Bauhaus AG v. Robert Desideri

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Bauhaus

AG, Zweigniederlassung Mannheim v. Robert Desideri

Case No.

D2001-1177

1. The Parties

The Complainant is

Bauhaus AG, Zweigniederlassung Mannheim, a German branch of the Swiss company

Bauhaus AG, the branch office organized and existing under the laws of Germany,

located at Gutenbeergstr. 21, D-68167 Mannheim, Germany.

The Respondent is Robert

Desideri, with a place of residence in New York, NY, U.S.A.

2. The Domain Name

The domain name at

issue is <bauhaus.com>, registered with eNom, Inc., of Redmond, WA,

U.S.A., on August 8, 2001, the registration having been transferred from

Network Solutions Inc., where the name was initially registered on October

30, 1995.

3. Procedural History

A Complaint was submitted

electronically to the World Intellectual Property Organization Arbitration

and Mediation Center (the "WIPO Center") on September 26, 2001.

Its receipt was acknowledged to the Complainant by the WIPO Center on the

same day and it was received by the WIPO Center in hardcopy form on October

1, 2001. On September 27, 2001, the WIPO Center requested and the next day

received a Registrar Verification issued by eNom Inc. Payment of the administration

fee was duly received. After Formal Compliance Review, verifying that the

Complaint satisfies the formal requirements of the ICANN Uniform Domain

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

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

and the World Intellectual Property Organization Supplemental Rules for

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

a Notification of Complaint and Commencement of Administrative Proceeding

to the parties and eNom, Inc., was issued on October 2, 2001.

On October 16, 2001, Respondent by e-mail requested "a modest time

extension" for submitting a response, to which the WIPO Center replied

the following day by granting an extension until October 29, 2001. On October

28, 2001, the Respondent submitted its response by e-mail. The WIPO Center

received a hardcopy of the response on October 31, 2001.

The Complainant chose

to have the dispute decided by a three-member Administrative Panel. The

Panel was properly constituted on November 19, 2001, the formal date set

for commencement of this administrative proceeding. All Panelists submitted

appropriate Statements of Acceptance and Declaration of Impartiality and

Independence. A Notification of Appointment of Administrative Panel and

Projected Decision Date was properly issued on November 19, 2001, indicating

as Presiding Panelist Mr. Gunnar Wilhelm Gösta Karnell, the other Panelists

being Mr. Christopher Kuner and Mr. Ira S. Sacks.

On November 19, 2001,

WIPO Center forwarded to the Panel by courier mail the relevant documents.

Pursuant to Rule 5 (b), in the absence of exceptional circumstances, the

Panel is required to forward its decision by December 3, 2001.

On November 27, 2001,

the Complainant submitted a request to the WIPO Center requesting that the

Panel grant it permission to file a reply to the response. On the same day,

this request was refused by the Panel, whose decision was immediately communicated

to the Complainant by the WIPO Center.

4. Factual Background

In accordance with

Paragraph 3(b)(xiii) of the Rules, the Complainant has agreed to submit,

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

a decision by the Administrative Panel to transfer or cancel the domain

name that is the subject of its Complaint, to the jurisdiction of the courts

where the 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 submission

of the Complaint to the WIPO Center.

The Registrar Verification

states that the Uniform Policy applies to the domain name at issue.

The Respondent has

requested that documents and information within its response and annexes

thereto be kept confidential within a specified circle. The Administrative

Panel rejects this request. However, in summarizing the contentions of the

Respondent, the Panel has attempted to avoid including factual details that

the Respondent might consider confidential.

Complainant bases its

claim on a trademark BAUHAUS (a figurative mark), registered January 18,

1996, upon an application filed in Belgium on October 12, 1995, on behalf

of DEMP Holding B.V., Maastricht, No. 646 757 – extension under the Paris

Convention to Belarus, Croatia, Slovenia, Ukraine and Vietnam – based on

a Benelux registration No. 570 351 of May 9, 1995, preceded by a registration

upon an application filed with WIPO on December 15, 1975, on behalf of Bauhaus

AG, Switzerland, No. 420 524, under the Madrid Trademarks Agreement

for an extension to Germany, Austria, France and Italy of a Swiss registration

No. 246 188 of March 26, 1970.

