Josef Witt GmbH & Co. KG v. Brent Langton

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alba Moda GmbH, Josef Witt GmbH & Co. KG and Sport Scheck

GmbH v. Brent Langton/Victory Productions

Cases No. D2001-0425, D2001-0426 and D2001-0427

1. The Parties

The Complainants are Alba Moda GmbH (D2001-0425), with its address at Wandsbeker

Strasse, 3-7, D-22179 Hamburg; Josef Witt GmbH & Co. KG (D2001-0426), with

its address at Wandsbeker Strasse, 3-7, D-22179 Hamburg; and Sport Scheck GmbH

(D2001-0427), with its address at Wandsbeker Strasse, 3-7, D-22179 Hamburg,

Germany.

The Respondent is Brent Langton (D2001-0425 and 0426), of Victory Productions

(D2001-0427), with its address at 615 17th Street, Huntington Beech, CA 92648,

United States of America.

2. The Domain Name and Registrar

The domain names at issue are:

<albamoda.com> (D2001-0425)

<wittweiden.com> (D2001-0426)

<sportscheck.org> (D2001-0427)

The registrar is Network Solutions Inc.

3. Procedural History

The Complaints were received by WIPO by e-mail on March 26, 2001, and in hardcopy

form on March 29 2001. WIPO has verified that the complaints satisfy the formal

requirements of the Policy, the Rules and the Supplemental Rules and that payment

was properly made. The Administrative Panel ("the Panel") is satisfied

that this is the case.

The Registrar has confirmed that <albamoda.com>, <wittweiden.com>,

<sportscheck.org> ("the domain names") were registered through

Network Solutions Inc. and that in the case of the first two of the domain names

Brent Langton of Victory Productions and in the case of <sportscheck.org>

Victory Productions is the current Registrant. For the purposes of this decision,

the Panel treats Brent Langton of Victory Productions ("the Respondent")

as the Registrant of all the domain names. The Registrar has further confirmed

that the Policy is applicable to the domain names.

On March 28, 2001, in each of the three cases the Complainants e-mailed WIPO

in the following terms:

"After having received our complaint, the Respondent contacted us and

promised to transfer the domain until Friday. Therefore, we kindly ask you not

to start the proceedings before Friday March 30, 2001".

On April 3, 2001, the Complainants notified WIPO that the transfers had not

taken place and requested WIPO to proceed with the Complaints.

On April 10, 2001, WIPO notified the Respondent of the three Complaints in

accordance with the Rules, paragraph 2(a), and informed the Respondent, inter

alia, that the last day for sending its responses to the Complainants and to

WIPO was, in each case, April 29, 2001.

On April 30, 2001, no written responses having been filed, WIPO issued Respondent

Default Notifications.

The Panel was properly constituted. The undersigned panelists submitted statements

of acceptance and declarations of impartiality and independence. No further

submissions were received by WIPO or the Panel, as a consequence of which the

date scheduled for the issuance of the Panel’s decision is June 11, 2001.

In each Complaint the Complainants point out that they are all subsidiaries

of the same parent company, Otto Versand, and that the Respondent is the same,

or effectively the same, Mr. Brent Langton being the President of Victory Productions.

The Complainants request that the Complaints be heard by the same Panel and

be amalgamated into one proceeding. As is apparent from the heading, WIPO has

appointed the same Panel for each Complaint and the Panel has agreed to treat

the three Complaints as one.

4. Factual Background

The Complainants are Hamburg based mail order companies being subsidiaries

of Otto Versand. Between them, they are the proprietors of a variety of trade

mark registrations for the marks ALBA MODA, WITT WEIDEN and SPORT-SCHECK.

The trade mark registrations pre-date the dates of registration of the domain

names by the Respondent, the domain names having been registered in the course

of 1999.

5. Parties’ Contentions

A. Complainants

The Complainants’ contentions are as follows:

The domain names are identical or confusingly similar to the registered trade

marks of the Complainants. The Respondent worked for five years for Otto Versand,

the Complainants’ parent company, until that business relationship was terminated

by the Complainants and/or Otto Versand.

Thereafter, the Respondent registered the domain names without the authority

of the Complainants.

