alfabet meta-modeling AG v. Henrik Rambe; Rambe Legal Consultants

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Alfabet

Meta-Modeling AG v. Henrik Rambe

Case No.

D2001-1205

1. The Parties

Complainant is Alfabet

meta-modeling AG, Berlin a corporation organized and existing under the laws

of Germany, represented by White & Case, Feddersen, Berlin, Germany.

Respondent is Henrik Rambe,

Malmö, Sweden.

2. The Domain Name and

Registrar

The domain name at issue

is <alfabet.com>. The registrar is Domaininfo AB, Jonsered, Sweden.

3. Procedural History

A Complaint was submitted

electronically to the World Intellectual Property Organization Arbitration and

Mediation Center (the "WIPO Center") on October 4, 2001.

The WIPO Center sent an Acknowledgment of Receipt to the Complainant on the

same date and received the hardcopy of the Complaint on October 8, 2001.

On October 8, 2001, a Request

for Registrar Verification was transmitted to the Registrar, Domaininfo.com,

who confirmed by e-mail that they were in receipt of the Complaint sent to them

by the Complainant and that the domain name <alfabet.com> was registered

with them, and was on ACTIVE status. The Registrar also forwarded the requested

Whois-details and confirmed that the Uniform Domain Name Dispute Resolution

Policy was in effect.

A Formal Requirements Compliance

Checklist was completed by the assigned WIPO Center Case Administrator. The

Panel has independently determined and agrees with the assessment of the WIPO

Center that the Complaint is in formal compliance with the requirements of the

Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved

by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental

Rules for Uniform Domain Dispute Resolution Policy, in effect as of December

1, 1999 (the "WIPO Supplemental Rules").

The required fees for a

single-member Panel were paid on time and in the required amount by the Complainant.

All formal deficiencies

having been cured, on October 15, 2001, a Notification of Complaint and Commencement

of Administrative Proceeding (the "Commencement Notification") was

transmitted to the Respondent by the required means, setting a deadline of November

4, 2001, by which the Respondent could file a Response to the Complaint.

On November 1, 2001, the

WIPO Center received the Response by e-mail with a hardcopy following on November

7. The WIPO Center acknowledged the receipt of the Response on November 2, 2001.

On November 8, 2001, in

view of the Complainant’s designation of a single panelist (but without prejudice

to any election to be made by the Respondent) the WIPO Center invited Mr. Knud

Wallberg to serve as a panelist in the Case, and transmitted to him a Statement

of Acceptance and Request for Declaration of Impartiality and Independence.

Having received on the

same day, Mr. Knud Wallberg’s Statement of Acceptance and Declaration of Impartiality

and Independence, the WIPO Center transmitted to the parties a Notification

of Appointment of Administrative Panel and Projected Decision Date, in which

Mr. Knud Wallberg was formally appointed as the Sole Panelist. The Projected

Decision Date was November 23, 2001.

The Sole Panelist finds

that the Administrative Panel was properly constituted and appointed in accordance

with the Uniform Rules and the WIPO Supplemental Rules.

On November 14, 2001, the

Complainant submitted a Supplemental Filing to the WIPO Center. Neither the

Policy nor the Rules contain specific provisions on supplemental filings and

it will thus in the sole discretion of the Panel to decide whether to admit

such filings or not. In this case the Panel has looked briefly through the Supplemental

Filing. Since the Supplemental filing does not address issues that are not already

covered by the Complaint and since it does not contain any new facts of importance

of the case, the Panel dismisses the Supplemental Filing by the Complainant.

The Administrative Panel

shall issue its Decision based on the Complaint, the Response, the Policy, the

Uniform Rules and the WIPO Supplemental Rules.

4. Factual

Background

The Complainant is a

German stock corporation, which sells software-based modeling technologies

for the strategic management of businesses and provides customer service and

support. It started its business in 1997 in the legal form of a limited partnership,

operating under the firm of, mip GmbH & Co.

mip GmbH & Co applied

for registration of the Community trademark alfabet in the form of a combined

unregistered and visual mark on April 22, 1998. The trademark was registered

by OHIM on June 2, 1999 for data processing instruments and computers, construction

of programs for data processing. A copy of the registration certificate was

provided as an Annex to the Complaint.

The Complainant obtained

the domain name <alfabet.de> on January 6, 1998. A copy of the registration

confirmation by the German registrar was provided as Annex to the Complaint.

On September 2000, mip

holding Aktiengesellschaft, changed its name to alfabet meta-modeling

AG, which is the Complainant in this proceeding.

