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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
C. Bechstein Pianofortefabrik AG v. Melvin Besbrode, Besbrode Pianos Leeds
Case No. D2008-1528
1. The Parties
Complainant is C. Bechstein Pianofortefabrik AG, Berlin, Germany, represented by the law firm Ruschke Hartmann Madgwick & Seide, Germany.
Respondent is Melvin Besbrode, Besbrode Pianos Leeds, Leeds, United Kingdom of Great Britain and Northern Ireland. Mr. Besrode has submitted and signed the Response.
2. The Domain Name and Registrar
The disputed domain name <bechstein.mobi> is registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the вЂњCenterвЂќ) on October 16, 2008. On October 8, 2008, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the domain name at issue. On October 9, 2008, 1&1 Internet AG transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to Complainant on October 17, 2008, providing the registrant and contact information disclosed by the registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 21, 2008.
The Center verified that the Complaint as amended satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the вЂњPolicyвЂќ or вЂњUDRPвЂќ), the Rules for Uniform Domain Name Dispute Resolution Policy (the вЂњRulesвЂќ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the вЂњSupplemental RulesвЂќ).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2008. The Response was filed with the Center on November 17, 2008.
The Center appointed Richard G. Lyon as the sole panelist in this matter on November 28, 2008. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his 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
Complainant makes and sells musical instruments, including pianos. Complainant owns registered trademarks for вЂњBechsteinвЂќ or вЂњC. BechsteinвЂќ in at least twenty countries, including the United Kingdom of Great Britain and Northern Ireland. Some of these trademarks were registered more than fifty years ago and indicate use in commerce for pianos since the nineteenth century.
Respondent has sold pianos since 1980. He currently operates his business in Leeds, England, and has available for sale more than 250 pianos, among them forty Bechsteins. Internet sales constitute a substantial portion of RespondentвЂ™s business. Two of the websites it uses are вЂњwww.besbrodepainos.comвЂќ and вЂњwww.piano-uk.comвЂќ.
Respondent acquired the disputed domain name in October 2006 during the вЂњsunriseвЂќ period for вЂњ.mobiвЂќ domain names, but has never used it for any purpose. When the Panel tried to access the disputed domain name he was automatically diverted to вЂњwww.perfora.netвЂќ and received the message вЂњThis domain name has been registered for one of our customers!вЂќ
ComplainantвЂ™s counsel sent a letter to Respondent on June 24, 2008, requesting transfer of the disputed domain name. Respondent replied on July 15, 2008, claiming entitlement to the disputed domain name but expressing a willingness to sell it if given a вЂњreasonable offerвЂќ
5. PartiesвЂ™ Contentions
Complainant contends as follows:
The disputed domain name has as its principal feature the word вЂњBechsteinвЂќ, which either by itself or with the initial вЂњCвЂќ is a trademark registered by Complainant in many countries for musical instruments, in particular pianos. The disputed domain name is thus confusingly similar to ComplainantвЂ™s mark.
Complainant has used its marks for pianos for over a century and has registered marks incorporating the word вЂњBechsteinвЂќ for over 50 years. The marks are famous all over the world among musicians. Complainant has not licensed Respondent to use its marks; Respondent uses the disputed domain name in connection with sale of pianos, including RespondentвЂ™s. As a piano dealer Respondent had knowledge of Complainant and its marks; Respondent has not been commonly known by the disputed domain name; and RespondentвЂ™s use of the disputed domain name is clearly commercial. Respondent thus cannot meet any of the defenses listed in paragraph 4(c) of the Policy.
RespondentвЂ™s request for a вЂњreasonable offerвЂќ likely meant that he sought more than his out-of-pocket costs related to acquiring the disputed domain name. Respondent, a piano dealer, registered and had used the disputed domain name intentionally to attract Internet users to its own website by creating confusion with ComplainantвЂ™s marks, misleadingly suggesting endorsement by Complainant of RespondentвЂ™s website and business.
Respondent contends as follows:
Respondent does not dispute that the disputed domain name is confusingly similar to ComplainantвЂ™s marks, but notes that Complainant had the opportunity to acquire the disputed domain name during the вЂњ.mobiвЂќ sunrise period in June 2006 but chose not to do so, and that many other companies have domain names that contain the name вЂњBechsteinвЂќ. Respondent suggests that he is being unfairly targeted.
Respondent has legitimate interests in the disputed domain name. He has owned a piano business for more than 25 years, and today holds probably the largest stock of Bechstein pianos available for sale in the United Kingdom. From the early days of the Internet, Respondent has made use of that medium for business success, selling pianos and marketing its business through a variety of domain names. Respondent has simply been more astute and more focused than Complainant in developing Internet marketing strategies. Answering a comment in the Complaint to the contrary, Respondent states that he sells only leading piano brands, in particular Bechstein and Steinway. Respondent is an agent for various piano manufacturers, including Steinway.
Respondent did not register the disputed domain name intentionally to misdirect Internet users away from ComplainantвЂ™s website. Respondent has never claimed to be Complainant, stating openly that he is a вЂњLeeds-based piano dealer.вЂќ Respondent has included links to ComplainantвЂ™s principal website for internet users who would like to find out about that CompanyвЂ™s history and piano range.
