HT Troplast AG v. Julian Gorniok

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

HT Troplast AG vs. Julian Gorniok

Case No. D2001-0926

1. The Parties

Complainant is HT Troplast

AG, Mülheimer Strasse 26, D-53840 Troisdorf, Germany. Its authorised representative

in this case is Tobias H. Strömer, Strömer Rechtsanwälte, Duisburger

Strasse 5, 40477 Düsseldorf, Germany.

Respondent is Julian Gorniok,

3 Park Place Ealing, London W5 5NQ, United Kingdom. Respondent's telephone number

is +44(181)567 3911 and Respondent's e-mail addresses are <postmaster@trocal.com>

and <julian.e.gorniok@uk.pwglobal.com>.

2. Domain Name and

Registrar

The domain name at issue

is <trocal.com>. The Registrar is Melbourne IT, Ltd.D/B/A Internet Names

Worldwide, Australia.

3. Procedural History

The World Intellectual

Property Organization Arbitration and Mediation Center (the Center) received

a Complaint in electronic form on July 19, 2001, and in hardcopy form the following

day. On July 23, 2001, the Center acknowledged receipt of the Complaint. The

same day the Center issued a Request for Registrar Verification and received

a Verification Response on July 24, 2001.

According to that Response:

- A copy of the Complaint

was sent to the Registrar by Complainant,

- The domain name at

issue was registered with that Registrar,

- Respondent was the

current Registrant,

- The Uniform Dispute

Resolution Policy applies to the domain name,

- The current status

of the name was active,

- The creation date

and the registration date for the domain name at issue was 2000-02-14 and the

expiry date was 2002-02-14,

- "Organisation

name" was Julian Gorniok with the mailing address indicated above,

- The Administrative

Contact and the Technical Contact was Julian Gorniok with the above-mentioned

mailing address and with e-mail address as also indicated above.

On July 31, 2001, the Center

issued a Notification of Commencement of Administrative Proceeding which was

transmitted to Respondent by post/courier (with attachments) and by e-mail (without

attachments). On August 13, 2001, the Center received the returned Notification

from Respondent's postal address.

The Center issued a Notification

of Respondent Default on August 23, 2001, which was communicated to the Parties

by e-mail.

The Center then invited

Mr. Henry Olsson to serve as Sole Panelist in the case and received on August

28, 2001, Mr. Olsson's Statement of Acceptance and Declaration of Independence

and Impartiality. The Center appointed Mr Olsson as Sole Panelist on August

28, 2001, and issued a Notification of Appointment of Administrative Panel and

Projected Decision Date which was communicated to the Parties by e-mail. The

Projected Decision Date was September 11, 2001.

The Sole Panelist considers

that the Administrative Panel was properly constituted and appointed in accordance

with the Rules and the WIPO Supplemental Rules.

According to the Complaint,

a copy of it together with the cover sheet was sent to Respondent on July 18,

2001, by postal or courier service with postage prepaid and return receipt requested.

Complainant has not indicated that that communication was returned. The e-mail

communication of the Notification of Complaint sent to <julian.e.gorniok@uk.pwcglobal.com>

was returned because user was not listed in the public Name and Address Book.

The e-mail with that Notification sent to the other e-mail seems to have gone

through. As indicated above, the Notification of Complaint sent by post/courier

was returned to the Center. As regards the Notification of Respondent Default,

that was sent to Respondent's above-mentioned e-mail address it seems not to

have been delivered, while nothing in the file indicates that the e-mail Notification

of Appointment of Administrative Panel did not arrive to Respondent.

The Panel notes that the

communication of the Complaint by Complainant to Respondent seems to have worked.

The Panel furthermore notes that the Center has done everything possible to

communicate the relevant Notifications to Respondent by mail/courier service

and by e-mail. On the basis of these considerations, the Panel concludes that

Respondent has been made duly aware of the Complaint and the other relevant

steps in this case and that there is, from that point of view, no obstacle to

considering the case.

4. Factual Background

Complainant, HT Troplast

AG, is a public limited company established under the laws of the Federal Republic

of Germany. It has its principal place of business in Troisdorf, in Germany,

and is registered in the Companies' Register (District Court Siegburg) HRB 4242.

It is a subsidiary of the German Rütgerswerke AG, which is a globally operating

plastics processing company with a number of affiliate companies in the world,

including in the United Kingdom.

Nothing is known in the

case about Respondent's business activities.

Complainant agrees to submit,

only with respect to any challenge that may be made by Respondent to a decision

by the Administrative Panel to transfer or cancel the domain name that is the

subject of the Complaint, to the jurisdiction of the courts where Respondent

is located, as shown by the address given for the domain name holder in the

concerned Registrar's Whois database at the time of the submission of the Complaint

to the Center.

