Buendnis 90 / Die Gruenen v. RJG Engineering Inc.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Buendnis

90 / Die Gruenen v. RJG Engineering Inc.

Case No.

D2001-1111

1. The Parties

The Complainant is Buendnis

90 / Die Gruenen, of Platz vor dem Neuen Tor 1, Berlin, Germany, represented

by Rechtsanwalt Johannes Zindel of Jones, Day, Reavis & Pogue of Frankfurt,

Germany.

The Respondent is RJG Engineering

Inc., of PO-Box 6426, Lincoln, Nebraska, United States of America, represented

by Mr. Gerhard Lauck, President of the Respondent.

2. The Domain Name and

Registrar

The disputed domain name

is <diegruenen.net>.

The Registrar is Signature

Domains, Inc., of Miami, Florida, United States of America.

3. Procedural History

This is an administrative

proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the

Policy") adopted by the Internet Corporation for Assigned Names and Numbers

("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute

Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules")

and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

("the Supplemental Rules") of the WIPO Arbitration and Mediation Center

("the Center").

The Complaint was received

by the Center by email on September 10, 2001, and in hard copy on October 3,

2001. The Complaint was acknowledged on September 13, 2001. On September

17, 2001, registration details were sought from the Registrar. On September

21, 2001, the Registrar confirmed that the disputed domain name is registered

in the name of the Respondent at the address mentioned above and that the Policy

applies to the disputed domain name. On September 24, 2001, the Center issued

a Complaint Deficiency Notification relating to payment of the required fees

and lodgment of the required copies of the Complaint.

These deficiencies were

remedied by Complainant and on October 3, 2001, the Center satisfied itself

that the Complaint complied with all formal requirements (including payment

of the prescribed fee) and that day formally dispatched copies of the Complaint

by post/courier (with enclosures) to the Respondent at the address as recorded

with the Registrar and by facsimile and email (without attachments). The Center

included with that material a letter dated October 3, 2001, containing notification

of the commencement of this administrative proceeding, with copies (of the Complaint

without attachments) to the Complainant, the Registrar and ICANN.

The last day specified

by the Center for a Response was October 23, 2001. On October 5, 2001,

the Center received a single page facsimile message from the Respondent dated

October 4, 2001, and on October 8, 2001, the Center asked whether Respondent

intended to make any further submission. On October 25, 2001, nothing further

having been received from the Respondent, the Center notified the parties of

the Respondent’s default. On October 30, 2001, the Center received a facsimile

dated October 29, 2001, from Respondent confirming that its letter of October

4, 2001, was its Response.

On October 31, 2001, the

Center received an unsolicited reply from Complainant’s counsel to Respondent’s

letter of October 4, 2001. That reply does not raise evidence not reasonably

available to Complainant at the time of its initial submission, nor arguments

by Respondent that Complainant could not reasonably have anticipated. For the

reasons given in Goldline International, Inc. v. Gold Line (WIPO

Case No. D2000-1151), this Panel does not admit the reply and has had no

regard to it.

The Complainant elected

to have the case decided by a single-member Administrative Panel ("the

Panel") and on November 1, 2001, the Center notified the parties of the

appointment of Alan L. Limbury as panelist, Mr. Limbury having submitted a Statement

of Acceptance and Declaration of Impartiality and Independence. That day the

Center transmitted the case file to the Panel and notified the parties of the

projected decision date of November 15, 2001.

The Panel is satisfied

that the Complaint was filed in accordance with the requirements of the Rules

and Supplemental Rules; payment was properly made; the Panel agrees with the

Center’s assessment concerning the Complaint’s compliance with the formal requirements;

the Center discharged its responsibility under paragraph 2(a) of the Rules to

employ reasonably available means calculated to achieve actual notice to the

Respondent of the Complaint; the informal Response was filed within the time

specified in the Rules and the Panel was properly constituted.

The language of the proceedings

was English.

4. Factual Background

"Die Gruenen" is the name

of a political party in Germany, founded in January 1980. This party is a member

of the current government of Chancellor Gerhard Schroeder.

According to the Registrar,

the disputed domain name was registered with it on August 3, 2001.