RespondentвЂ™s soliciting вЂњa reasonable offerвЂќ for sale of the disputed domain name does not evidence bad faith; his intent was only to recover his costs relating to the disputed domain name.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed 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 disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar.
The only difference between the disputed domain name and ComplainantвЂ™s registered trademarks is the addition of the generic top level domain .mobi. For Policy purposes it is thus identical to ComplainantвЂ™s marks, meeting the requirements of paragraph 4(a)(i). RespondentвЂ™s observation that others hold domain names that include the word вЂњBechsteinвЂќ is irrelevant.
B. Rights or Legitimate Interests
Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy. Respondent has never been known by the disputed domain name or been licensed by Complainant to use its Bechstein marks. It is thus up to Respondent to demonstrate a right or legitimate interest.
Respondent has made no use of the disputed domain name, though he acknowledges that in future he might use it for his piano business вЂњvia the mobile market.вЂќ He has demonstrated no preparations to do so, however, and thus has not met the requirements of paragraph 4(c)(i) of the Policy. Furthermore such use for his current business would not be legitimate under paragraph 4(a)(ii) of the Policy. As in C. Bechstein Pianofortefabrik AG v. Courtney Pianos,
WIPO Case No. D2008-1529, the legitimacy of RespondentвЂ™s possible use of ComplainantвЂ™s mark turns on whether Respondent has demonstrated entitlement to that use by reason of his status as a reseller of ComplainantвЂ™s goods. Applying the same analysis as in that case, the Panel reaches the same conclusion. As in Courtney Pianos, supra, the following facts undermine any claim of legitimacy:
- Respondent is not an authorized reseller of Complainant.
- Respondent does not (on his active websites) set out the nature of his relationship to Complainant. This may be compared to a statement on that website regarding another piano manufacturer with which Respondent claims a вЂњpartnershipвЂќ or вЂњagencyвЂќ arrangement.
- Respondent does not sell Bechstein pianos exclusively; indeed it has an authorized relationship with one of ComplainantвЂ™s competitors.
Neither RespondentвЂ™s compliance with the вЂњ.mobiвЂќ sunrise procedures nor ComplainantвЂ™s failure to apply for <bechstein.mobi>, in and of itself, confers upon Respondent a right to use ComplainantвЂ™s mark in that domain name for a business that competes with ComplainantвЂ™s. See Mansueto Ventures, LLC v. Jonathan Witte,
WIPO Case No. D2006-1479. There is no evidence that Complainant or anyone else challenged RespondentвЂ™s registration during the sunrise period, and even success in a Sunrise Challenge does not insulate a вЂњ.mobiвЂќ domain name from a subsequent attack under the Policy.
It follows from the foregoing that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
While the words bad faith connote a state of mind and a mean-spirited one at that, in a Policy proceeding a panel will, if possible, make its determination under paragraph 4(a)(iii) based upon the objective evidence, measured against the examples of bad faith written in paragraph 4(b) of the Policy and precedent from other Policy proceedings. Neither a pure heart nor an honestly held but mistaken belief in entitlement to a domain name will excuse conduct contrary to Policy norms.
On the record in this case RespondentвЂ™s request for an offer to purchase the disputed domain name does not demonstrate bad faith. There is no evidence to support the surmise of ComplainantвЂ™s counsel that Respondent intended to profit from any sale, and Respondent has expressly denied any intention to profit from the sale.
The Response and the content of RespondentвЂ™s websites do indicate beyond any doubt that Respondent was well aware of ComplainantвЂ™s marks when he registered the disputed domain name. As a reseller of Bechstein pianos, Respondent can hardly claim otherwise. Respondent has shown no authority from Complainant to use that mark, and as stated in the preceding section such authority may not be implied on the facts of this case. His registration of the disputed domain name was thus made in bad faith for purposes of the Policy. Use in bad faith is similarly shown by RespondentвЂ™s acknowledged intention to use the disputed domain name for a business competitive with ComplainantвЂ™s. As in Courtney Pianos, supra, such use would вЂњintentionally attempt  to attract, for commercial gain, Internet users to [RespondentвЂ™s] web site or other on-line location, by creating a likelihood of confusion with the complainantвЂ™s mark as to the source, sponsorship, affiliation, or endorsement of [RespondentвЂ™s] web site or location or of a product or service on [RespondentвЂ™s] web site or location.вЂќ Policy, paragraph 4(b)(iv). Alternatively, two years of non-use qualifies as use in bad faith under the вЂњwarehousingвЂќ doctrine of Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003.
The Panel notes that nothing in this decision casts any adverse aspersions on the reputation, nature, or bona fides of RespondentвЂ™s business, which from RespondentвЂ™s websites appear to be substantial and of high quality. Nor does the Panel question RespondentвЂ™s right to sell Bechstein pianos. All that is at issue here is his entitlement to use ComplainantвЂ™s mark in a domain name that he acknowledges may be used for that business. Following well-settled Policy precedent the Panel concludes that he is not.
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 <bechstein.mobi> be transferred to Complainant.
Richard G. Lyon
Dated: December 4, 2008