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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kьhne + Nagel International AG v. Donald Cross
Case No. D2006-1103
1. The Parties
The Complainant is Kьhne + Nagel International AG, Schindellegi, Switzerland, represented by Harry Waldhelm, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Donald Cross, Leigh, Manchester, United Kingdom of Great Britain
and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <kuehne-nagal.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2006. On August 30, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On September 5, 2006, Tucows 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 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 September 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 24, 2006. The Response was filed with the Center on September 13, 2006.
The Center appointed Dietrich Beier as the Sole Panelist
in this matter on October 3, 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,
4. Factual Background
The Complainant was founded in 1890 in Bremen, Germany. The Complainant’s group today is one of the world’s leading freight forwarding and logistics consolidated companies. Complainant’s group operates across a global network of 750 offices staffed by over 40,000 logistics employees.
The terms “Kьhne & Nagel” and “Kuehne & Nagel” as well as “Kьhne + Nagel” and “Kuehne + Nagel” are commonly known and registered trademarks in many countries throughout the world.
Complainant is inter alia the proprietor of the German word/device trademark DE 399 44 911 KN KЬHNE & NAGEL registered in classes 35, 36, 39 on September 2, 1999.
In the Internet the Complainant for many years now trades under the Internet domain name <kuehne-nagel.com> which automatically links the user to the Complainant’s internet portal with the domain name <kn-portal.com>. All e-mail addresses of the Complainant’s group of more than 40,000 employees worldwide show the domain name firstname.lastname@example.org.
Respondent uncontestedly registered the disputed domain name on May 3, 2006.
The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or business names and has not permitted the Respondent to apply for or to use any domain name confusingly similar to the Complainant’s trademarks.
There is no evidence of Respondent’s use 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.
The Respondent contacted the Complainant with the offer to transfer the disputed
domain name. Respondent using an email address with the Top Level domain name
<kuehne-nagal.com> mentioned that he has received emails from customers
and agents from Complainant from all over the world. One of them forwarded to
the Complainant contained copies of a shipment’s master airwaybill, house
airwaybill, customer’s release certificates, commercial invoice, packing
list as well as internal invoices between two of the Complainant’s entities.
Respondent announced to place the disputed domain name for “auction with
active emails” if Complainant would not be interested in it. Complainant
offered to compensate reasonable and proven out of pocket expenses for registering
the domain name. Respondent proposed to transfer the disputed domain name for
50,000 United States dollars.
5. Parties’ Contentions
According to Complainant, the domain name <kuehne-nagal.com> is confusingly similar under the Policy as it only provides an “a” instead of an “e” in the Complainant’s registered trademark’s integral part “nagel”. In many languages the pronunciation of “nagal” does not noticeably differ from the pronunciation of “nagel”. Besides this the slightly different spelling is hardly recognizable for persons reading the name. Therefore the difference is almost imperceptible both phonetically and visually.
Registering a domain that does not show a noticeable phonetic difference to
a registered trademark as well as only one changed letter compared to the respective
trademark has become known as “typo-cybersquatting” and has amongst
others been recognized in the decision FMTM Distribution Limited v. Watch
My Domain, WIPO Case No. D2005-0724.
According to Complainant, there is neither an indication for the Respondent trading under the domain name, nor is he commonly known by the disputed domain name, nor is he making any legitimate non-commercial or fair use of the domain name. He instead holds back e-mails he receives.
On May 30, 2006, the Complainant received the first e-mail giving notice of the Respondent’s receiving of sensitive information as outlined above. In this e-mail the Respondent also showed his true intention for registration: he offered the domain for sale connected with the indirect threat to otherwise sell the domain and the sensitive information he receives to the Complainant’s competitors. This threat has been confirmed in a further email of the Respondent. Not reacting on Complainant’s offer to compensate his out-of-pocket expenses for assigning the domain to the Complainant, he reacted with a counter offer of transferring the domain name for 50,000 United States dollars.
The Respondent’s activities prove that he registered the domain for the sole purpose of selling the domain to the Complainant for a price that by far exceeds his out-of-pocket expenses, and therefore prove that the Respondent registered and is using the disputed domain name in bad faith.
Respondent claims that he purchased the domain name
in good faith. He never had the intention to resell the domain name. When he
recognized that the domain name was confused with another similar domain name,
Respondent offered to sell the domain name to the Complainant to cover his costs.
Such situations often occur and are concluded by agreement to sell and transfer
the domain name. If Respondent had not contacted the Complainant, Complainant
would have no knowledge about this domain name. Although there were several
companies interested in purchasing the domain name, Respondent contacted in
good faith the Complainant. The original selling price “was over zealous”,
but Respondent is prepared “to listen to offers”.
6. Discussion and Findings
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name in dispute 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 with respect to the domain name; and
(iii) the domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
Complainant has established the fact that it has a valid trademark right for KЬHNE & NAGEL in classes 35, 36 and 39.
The trademark of the Complainant and the domain name in question <kuehne-nagal.com> only differ in the letter “a” instead of “e” in “nagel”, the transcription of “ь” in “ue” and the abbreviation KN of “Kьhne & Nagel”. The device element in the trademark does not carry the weight of this trademark. Whereas the transcription of the German “ь” in “ue” is common and phonetically irrelevant, also the difference of “e” and “a” in the element “nagel”, almost at the end of the trademark does not avoid a confusing similarity of the signs, neither in an optical nor a phonetical respect.
The Panel therefore considers the domain name in question to be confusingly similar to the trademark KЬHNE & NAGEL in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent has no rights in the domain name in question, since Respondent is not a licensee of Complainant, nor has Complainant granted any permission or consent to Respondent to use its trademarks. Furthermore, Respondent has no legitimate interest in the domain name in question, since there is no indication that Respondent is commonly known by the name “kuehne-nagal.com” nor that Respondent is using the domain name in question in connection with a bona fide offering of related goods or services. Also a noncommercial or fair use is neither substantiated nor evidenced by Respondent.
The Panel therefore considers that the Respondent has no rights or legitimate interests in respect of the domain name in question in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
All of the circumstances in this case indicate that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant for an amount significantly exceeding any possible out-of-pocket costs spent by the Respondent. The Respondent’s offer to sell this domain name to the Complainant, in a close timely relation to the registration of the domain name combined with the installation of an operating email address in accordance with the email address format used by the Complainant to obviously facilitate typo caused emails sent to Respondent instead of the Complainant, is clear evidence of the Respondent’s bad faith under paragraph 4(b)(i) of the Policy.
The Panel therefore considers the domain name in question
to have been registered and used in bad faith in accordance with 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 <kuehne-nagal.com> be transferred to the Complainant.
Dated: October 17, 2006