REWE-Zentral AG v. Fahmi Banafa

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

REWE-Zentral

AG v. Fahmi Banafa

Case No.

D2001-0605

1. The Parties

The Complainant is REWE-Zentral

AG, a company organized under the laws of Germany, with its principal place

of business at Domstraße 20, 50668 Cologne, Germany.

The

Respondent is Mr. Fahmi Banafa, an individual acting under the

name banafaco, with address at 2125 S. Espina Street, Apartment 20, Las

Cruces, New Mexico 88001, USA.

2. The Domain Name and

Registrar

The domain name at issue

is <rewe.com> (the "domain name"). The Registrar is Network

Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, USA

("NSI").

3. Procedural History

The Complaint was filed

with the WIPO Arbitration and Mediation Center (the "Center") by

hardcopy on April 27, 2001 and by email on May 4, 2001. The Center acknowledged

that it had received the Complaint on April 30, 2001.

On May 1, 2001, the Center

sent to the Registrar a request for verification of registration data. On May

4, 2001, the Registrar confirmed: 1) that <rewe.com> was registered with

the Registrar; 2) that the current registrant of <rewe.com> is Bonafaco,

2125 S. Espina ST.#20, Las Cruces, NM 88001, USA; 3) that the Administrative

and Billing Contact are: Banafa, Fahmi (FB3072), banafaco, 2125 S. Espina Apt

#20, Las Cruces, NM 88001, USA, email: banafa@hotmail.com, [telephone number:]

[+1] 505 521 2669; and that the Technical Contact is: Support, Technical, Affinity

Internet, Inc., 101 Continental Boulevard, 3rd Floor, El Segundo,

CA 90245, USA, email: contact@ahnet.net, [telephone number:] [+1] 310 524 3000,

[fax number:] [+1] 310 388 1335; 4) that the NSI Service Agreement Version 5

is in effect; and 5) that the domain name is currently active.

On May 8, 2001, the Center

printed out the homepage of Respondent’s website at <rewe.com>.

The Center forwarded the

Complaint to the Respondent with copies to ICANN and to the Registrar by email,

by fax and by post/courier on May 8, 2001. The Center formally notified the

Respondent that the Complaint satisfied the formal requirements of the ICANN

Uniform Domain Name Dispute Resolution Policy (the "Policy"), the

Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules")

and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(the "Supplemental Rules"); that payment of the required sum had been

made by the Complainant; and that an administrative proceeding had been commenced

against the Respondent. A deadline of May 27, 2001 was fixed for the Response.

No Response was submitted.

Accordingly, the Center issued a Notification of Respondent Default to both

parties on May 28, 2001.

On June 13, 2001, the Center

informed the Parties that due to a scheduling conflict with respect to WIPO

arbitrationsarbitration, the Panelist appointed on June 7, 2001 would have to

reject the appointment, and that the Center would appoint a new Panelist.

On June 20, 2001, the Center

notified the Parties that an Administrative Panel composed of a single member,

Dr. Kamen Troller, had been appointed and that the Panelist had duly submitted

a Statement of Acceptance and Declaration of Impartiality and Independence to

the Center. Absent exceptional circumstances, the Panelist was required to forward

its decision to the Center in accordance with Paragraph 15 of the Rules by July

3, 2001.

The Panel examined all

notifications of the Center, and the Complaint, and finds that they comply with

the formal requirements of the Rules and Supplemental Rules, and that the Administrative

Panel was properly constituted.

4. Factual Background

A. The Complainant

The Complainant, REWE-Zentral

AG, is a leading European retail company with its registered office in Germany.

The Complainant has more than eleven thousand stores and supermarkets throughout

Europe. The Complainant is in particular present in Germany, Spain, Italy, France,

Hungary, the Czech Republic, Poland and Austria. In addition to REWE stores,

Complainant’s retail group owns HL markets, MINIMAL markets, BILLA markets (in

Austria), TOOM markets (Do-It-Yourself stores), PROMARKT (home entertainment

stores), IDEA and SCONTI markets (drugstores), as well as PENNYMARKT and MONDO

markets (discount stores). Further, the Complainant is active in the travel

industry under the trademarks ATLAS-Reisen and ITS. In the year 2000, the Complainant

employed about 179,000 people throughout Europe and achieved a turnover of more

than 73 billion DM (see Complainant’s website at www.rewe.de).

Complainant owns the following

registrations for the trademark "REWE" (Complainant’s Exhibits 3-6)

(the "Trademark(s)"):

German verbal trademark

registration No. 39532935;

German verbal and figurative

trademark registration No. 1012671;

German verbal and

figurative trademark registration No. 1098529;

German verbal and figurative

trademark registration No. 1133357;

International verbal

trademark registration No. 677129 in, amongst other countries, Austria, the

Benelux countries, Switzerland, China, the Czech Republic, Spain, France,

Poland, Denmark and Great Britain; and

Community verbal

trademark registration No. 41632.