5. Parties’ Contentions

A. Complainant

DIE GRUENEN is a registered

trademark of Complainant and protected for publishing all kinds of print products,

namely brochures, stickers, information materials, posters and books.

The disputed domain name

has been registered and is being used in bad faith. The disputed domain name

has been offered for sale (Complaint Ex. 4). Furthermore the disputed domain

name is being used intentionally for creating confusion with Complainant's trademark.

Respondent has no rights

to register or use the domain name.

Complainant requests the

Panel to direct that <diegruenen.net> be cancelled.

B. The Respondent

DIEGRUENEN is

a registered trade name for Respondent in the State of Nebraska.

It is not a registered

trademark of Complainant in the United States of America. Even if Complainant

has a right to that name in Germany, it does not have an exclusive right to

it in the USA.

Complainant’s name is "Buendnis

90 / Die Gruenen", not simply "diegruenen".

"Diegruenen"

means, literally, "the Greens". "Greens" is a common term in Europe for anybody

supporting environmental issues. It is not limited to members of one political

party in one country. For example: could be "Communist Party USA" be given exclusive

rights to the domain name "thereds" even without a US trademark?

There is already a website

with the domain name <diegruenen.com> that does not appear to have any

connection to Complainant. I am unaware of any action against that website.

Our own website at the disputed domain name promotes Internet ecology and free

speech. It does not mention Complainant at all or pretend to have any connection

to it.

As a free speech activist

and former political prisoner of the German government currently co-ruled by

Complainant, I suspect this action is politically motivated. The German government

claims jurisdiction over American websites on the basis they are "accessible"

in Germany. It has threatened even mainstream US publishers such as Amazon,

Barnes & Noble etc.!

6. Discussion and Findings

Under paragraph 15(a) of

the Rules, the Panel must decide this Complaint on the basis of the statements

and documents submitted and in accordance with the Policy, the Rules and any

rules and principles of law that it deems applicable. This has been a difficult

case because the submissions of both parties are sparse, to say the least, as

is the evidence that has been provided.

To qualify for cancellation

or transfer, a Complainant must prove each element of paragraph 4(a) of the

Policy, namely:

(i) the disputed 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 disputed domain

name has been registered and is being used in bad faith.

To obtain relief under

the Policy it is not necessary to establish that Complainant has trademark rights

in the country in which the domain name is registered or in which the registrant

resides.

Identity or confusing similarity

Essential or virtual identity

is sufficient for the purposes of the Policy: see The Stanley Works and Stanley

Logistics, Inc v. Camp Creek. Co., Inc. (WIPO

Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor

Corporation v. S&S Enterprises Ltd. (WIPO

Case No. D2000-0802); Nokia Corporation v. Nokiagirls.com a.k.a IBCC

(WIPO

Case No. D2000-0102) and Blue Sky Software Corp. v. Digital Sierra Inc.

(WIPO

Case No. D2000-0165).

Page 2 of Ex. 4 to the

Complaint is a copy of a record of the German Patent Office depicting the trademark

DIE GRUENEN, Registered No. 1126592 dated 22.08.88. The Panel accepts that Complainant

is the proprietor of the registered trademark DIE GRUENEN in Germany.

The Panel finds the disputed

domain name is identical to Complainant’s registered trademark DIE GRUENEN.

The Complainant has established

this element.

Illegitimacy

The Panel infers that the

Complainant has not authorized Respondent to use its trademark nor to register

the disputed domain name. Respondent’s name is RJG Engineering Inc. There is

no evidence Respondent is known by the disputed domain name.

These circumstances are

sufficient to constitute a prima facie showing by Complainant of absence

of rights or legitimate interest in the disputed domain name on the part of

Respondent. The evidentiary burden therefore shifts to Respondent to show by

concrete evidence that it does have rights or legitimate interests in that name:

Do The Hustle, LLC v. Tropic Web (WIPO

Case No. D2000-0624) and the cases there cited.

Respondent has not substantiated

its asserted registration of DIE GRUENEN as a trade name in Nebraska. In any

event, all the circumstances would need to be considered before a conclusion

could be drawn that any such registration should be taken into account in finding

Respondent has a legitimate interest in the disputed domain name. There is no

evidence as to the timing or the circumstances of that asserted registration.