5. Parties' Contentions

A. Complainant

General

First, Complainant submits

that the three elements indicated in Paragraph 4.a of the Policy are at hand

in that the domain name at issue is confusingly similar to a trademark or a

service mark in which Complainant has rights, that Respondent has no rights

or legitimate interests in the domain name and that Respondent has registered

and is using the domain name in bad faith.

Identity or Confusing Similarity

Complainant submits that

it is the owner of the German trademarks "Trocal" (word mark, since

1961), "TROCAL" (word mark and design mark, since 1970) and "TROCAL"

(word mark and design mark, since 1999); those marks are registered in classes

6, 17 and 19. In addition, the three trademarks are also the subject of international

registrations under the Madrid Agreement and the Madrid Protocol, since 1998,

1973 and 1999, respectively (with renewals).

Complainant contends that

it has been using the trademarks for more than 30 years for its products. "TROCAL"

is, according to Complainant, one of the leading brands in the field of window

and door technology, and it produced the first mass-produced PVC windows in

1954, and part of Complainant's production is the TROCAL profiles. Complainant

is also the owner of a number of domain names, such as "trocal.be",

"trocal.ch", trocal.ru", trocal.at", trocal.cz", trocal.es",

trocal-profile.de" and <trocal-profiles.com>.

As Complainant plans to

use the trademark, the integration of Internet strategies plays an important

role.

Rights or Legitimate Interests

First, Complainant contends

that, as has been found in a number of other domain name cases, once a Complainant

provides a prima facie showing of the facts, the burden of proof concerning

those particular facts shifts to Respondent who has to provide concrete evidence

that it has rights or legitimate interests in the domain name.

In this context Respondent

is, according to Complainant, not a holder of any trademark "trocal"

or a similar mark, nor is this his name. There is no evidence of Respondent's

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.

Also, the domain name has never been used as an e-mail address.

In May 2000, when Complainant

took the first contact with Respondent, the website "www.trocal.com" was a mere

redirection to the address "www.domainsnet.com/regfor.htm" which page only states

that "This domain name has been registered by DomainsNet." There has

been no attempt to use that site. Respondent, in an e-mail of June 11, 2000,

mentioned that it was in the process of developing a local portal under the

name "truly local" or, in short, "trocal." There is, according

to Complainant, no obvious reason to abbreviate "truly local" to "trocal"

Respondent has not provided any documentary evidence to substantiate that assertion,

and, once Complainant has produced a prima facie showing, Respondent

would have to submit concrete evidence of at least demonstrable preparations

in order to rebut Complainant's showing. Also, has not reported what the structure

of that local portal would be like nor has it been shown which steps of realizing

it that it has taken. No business plan or possible business partners have been

indicated.

Respondent has, according

to Complainant, not been commonly known by the domain name at issue. Furthermore,

Respondent is not making any legitimate non-commercial or fair use of the domain

name, without intent for commercial gain misleadingly to divert customers or

to tarnish the trademark or service mark at issue. Until now Respondent has

not used the domain name at issue and it never claimed to use it, but its only

intention of using it is to purchase to the Complainant.

In view of these circumstances,

Complainant asserts that it has made a prima facie showing that Respondent

has no rights to, or legitimate interests in, the domain name. The burden is

now on Respondent to rebut this showing by providing concrete evidence to the

contrary.

Registration and Use in

Bad Faith

First, Complainant contends

that circumstances indicate that Respondent registered the domain name at issue

primarily for the purpose of selling, renting or otherwise transferring it to

the owner of the trademark or service mark for a valuable consideration in excess

of the domain name registrant's out-of-pocket costs directly related to the

domain name.

Generally, this contention is, according to Complainant, supported by Respondent's

failure for substantial period of time to make good faith use of the domain

name for its business. Furthermore, in the above-mentioned e-mail from Respondent

to Complainant the former stated that "(i)f the company you represent wanted

to buy 'trocal.com' then I would consider selling it". In a later mail

– also submitted in the case – Respondent suggests that further steps depend

on the price, with an indication that Respondent had bought a number of domain

names in the range between USD10,000 to 50,000 where it had been felt to be

valuable to Respondent's company. In the view of Complainant such a price exceeds

the costs for the domain name registrant's out-of-pocket costs directly related

to the domain name. Instead, in the absence of any credible evidence to the

contrary, an offer of USD70 would accurately reflect those costs. The price

suggested indicates, according to Complainant, Respondent's bad faith.

Remedies Requested.

In accordance with Paragraph

4.b.(i) of the Policy and for the reasons described, Complainant requests the

Administrative Panel to issue a decision that the domain name at issue <trocal.com>

be transferred to Complainant.

B. Respondent

Respondent has not submitted

any Response and is in Default.

6. Discussions and Findings

Paragraph 15 of the Rules

prescribes that the Panel shall decide a Complaint on the basis of the statements

made and documents submitted and in accordance with the Policy, these Rules

and any rules and principles of law that it deems applicable.