Complainant’s authority

to raise a claim based on the trademark as mentioned rests upon its holding

an exclusive license for Germany to the trademarks numbered 420 524 and

646 757 here above and a "Power of attorney for assertion of rights

(capacity to sue in its own name)", provided by DEMP Holding B.V.,

"exclusively to assert the rights of DEMP Holding B.V. in the cited

marks before the World Intellectual Property Organization (WIPO) through

a UDRP proceeding with the goal of achieving the transfer of the domain

<bauhaus.com> to BAUHAUS AG Deutschland in its own name".

5. Structure for

the following presentation of Parties’ Contentions as well as the investigation

and conclusions of the Administrative Panel

The Administrative

Panel will, structuring under the letters A, B and C, refer to the criteria

mentioned in paragraph 4(a) of the Uniform Policy, under which the Complainant

carries the burden of proving:

A. that the

domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has

rights;

B. that the

Respondent has no rights or legitimate interests in respect of the

domain name; and

C. that the domain

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

6. Parties’ Contentions

(short summaries; and requests for decisions)

The Administrative

Panel notes that both parties have submitted numerous documents in support

of their contentions. The Panel has carefully scrutinized all of them. However,

in this Decision, no explicit reference will be made to specific documents.

I. Complainant’s Contentions

Complainant is the

German branch of a European chain of Do It Yourself (DIY) stores. Complainant

is registered in the commercial register of Mannheim municipal court as

a branch of Bauhaus AG, Zug, Switzerland, since November 1974, (earlier

registered as "Kommanditgesellschaft" since March 1963).

All DIY stores use the BAUHAUS brand in various contexts to support recognition

of the products and services of the stores. The trademark is internationally

known in Europe as evidenced by various market research studies showing

high degrees of recognition.

A. Respondent’s

domain name is identical or confusingly similar to Complainant’s mark.

The similarity between BAUHAUS and <bauhaus.com> is clear, the

only difference being the top-level domain <.com>. Hence, the

identity or risk-of-confusion criterion is satisfied.

B. The Respondent

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

The Complainant concedes that the Respondent has applied for "bauhaus"

as a service mark in the U.S.A. on December 15, 1999, but it has not

been registered. The Respondent has not used the BAUHAUS brand in

any other context than as part of the domain name <bauhaus.com>.

Since 1996, the Complainant has, at intervals, checked on the

use of the URL <bauhaus.com>. In 1996 and 1997, the page only

carried the logo "bauhaus", the contact e-mail addresses

webmaster@bauhaus.com and info@bauhaus.com and a copyright notice

"1995 RDCL", and no additional information. RDCL refers

to Robert Desideri Consultants Limited for which another page was

located at "www.24x7.com" with information about the objects

of that company and, in 1996, a list of Internet services. Some time

between 1996 and 2000, the www.24x7.com page was changed so that it

only showed an announcement according to which something was in preparation

at this URL in "stealth mode". Some time between 1997 and 2000,

a redirect was established from "www.bauhaus.com" to "www.24x7.com".

The URL "www.bauhaus.com" was not used by Respondent before

mid-October 2000, even in a rudimentary way. Between October 10, 2000,

and November 27, 2000, the "www.bauhaus.com"-page was modified,

adding to the page title, in big letters, "Bow2Stern", and

the sentences "In stealth-mode as we prepare for launch."

and "To submit your resume please send it in plain-text to log@Bow2Stern.com

Thanks." The lower part showed in small letters: "©,

1999,2000 Bow2Stern™. All rights reserved" and the text:

"Bow2Stern™ is a trademark of BowLight Corporation in the

United States and /or other countries. Other product and company names

mentioned herein may be the trademarks or service marks of other companies."

There was no reference to the "Bauhaus" service mark. The

same content was shown on November 30, 2000, except that the Bow2Stern

had in all places but the page title been replaced by Bauhaus. Overall,

no business activities of the Respondent relate to the service mark

"Bauhaus". There is no indication how activities of the

Respondent with respect to "bauhaus" are intended to establish

a functioning company. The absence of real activity means that the

"bauhaus" service mark cannot be regarded as establishing

any rights for the Respondent. Because there are no other rights or

interests of the Respondent in the domain <bauhaus.com>, the

Respondent cannot assert any rights in it.