Respondent claims that

the name DIE GRUENEN ["The Greens"] is not distinctive of members

of a political party in one country. However, descriptive words are capable

of registration as trademarks when they have become distinctive through use

and Complainant has shown the name has become distinctive of it in Germany.

Respondent asserts that

it uses the disputed domain name for a website promoting Internet ecology and

free speech. Respondent asserts that the site does not mention Complainant at

all or pretend to have any connection to it. However, there is no evidence of

the content of that site at the time of this dispute arising.

It may not be appropriate

for this Panel independently to visit the site so as to examine Respondent’s

assertions: see Rule 15(a) and Benefitslink.com, Inc. v. Mike Haynes

(National Arbitration Forum Case No. FA0007000095164:

"It is not the role of

the Panel to conduct an independent investigation outside the materials submitted

in the record".

Leaving aside legal research,

including research into decisions under the Policy, which the Panel is clearly

authorized to conduct, it could be argued that a reference in the materials

submitted in the record to a website incorporates the content of the website

into those materials, so that the Panel may visit that website without violating

rule 15 (a). Be that as it may, a practical reason in this case why the Panel

should refrain from independent investigation of Respondent's website is that

the Panel would have no way of knowing whether, as often happens, changes have

been made to the site since the commencement of the proceeding.

Respondent has not demonstrated

by concrete evidence that it has rights or legitimate interests in the disputed

domain name.

Complainant has established

this element.

Bad faith registration

and use

Complainant relies on Ex.

4 to the Complaint as providing evidence that Respondent has offered the disputed

domain name for sale. There are 2 pages in that Exhibit. The first appears to

be page 7 of 10 pages from the site <http://www.nazi-lauck-nsdapao.com>.

It is entitled "How YOU can use the Internet as a Propaganda Weapon!"

and contains material in both German and English suggesting that European webmasters

can reduce the risk of political repression by moving their websites to the

USA. There is no offer to sell the disputed domain name on the page. The second

page of Ex. 4 is the previously mentioned copy of part of the records of the

German Patent Office. It provides no evidence of any offer on the part of Respondent

to sell the disputed domain name.

Complainant has failed

to establish circumstances of bad faith within paragraph 4 (b) (i) of the Policy.

Paragraph 4 (b) is not exhaustive however, and it is open to the Panel to make

a finding of bad faith registration and use based upon other demonstrated circumstances.

In SportSoft Golf, Inc.

v. Hale Irwin’s Golfers’ Passport (NAF case FA94956) a finding of bad faith

was made where the respondent "knew or should have known" of the registration

and use of the trade mark prior to registering the domain name. Likewise Marriott

International, Inc. v. John Marriot (NAF case FA94737); Canada Inc. v.

Sandro Ursino (eResolution case AF-0211) and Centeon L.L.C./Aventis Behring

L.L.C. v. Ebiotech.com (NAF case FA95037).

Here Respondent, an American

company located in Nebraska, chose the German language for its domain name.

As a self-described "free speech activist and former political prisoner

of the German government currently co-ruled by Complainant", Respondent’s

President and representative must have been sufficiently aware of politics in

Germany to have known of Complainant and its mark DIE GRUENEN before Respondent

registered the disputed domain name. The Panel so finds.

The Panel also finds that,

knowing of Complainant and its mark, Respondent has created the likelihood,

by using the German language for its domain name, that German Internauts would

be attracted to the site because the disputed domain name conveys an association

with Complainant. This justifies a finding of bad faith registration.

As to use, assuming, as

Respondent asserts, that the site <www.diegruenen.net> promotes Internet

ecology and free speech and does not mention Complainant, the Panel finds such

Internauts are likely to believe that the views expressed on the site are those

of Complainant or have Complainant’s approval.

Thus on the limited material

available it appears to the Panel that both the site and the disputed domain

name falsely represent to Internauts, particularly German Internauts, that there

is a connection with Complainant. In so doing, Respondent is using the disputed

domain name in bad faith.

The Panel finds that the

Respondent has acted in bad faith both in registration and use of the disputed

domain name.

The Complainant has established

this element.

7. Decision

Pursuant to paragraphs

4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name

<diegruenen.net> be cancelled.

Alan L.

Limbury

Panelist

Dated: November

14, 2001