The Complainant

also states that it has international protection for the Trademark under registration

Nos. 557354 and 557355, but did not provide evidence thereof.

The Complainant operates

websites at www.rewe.de and www.rewe.net.

B. The Respondent

The Respondent has registered

the domain name <rewe.com> on September 17, 1999. Currently, when accessing

the website under the domain name, the Internet user is informed that the site

is under construction. No contents are available.

Respondent has also registered

numerous other domain names: <1-800number.org>, <1-800number.net>,

<azzawiah.com>, <dakryon.com>, <fly-aa.com>, <flyea.com>,

<fly-ea.com>, <go-ebusinessman.com>, <goelf.net>, <go-elf.com>,

<go-etravel.com>, <go-klm.com>, <golufthansa.com>, <go-lufthansa.com>,

<kooltravel.com, <own-domain.com>, <own-domains.com>, <sabena.net>,

<tele-business.com>, <teletickets.com>, <tesa-bandfix.com>

and <we-domain.com> (Complainant’s Exhibit 7).

C. Prior correspondence

between the parties

On September

4, 2000, the Complainant contacted the Respondent by email and asked him whether

he was willing to transfer the domain name. On September 6, 2000, the Respondent

answered to the Complainant:

"(…)

I am willing to sell REWE.com for best offer. I got emails from Germany and

France offering to purchase this domain but I turned them off. If you are really

interested please let me know how much you are willing to buy for."

On September

7, 2000, the Complainant asked how much Respondent expected to be paid. On September

11, 2000, Respondent answered:

"(…)

I am looking for US $ 20,000. If you are interested pls let me know. Thanks."

On September

11, 2000, the Complainant informed the Respondent that he was not willing to

pay this amount (Complainant’s Exhibit 9).

5. Parties’ Contentions

A. The Complainant

The Complainant contends

that each of the three elements specified in Paragraph 4(a) of the Policy are

applicable to the disputed domain name. More precisely, the Complainant submits

that:

5.1 the domain name <rewe.com>

is identical to the Complainant’s company name and the Trademarks. The Complainant

contends that its Trademarks have to be regarded as well-known marks, taking

into account the Complainant’s prominence in Europe. The Complainant also states

that it enjoys rights in the name "REWE" through use of this term

as a company name;

5.2 the Respondent has

no rights or legitimate interests in the domain name, because:

- the Respondent does

not use the term "REWE" in any respect that would justify the registration

of the domain name. There is no product or service offered on Respondent's homepage

under this name;

- Respondent's company/family

name (banafaco/banafa) has nothing to do with the term "REWE";

- "REWE"

is not a common word in the English language that would make any sense if used

as a domain name. "REWE" is not a descriptive or generic term that

can be freely used by anybody and the registration of which can be explained

by the Respondent. The Respondent has not been commonly known by the domain

name (or simply the name "REWE"), nor is he making a legitimate non-commercial

or fair use of the domain name;

5.3 the domain name was

registered and is being used in bad faith, because the Respondent has acquired

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

the domain name registration to the Complainant for a valuable consideration

in excess of the out-of-pocket costs he might have had directly related to the

domain name. The Complainant argues that the Respondent has a history of cybersquatting;

that from the domain registrations owned by him, it becomes obvious that he

has registered numerous domain names that contain the names of well-known companies;

that the Respondent obviously has registered these domain names in the expectation

of being able to sell the domain names to the rightful owners at a certain point

in time in the future; and that in that respect, the domain name <rewe.com>

fits well into the picture. The Complainant also states that the e-mail correspondence

between the Parties and the fact that no contents can be reached on the Respondent’s

website show that the only reason Respondent had when registering the domain

name was to solicit a substantial payment from the rightful owner. The Complainant

refers to the e-mail correspondence, in which the Respondent informs the Complainant

that he is expecting an amount of US $ 20,000.

The Complainant requests

the Administrative Panel to issue a decision that the domain name be transferred

to the Complainant.

B. The Respondent

No Response has been submitted.

6. Discussion and Findings

Referring to paragraph

14 of the Rules, in the absence of a response to the Complainants’ allegations,

the Panel may consider those claims in light of the unchallenged evidence submitted

by the Complainant. While the Panel cannot decide in the Complainants’ favor

based solely on the Respondent’s default, it is entitled to draw, and in this

case does draw, such inferences as it deems appropriate and just under the circumstances

based on the Respondent’s failure to respond.

Pursuant to Paragraph 4(a)

of the Policy, the Complainant must prove that each of the following

three elements are present:

(i) the Respondent’s

domain name 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 in respect of the domain name; and

(iii) the domain name

has been registered and is being used in bad faith.