C. The domain

name has been registered and is being used in bad faith: The Respondent

has a large number of word marks – 26 have been found – most of them

"live", of which six have been found related to web sites.

None of the web sites, all showing only one page, reveal any genuine

activity. A list of 26 domain names, all of which, with minimal modifications,

contain just the web page title, an indication of so-called stealth-mode

or a request "please stay tuned…" and a statement "To

submit your resume please send in plain-text to <e-mail address>;

ending with a reference to (alleged) copyright. Three domains contain

more graphically elaborate web pages but only fragmentary information

about any purpose of the site, such as just an e-mail address and

a hyperlink, but no indication of underlying services. A small number

of the domains held by the Respondent relate to names used by others

and there have been identified cases of possibly confusing similarities

between domain names belonging to the Respondent and those of others,

making it "impossible to dismiss out of hand the suspicion that

the domain … was registered with intent to divert customers of another

name owner to its own services". "The current rudimentary

use by the Respondent makes no sense at all." The only commercial

purpose of the brands appears to be to serve as an asset in connection

with the associated domains, making the brand along with the domain

an end in itself. It is justified to accuse the Respondent of "name

grabbing". Although the Respondent has not "as yet"

approached anyone with any offer "everything indicates that there

is such an intention."

The filing of

Respondent’s service mark and the Respondent’s awareness of other

owners of Bauhaus marks satisfies the condition of registration and

use in bad faith to attract for financial gain Internet users to the

registrant’s web site, e.g., by creating confusion with the

Complainant’s mark or by implying its support for or connection with

the site of the domain owner. The Complainant asserts that there are

a number of facts that support the contention of bad faith. Despite

the appearance of pretended commercial use, the meager content of

the page under "www.bauhaus.com" has been such as to attract

only persons wishing to reach some other supplier of goods or services.

Thus, the Respondent’s intention – if not just to obstruct the system

– would be to divert clients from such other suppliers, making use

of competitors’ marks for its own commercial purposes.

The Respondent

prevents Complainant from obtaining the domain. Complainant points

to the coincidence in timing of Respondent’s service mark application

and domain name registration. (The Panel notes that such an assertion

appears factually to be incorrect.) Respondent filed the service mark

application to hinder legitimate trademark owners by "attempting

to justify its own (alleged) rights with the registration of the mark".

Even if Respondent maintains its own web site on the domain, it is

not fully operational but merely an announcement that more information

will be presented soon. It is commercially objectionable to register

a mark for a specific service and then not only fail to refer in the

web site to any business conducted under the mark but instead just

refer users to another site over a long period of time. If there is

a lack of circumstances materially justifying the registration of

the domain, then the nature of use also indicates registration in

bad faith.

Complainant’s

request (paragraph 4. i. of the Uniform Policy)

The Complainant

has requested that the Administrative Panel transfer the domain name

<bauhaus.com> to the Complainant.

II. Respondent’s

Contentions

Since 1970, the Respondent

has worked both with computer technology and in the financial services

industry. Until now, no legal proceedings have related to any of its domain

names. Respondent denies any awareness of Complainant’s existence and

mark when registering the domain name and thereafter until the Complaint.

A. Respondent’s

domain name is not identical or confusingly similar to Complainant’s

mark. Complainant’s trademark appears to be in stylized design comprising

reverse-blocked typeface using uppercase typeface, whereas Respondent’s

"bauhaus" in <bauhaus.com> is in lower case lettering.

The businesses of

Complainant and Respondent are quite different.

Respondent denies

allegations regarding intent to imply relationship with Complainant.

Complainant’s business operations are of lesser scope than alleged,

limited to only some geographic areas. Complainant does no business

in the U.S.A.

Bauhaus is a

generic term, referring to a particular architectural style which

traces back to a school founded in the early 20th century

by architect Walter Gropius. There are numerous businesses that use

"bauhaus" as a trademark, service mark or corporate name.

