trademarks.
(iv) Because of the wide-spread use and reputation of the trademarks BEIERSDORF and NIVEA, Internet users also in Romania and Germany would immediately believe that the disputed Domain Names were in some way associated with Complainant.
(v) Furthermore, the list of other domain names registered by Respondent point to the fact that the Domain Names at issue were registered primarily for the purpose of selling it to Complainant.
According to Complainant, its representatives in Romania have made repeated demands to Respondent to transfer the Domain Names at hand to Complainant, but with no result. The Respondent’s representative has explicitly stated that he is “free to register what he wants” and that he will not give up these registrations.
The Complainant requests, in accordance with paragraph 4(i)
of the Policy, that the Administrative Panel issue a decision that the Domain
Names be transferred to the Complainant, Beiersdorf AG.
Respondent has not contested Complainant’s allegations,
but argues that there is “no legal act nor contract” between Respondent
and Complainant containing Mediation Agreement as defined in Art. 1 of the Center’s
Mediation Rules. Respondent therefore concludes that the Center is an “incompetent
court” and asks the Panel to analyze the legality of the procedure.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainants must prove each of the following:
(i) that the Respondent’s Domain Name 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 is being used in bad faith.
A. Identical or Confusingly Similar
Complainant’s trademarks BEIERSDORF and NIVEA are registered in a great number of countries world wide - among them Romania, Respondent’s own country. Further, BEIERSDORF and, especially, NIVEA, are indeed well known marks.
The relevant parts of the Domain Names are “beiersdorf” and “nivea”.
Accordingly, the Panel finds that the Domain Names are identical to Complainant’s trademarks BEIERSDORF and NIVEA.
B. Rights or Legitimate Interests
The Respondent is not an authorized agent or licensee of the Complainant’s products and has no other permission to apply for any domain name incorporating Respondent’s trademarks. The Respondent is not commonly known by the Domain Names.
The response only consists of a claim that the Center is an “incompetent court”. By not submitting a substantial response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Names.
In addition, the fact that the Domain Names do not resolve to any active webpage indicates that, before any notice to the Respondent of the dispute, Respondent has not made any use of, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the Domain Names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the Domain Name.
There is no clear evidence that the primary purpose of the registration of the Domain Names was to sell the same to the Complainant. Complainant refers to “repeated demands” to Respondent to transfer the Domain Names, and that the only response from the Respondent was that he is “free to register what he wants”, however no copies of the said correspondence are provided in the complaint. It seems that no monetary claims or suggestions have been made by any of the parties.
However, even the lack of active use of the Domain Names may indicate the intention to transfer the Domain Names for a valuable consideration, especially considering the fact that the Respondent has registered many other domain names consisting of other’s trademarks (Annex 12 of the complaint). It may therefore be presumed that the Domain Names were registered for the only purpose of selling the same to the Complainant.
(ii) Circumstances indicating that the Respondent has registered the Domain Name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.
Both BEIERSDORF and NIVEA are well known trademarks, in the name of the Complainant, throughout the world. As shown in the complaint, the marks are both registered and, regarding NIVEA, has a reputation in Romania, the residence of the Respondent.
The Complainant has registered both trademarks as domain names under a number of ccTLDs, with the exception of “.ro” where the Complainant is hindered by Respondent’s registrations.
As shown by Annex 12 of the complaint, the Respondent is engaged in a pattern of registering a number of domain names including others trademarks, such as <thebodyshop.ro>, <the-body-shop.ro>, <volksbank-leasing.ro>, <wrigley.ro>, <osram.ro>, <rexona.ro> and <chrysler.ro>. This pattern indicates that the Respondent registered the Domain Names in order to prevent the Complainant from reflecting the trademarks BEIERSDORF and NIVEA in domain names under the ccTLD “.ro”.
(iii) Circumstances indicating that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor.
There is no evidence that the Respondent is a competitor of the Complainant.
(iv) By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website 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 the said website / location or of a product or service on that website / location.
The disputed Domain Names does not resolve to any active websites and, accordingly, it cannot be said to be actively used to attract Internet users to the Respondent’s website and even less to be used such way for commercial gain.
However, the requirement of the Policy of a domain name “being used in bad faith” is not limited to positive actions. In this particular case, the following actions are considered as use in bad faith:
- Respondent has failed to provide evidence of any legitimate commercial, non commercial or fair use of the Domain Names,
- Respondent has not contested any of the allegations made by the Complainant,
- Respondent is engaged in the business of acquisition domain names, considering of other’s trademarks and with the presumed purpose of selling them,
- Complainant’s trademarks are well known in Romania, and accordingly Respondent is presumed to have knowledge of these marks before the registration of the Domain Names,
- Any use of the Domain Names would lead the public to the conclusion that they, and their connecting websites, were associated with the Complainant.
Given the above circumstances, the Panel concludes that the Domain Names are both registered and used in bad faith.
The Panel concludes that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.
Jurisdiction – “Competent Court”
The disputed Domain Names are registered with RNC.ro. Therewith the Respondent has accepted the Domain Name Dispute Resolution Policy of the RNC.ro. The dispute policy for the “.ro” ccTLD Registry states: “When a mutual resolution is not successful, the complaint is the subject of the Uniform Domain Name Dispute Resolution Policy endorsed and approved by ICANN (Internet Corporation for Assigned Names and Numbers)” (Annex 3 of the complaint).
It is the Complainant’s discretion to select the administrative dispute resolution provider from among those approved by ICANN (paragraph 4(d) of the Policy). The Center is one of those providers.
Further, the Respondent is obviously familiar with
the Policy and the proceedings (see Praktiker AG v. web4COMM SRL Romania,
WIPO Case No. DRO2003-0001), and the
Panel therefore concludes that the jurisdiction objection is merely filed in
bad faith in an attempt to confuse the Panel and avoid filing a substantial
reply to the allegations made by the Complainant.
The Panel finds that the Center indeed has jurisdiction
over the case and that the Panel was properly constituted. There are no legal
obstacles to issue a decision regarding the disputed Domain Names.
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 names, <beiersdorf.ro> and <nivea.ro> be transferred to the
Complainant, Beiersdorf AG.
P-E H Petter Rindforth
Dated June 15, 2005