(a) Identical or confusingly

similar to a trademark

The only difference between

the domain name and the Trademark is that the domain name has ".com"

at the end. The addition of the designation ".com" is non-distinctive because

it is a gTLD required for registration of a domain name. 1

The Panel concludes that

the Complainant satisfies the requirements of paragraph 4(a)(i) of the Policy.

(b) Rights or legitimate

interests

Paragraph 4(c) of the Policy

defines the circumstances required for the Respondent to demonstrate "rights

to and a legitimate interest in the domain name". The Respondent is only

required to demonstrate any one of the following circumstances (in particular

and without limitation) to prove its rights to or legitimate interest in the

domain name:

(i) before any notice

to you of the dispute, your use of, 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; or

(ii) you (as an individual,

business, or other organization) have been commonly known by the domain name,

even if you have acquired no trademark or service mark rights; or

(iii) you are making

a legitimate non-commercial or fair use of the domain name, without intent for

commercial gain to misleadingly divert consumers or to tarnish the trademark

or service mark at issue.

There is no evidence in

the record to support a finding of a legitimate right or interest in the domain

name on behalf of the Respondent. The Respondent does not appear to have established

a website connected to the domain name, does not appear to have made demonstrable

preparations to use the website, does not appear to be making a bona fide

offering of goods or services or a legitimate non-commercial use of the domain

name, and does not appear to be commonly known by the name "REWE".

There is no evidence in the record of the applicability of any of the criteria

in paragraph 4(c) of the Policy.

Under these circumstances,

and taking into account the Respondent’s failure to respond and to justify the

use of the term "REWE" in his domain name, the Panel finds that the

Respondent has no rights or legitimate interests in the domain name.

(c) Bad faith

Paragraph 4(a)(iii) of

the Policy requires the Complainant to prove use in bad faith as well as registration

in bad faith.

Paragraph 4(b) of the Policy

sets forth a non-exclusive list of circumstances which shall be evidence that

the registration and use of a domain name is 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 trademark 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; or

(ii) you have registered

the domain name in order to prevent the owner of the trademark or service mark

from reflecting the mark in a corresponding domain name, provided that you have

engaged in a pattern of such conduct; or

(iii) you have registered

the domain name primarily for the purpose of disrupting the business of a competitor;

or

(iv) by using the domain

name, you have intentionally attempted to attract, for commercial gain, Internet

users to your 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 your website or location or of a product or service on your

website or location.

The Complainant relies

on the first element, asserting that the Respondent acted in bad faith, because

the Respondent has acquired the domain name primarily for the purpose of selling

or otherwise transferring the domain name registration to Complainant for a

valuable consideration in excess of the out-of-pocket costs he might have had

directly related to the domain name.

By not submitting a response,

the Respondent has failed to address these allegations.

The Panel finds that there

is no doubt that the Respondent has registered the domain name for the purpose

of selling the registration to the Complainant, for valuable consideration in

excess of his out-of-pocket costs directly related to the domain name. This

is demonstrated by the Respondent’s correspondence to the Complainant (emails

of September 6, 2000 and September 11, 2001, Complainant’s Exhibit 9). In addition,

the Panel has searched on the Internet and found that the domain name is being

offered for sale at GreatDomains.com for the price of US$ 10,000.

The Panel finds that this

is a clear case of cybersquatting. The Respondent has registered a large number

of other domain names featuring famous company names or trademarks (Complainant’s

Exhibit 7). The Panel has found that none of these domain names leads to a website,

and that nearly all of them are being offered for sale at GreatDomains.com for

a price varying between US$ 50 and US$ 50,000. These circumstances demonstrate

that the Respondent is a cybersquatter, and has engaged in abusive domain name

registration.

The Panel concludes that

the Complainant has satisfied the burden of proof with respect to bad faith

registration and use of the domain name.

7. Decision

The Panel decides that:

1) the disputed domain

name is identical to the trademark "REWE" in which the Complainant

has rights;

2) the Respondent has

no rights or legitimate interest in respect of the domain name; and

3) the domain name has

been registered and is being used in bad faith by the Respondent.

Pursuant to Paragraphs

4(i) of the Policy and 15 of the Rules, the Panel requires that the Registrar,

Network Solutions, Inc., transfer the domain name <rewe.com> to the Complainant.

Kamen Troller

Sole Panelist

Dated: July

3, 2001

Footnotes:

1.

See: Gateway, Inc. v. James Cadieux (D2000-0198); The Journal Newspapers,

Inc. v. DomainForSale 980dollars (FA95395) and Konkinklijke Philips Electronics

NV v. Ramazan Goktas (D2000-1638).