Complainant has not taken any action to challenge any of those uses.

Indeed, Complainant waited from 1995 until 2001, to challenge

Respondent’s registration of the domain name.

B. Respondent

has a legitimate interest in the domain name <bauhaus.com>:

It was registered for Respondent’s software business. The name <bauhaus.com>,

assumed for the business of Robert Desideri Consultants, Ltd., was

registered with the State of New York, Department of State on July

1, 1996. <bauhaus.com> is a mark to which the Respondent has

acquired common law rights in its field of business. It has registered,

used and uses the domain name in good faith. When registering the

domain name in 1995, the decision was driven solely by Respondent’s

appreciation for the "function and form" doctrine to which

the word "bauhaus" refers worldwide. Thus, "bauhaus"

is an appropriate name for the innovative software architecture business

on which Respondent was embarking.

Complainant has

not been prevented from using its trademark internationally as a domain

name. Complainant already uses a variety of domain names, such as

<bauhaus.at>, <bauhaus-ag.de> etc. Regarding <bauhaus.com>,

Respondent was first to register and with legitimate purpose.

Respondent has

used the domain name and brand on the web site, including the public

default page and pages in sub directories (both http and ftp protocols)

and for email (SMTP protocol). In addition to a variety of public

www pages, since 1995, the web site provides business prospects and

venture capital investors with private logons and directories containing

private web pages where Respondent demonstrates software and provides

documentation. The site has always comprised public and non-public

directories and web pages. Non-public pages are not linked to public

pages to prevent competitive piracy. A sister company brands <bauhaus.com>

software as its own private label products and markets such products.

Respondent also markets <bauhaus.com> software to other firms

as private label products to sell under their own brand. Activities

have reached into venture investment and management services, broadening

the scope of <bauhaus.com>.

C. Bad faith

is denied. The domain name was not registered in bad faith and is

not being used in bad faith. No cybersquatting or brand grabbing has

taken place and actual and ongoing use is for multiple bona fide purposes.

Trademark applications were filed for legitimate purposes varying

over time. Respondent has not intended to divert or confuse any Internet

user away from business by any other right holder to any "bauhaus"

mark or domain. The Respondent was unaware of Bauhaus AG and DEMP

Holding and did not register its domain name to obstruct Complainant

or to resell, rent or otherwise transfer the domain to Complainant

for profit. Complainant admits that Respondent has not approached

it in any such manner. There has been no information on the <bauhaus.com>

default web page that would confuse or mislead anyone into believing

that Respondent operates DIY shops or that a web surfer would have

reached the web site of the Complainant. Nor would any user be linked

to any competitor of the Complainant. Redirection to another default

public web page is not for any bad faith purpose but for practical

(e.g. project on hold), administrative (e.g. labor)

and server capacity reasons.

Complainant’s

arguments about Bow2Stern are baseless. Respondent’s use of one web

page as a template to create another and then replacing the html <title>

tag was the result of Respondent’s "search and replace"

procedure to replace an accidentally overwritten or erased <bauhaus.com>

default web page. Respondent admits to an incomplete procedure, caused

by error and technical problems, but denies any intent to mislead

or confuse the public.

Respondent showed

significant use of its various registered domains since 1995.

Similarities

between Respondent’s other domain names and other entities’ names

or domain names are not such as to cause confusion or to substantiate

allegations of cybersquatting. In the sole case where a domain name

registered by Respondent, other than <bauhaus.com>, contained,

as alleged by the Complainant, the trademark of another U.S. enterprise,

this mark referred to vastly different services than those of the

Respondent, who was unaware of the trademark in question.

Respondent denies

that its pages indicating stealth-mode attest to non-use. Respondent

explains that stealth mode refers to use only by persons with authorized

access. Respondent’s business develops a portfolio of software properties

and does not engage in fancy web site constructions.

Respondent has

never registered a domain name with the intent to sell it.