Having learnt of the registrations of the domain names, the Complainants contacted

the Respondent. Initially, he agreed to transfer the domain names to the Complainants,

but subsequently said that he would only do so if the business relationship

between him and Otto Versand and/or its subsidiaries was re-established.

The Complainants make other allegations in respect of the Respondent and his

motivation for registering the domain names, but for present purposes the above

is sufficient.

B. Respondent

The Respondent has not responded.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainants must prove that:

(i) The domain names are identical or confusingly similar to trade marks or

service marks in which the Complainants have rights.

(ii) The Respondent has no rights or legitimate interests in respect of any

of the domain names.

(iii) The domain names have been registered and are being used in bad faith.

Identical or Confusing Similarity

To succeed under this head, the Complainants first have to prove that they

have rights in relevant trade marks or service marks. They then have to prove

that the domain names are identical or confusingly similar to those trade marks

or service marks.

Exhibited to the Complaints are copy trade mark registration certificates confirming

that the Complainants are between them the proprietors of the trade marks ALBA

MODA, WITT WEIDEN and SPORT-SCHECK.

The domain names are in substance those trade marks with the addition of the

generic domain suffix.

The Panel finds that the domain names are identical or confusingly similar

to trade marks in which the Complainants have rights.

Rights or Legitimate Interests of the Respondent

The Respondent not having responded to the Complaints and the Panel having

no reason to doubt what is set out in the Complaints, the Panel accepts that

when the Respondent registered the domain names, the Respondent knew perfectly

well that the names were trade marks of the Complainants.

Accordingly, the Complainants have made out a prima facie case under this head

that the Respondent has no rights or legitimate interest in respect of the domain

names.

Paragraph 4(c) sets out a non-exhaustive list of circumstances which, if found

by the Panel to be present, demonstrate the Respondent’s rights or legitimate

interest in respect of the domain names. The Respondent has produced no evidence

of any kind to demonstrate the presence of any of those circumstances. The Respondent

has not responded.

The Panel has nothing before it to suggest why the Respondent could be said

to have any rights or legitimate interests in respect of the domain names.

The Panel holds that the Respondent has no rights or legitimate interests in

respect of any of the domain names.

Bad Faith

A non-exhaustive list of what constitutes bad faith registration and use is

set out in paragraph 4(b) of the Policy. For present purposes, it is not necessary

to read beyond paragraph 4(b)(i) which is in the following terms:-

"Evidence of registration and use in bad faith. For the purposes of paragraph

4(a)(iii) the following circumstances, in particular, but without limitation,

if found by the Panel to be present, shall be evidence of the registration and

use of a domain name in bad faith:-

(i) circumstances indicating that you have registered or you have acquired

the domain name primarily for the purpose of selling, renting or otherwise transferring

the domain name registration to the complainant who is the owner of the trade

mark or service mark or to a competitor of that complainant for valuable consideration

in excess of your documented out-of-pocket costs directly related to the domain

name…"

In the absence of any explanation from the Respondent, the Panel accepts as

fact what is said in the Complaint, namely that the Respondent registered the

domain names knowing that they were the trade marks of the Complainants and

as a bargaining tool for re-establishing the business relationships between

the Complainants and the Respondent.

Clearly, the objective was to sell the domain names to the Complainants for

a valuable consideration well in excess of the Respondent’s out-of-pocket expenses.

The Panel holds that the domain names and each of them were registered in bad

faith and are being used in bad faith.

7. Decision

In light of the foregoing findings, namely that the domain names are identical

or confusingly similar to trade marks in which the Complainants have rights

and that the Respondent has no rights or legitimate interests in respect of

the domain names and that the domain names and each of them were registered

in bad faith and are being used in bad faith, the Panel directs that the domain

names <albamoda.com>, <wittweiden.com> and <sportscheck.org>

be transferred to the Complainants.

Tony Willoughby

Presiding Panelist

Carol Anne Been

Panelist

Torsten Bettinger

Panelist

Dated: June 1, 2001

Other cases for this domain

• Sport-Scheck GmbH v. Victory Productions — D2001-0427 · sportscheck.org, albamoda.com, wittweiden.com · Transfer · 01 Jun 2001
• Alba Moda GmbH v. Brent Langton — D2001-0425 · albamoda.com, wittweiden.com, sportscheck.org · Transfer · 01 Jun 2001