In the case of a Default

by a Party, Paragraph 14 of the Rules prescribes that if a Party in the absence

of exceptional circumstances, does not comply with a provision of, or a requirement

under, these Rules, the Panel shall draw such inferences therefrom as it considers

appropriate. In this case, Respondent has not submitted any Response and has

consequently not, despite the opportunity given, contested any of the contentions

by Complainant. The Panel will therefore have to operate and consider the case

on the basis of the factual circumstances contained, or referred to, in the

Complaint and the documents submitted to support those contentions.

As stated by the Registrar,

the Policy is applicable to the domain name registration at issue.

Paragraph 4.a of the Policy

directs that Complainant must prove each of the following:

- that the domain name

registered by Respondent is identical or confusingly similar to a trademark

or a service mark in which Complainant has rights,

- that Respondent has

no rights or legitimate interests in the domain name, and

- that the domain name

has been registered and is being used in bad faith.

In the following part of

this Decision, the Panel discusses each of those elements.

Identity or Confusing Similarity

In this respect, Complainant

has, according to Paragraph 4.a(i) of the Policy to prove that the domain name

at issue is identical or confusingly similar to a trademark or a service mark

in which Complainant has rights.

The documentation submitted

by Complainant shows that Complainant owns registrations both in Germany and

internationally of the wordmark "trocal" and the word and design mark

"TROCAL" Complainant has stated that the mark has been used for a

long time and is well-known in the field of plastics technology. The Panel accepts

these contentions.

The domain name at issue

incorporates the trademarks with the addition of ".com". In the view

of the Panel this is an insignificant distinction which does not remove the

likelihood of confusion.

On the basis of these considerations

the Panel concludes that there exists in fact a confusing similarity between

the domain name and Complainant's trademarks.

Rights or Legitimate Interests

In this respect Complainant

has, according to Paragraph 4.a(ii) of the Policy, to prove that Respondent

has no rights or legitimate interests in the domain name.

In this respect, Complainant

contends basically that Respondent is not a holder of any trademark "trocal"

or any similar mark, that the mark is not his name, that the domain name has

not been used in serious way but only redirected viewers to another domain stating

only that the domain had been registered by "DomainsNet", that Respondent's

assertion about the development of a local portal under the name "trocal"

as an abbreviation of "truly local" is a purely evasive defence, that

Respondent has not been commonly known by the domain name and that Respondent

is not making any legitimate non-commercial or fair use of the domain name without

an intent misleadingly to divert consumers or to tarnish the trademark at issue.

Complainant has submitted a copy of the website in question and of certain e-mails

from Complainant to Respondent.

Respondent has not, in

this case, commented upon the contentions by Complainant nor submitted any documentation;

Respondent has, however, in an e-mail of June, 2000, informed about the development

of the local portal.

The circumstances in the

case, and the documents provided as evidence, support Complainant's contention

about Respondent's lack of rights or legitimate interests in the domain name.

The Panel, in particular, attaches importance to the absence of any information

or documentation about Respondent's work on, or plans for, the use of the domain

name.

On the basis of these considerations

the Panel concludes that Respondent has no rights or legitimate interests in

the domain name at issue.

Registration and Use in

Bad Faith

Complainant has, according

to Paragraph 4.a.(iii) of the Policy, to prove that the domain name has been

registered and is being used in bad faith.

Complainant has in this

context referred to Respondent's failure for a substantial period of time to

make good faith use of the domain name for its business and to two e-mails in

June 2000, where Respondent suggested the possibility of a sale of the domain

name and in that context mentioned that Respondent's company had registered

a number of domain names in the range of USD10,000–50,000.

The Panel notes in relation

to the issue of bad faith the absence of indications about Respondent's work

on, or plans for, the domain name and the suggestion about the possibility of

sale of the domain name depending on the price. Even if the later of the two

e-mails did not directly propose a sale, the Panel must, in views of the circumstances,

conclude that Respondent in fact suggested such a sale and that the price mentioned

is clearly higher than out-of- pocket costs directly related to the domain name.

On the basis of these considerations

the Panel finds that Complainant has sufficiently established that the domain

name at issue was in fact registered and is being used primarily for the purpose

mentioned in Paragraph 4.b(i) of the Policy and that consequently, Complainant

has proved bad faith as prescribed under Paragraph 4.a(iii) of the Policy.

Conclusions

On the basis of these considerations

the Panel concludes that it has been established that the domain name at issue

is confusingly similar to the trademarks in which Complainant has rights, that

Respondent has no rights or legitimate interests in respect of the domain name

and that the domain name has been registered and is being used in bad faith

7. Decision

In accordance with Complainant's

request and with reference to Paragraph 4.i of the Policy the Panel requires

the domain name <trocal.com> to be transferred to Complainant.

Henry Olsson

Sole Panelist

Dated: August

31, 2001