Respondent’s

requests

The Respondent

has requested the Administrative Panel deny Complainant’s request

for domain name transfer. It has also requested "that the Administrative

Panel find Complainant brought this proceeding to reverse highjack

the domain name", understood by the Panel to mean a request related

to paragraph 15(e) in fine of the Rules that the Panel shall

in its decision declare that the Complaint was brought in bad faith

and constitutes an abuse of the administrative proceeding.

7. Discussion and Findings

Under paragraph 15(a)

of the Rules the Administrative Panel shall "decide a Complaint on

the basis of the statements and documents submitted in accordance with the

Policy, these Rules and any rules and principles of law that it deems applicable".

The Administrative

Panel finds as follows:

A. The domain

name <bauhaus.com> is identical to a trademark to which Complainant

has rights, notwithstanding the added gTLD.com. It is not confusingly

similar because of the different geographic areas in which the parties

do business and their totally different businesses.

Complainant’s BAUHAUS

mark, as registered, is a figurative mark and not a word mark. This fact

has not been mentioned or invoked by any Party as of any importance for

the handling of the case by the Administrative Panel. Respondent only

made an analysis of the mark without drawing any conclusions thereof.

It may be that, because of reasons of language and insufficient translation,

the issue of the character of the mark has been shrouded. The figurative

character of the mark comes forward in only few documents and then in

French and German. The Panel chooses to disregard the issue, because it

finds that the Complainant has sufficiently proven to the Panel that "bauhaus"

has, as a mark, become generally known in the appropriate business and

consumer circles in certain geographic areas as a symbol specific to the

goods and services of the Complainant’s DIY stores.

B. Respondent

has a legitimate interest in the domain name <bauhaus.com>. Respondent

has set forth evidence indicating that, before notice of the dispute,

he has been using the domain name <bauhaus.com> in connection with

a bona fide offering of goods and services showing legitimate interests

in respect of the domain name (see Uniform Policy 4(c)(i)), even if it

is true that the Respondent’s use was not of a kind visible to the Complainant.

Bauhaus is word of

worldwide use. It is commonly used in trade for names and trademarks as

well as in domain names having no known connection to either the Complainant

or the Respondent. Whether there be a legitimate interest in using "bauhaus"

for a certain business depends upon the similarity in goods and services

to other users of the word within a narrow commercial setting. There is

no similarity between Complainant’s goods or services and those of the

Respondent, current or planned.

C. The contentions

and documentary evidence brought to the case by the Parties have not produced

convincing evidence that the domain name <bauhaus.com> has been

registered or is being used in bad faith by the Respondent. There is no

evidence to prove any circumstances of the kind indicated under Uniform

Policy 4(b). There is no evidence that Respondent has tried to sell

or profit from the registration. See Uniform Policy 4(b)(i). There is

no evidence that Respondent registered the domain name to prevent Complainant

from doing so. See Uniform Policy 4(b)(ii). There is no evidence that

Respondent has engaged in a pattern of registering blocking domain names.

Id. Indeed, the domain names registered by Respondent do not seem

to be related to famous marks or otherwise suspicious. Complainant's reference

to the Army's Smartdarts or to the funnybone website seem off the mark.

There is no evidence that Respondent's registration of the domain name

had the intent of disrupting Complainant’s business. Uniform Policy 4(b)(iii).

Nor is there likelihood of confusion. See Uniform Policy 4(b)(iv). Respondent’s

services are dissimilar when compared to Complainant's goods. Moreover,

Bauhaus is a common word used to refer to certain architectural theory

worldwide. Bauhaus is also used widely in the United States and worldwide

as a corporate name and a trademark, having nothing to do with either

Complainant or Respondent.

The Administrative

Panel does not find, however, that the Complainant brought its Complaint

to reverse highjack the domain name. On the information presented to the

Panel in the Complaint and attached documents, the Complainant had a reasonable

basis to raise a claim against Respondent, despite the fact that it did

not prevail in its claim. Consequently, the Administrative Panel has not

found that the Complaint was brought in bad faith.

8. Decision

It is the unanimous

decision of the Administrative Panel that the <bauhaus.com> domain

name should not be transferred to the Complainant.

Gunnar W.G.

Karnell

Presiding Panelist

Christopher

Kuner Ira S. Sacks

Panelists

Dated: December

3, 2001