The Respondent is a Swedish

national and a member of the law firm Rambe Legal Consultants based

in Stockholm, Sweden. Respondent registered the domain <alfabet.com>

with domaininfo.com on January 17, 2000. Apart from the disputed domain <alfabet.com>,

the Respondent owns other domains, which he registered with domaininfo.com

during the period from January until June of 2000.

5. Parties´ Contentions

A. Complainant

Following registration

of the <alfabet.com> domain, the Respondent approached the Complainant

via email, offering to sell the domain name for USD 50,000. The Complainant

refused on the grounds that the price asked was too high and was not worth it

to own the domain name.

On November 29, 2000, the

Respondent conducted an Internet auction at <afternic.com> for the purpose

of selling the domain <alfabet.com>. The Complainant, took part in this

auction which expired below the reserve price of USD 50,000. The last bid was

placed at USD 10,495. The auction was subsequently closed by the Respondent

without accepting any of the bids.

Following termination of

the auction, the Respondent sent Complainant an email, claiming that, apart

from the Complainant, other companies had shown an interest in the domain <alfabet.com>.

It being a "unique domain name", the Respondent asked Complainant to "consider

the value properly in regard to the domain name market" and not to use the result

of the auction "as a reference".

In the course of the subsequent

email correspondence between the Respondent and Complainant, Complainant expressed

their continued interest in the purchase of the disputed domain, but no agreement

was reached.

There is not, nor has there

ever been, any web-site associated with the <alfabet.com> domain name.

In early September of 2001, a link was installed to the web-site <gagatan.com>

which is the platform for a shopping guide for the city of Malmö, Sweden.

By entering the <alfabet.com> domain name, a user is thereby forwarded

to the <gagatan.com> site.

The domain name <alfabet.com>

which is the subject of this dispute is identical with the trademark "alfabet"

registered with the OHIM on behalf of the Complainant on June 2, 1999. No other

trademark rights pertaining to the term "alfabet" have been registered

as Community Trademark.

The Respondent has no rights

or legitimate interests in respect of the disputed domain name because he does

not make any legitimate use of the domain.

The Respondent neither

uses the <alfabet.com> domain as an internet-based platform to offer any

goods or services, whether it be for sale or for non-commercial purposes, nor

does he use the term "alfabet" in areas unrelated to the Internet.

He is in no way known by the domain name, nor do his name, his business or any

other characteristics or activities represented or practiced by him invoke an

association with the term "alfabet".

Although a link was recently

installed to the <gagatan.com> web-site, this does not represent legitimate

use of the domain by the Respondent. The only reference made to the term "alfabet"

on the <gagatan.com> site is the notice that <gagatan.com> may currently

also be reached under <alfabet.com> which would be developed separately.

There is no imaginable association a user trying to find information on Malmö’s

shopping street "Gagatan" might have to the term "alfabet"

that would induce him/her to search for such information under <alfabet.com>.

This suggests that, in

light of the Complainant’s efforts to get hold of the disputed domain, the Respondent

installed the link to the site of the shopping guide merely in order to pretend

that a legitimate use is currently made of the domain.

Finally, the Respondent

has registered and used the domain name in bad faith.

According to the Policy,

para. 4(b)(i), registration of the domain name primarily for the purpose of

selling it to the owner of the trademark for valuable consideration in excess

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

domain name is evidence of the registration and use of a domain name in bad

faith.

The fact that the Respondent

registered the disputed domain and the 46 other domains listed in his <afternic.com>

showcase during a relatively short period of time (January until June of 2000),

implies that he did not intend to use any of these domains as a platform for

offering any goods or services but rather intended to sell them, either by contacting

potentially interested parties directly or by listing the domains for an internet

auction. The reserve price the Respondent fixed for the auction of the <alfabet.com>

domain amounted to USD 50,000 - a sum that exceeded the Respondent’s out-of-pocket

costs related to the domain manifold.

Such behavior has generally

been referred to as "domain grabbing" and has been considered to be illegal

by, among others, German and Austrian courts.

There is evidence that

the Respondent knew about the existence of the Complainant, i.e. a company by

the name of alfabet meta-modeling AG when he registered the <alfabet.com>

domain: The Complainant had already registered the <alfabet.de> domain

at that time. When searching for a specific domain under <domaininfo.com>,

the potential registrant is informed whether such domain has already been reserved

and, if so, which top level domains have been reserved in connection with it.

The Respondent figured

that the Complainant, as owner of the "alfabet" trademark, might be

interested in obtaining the respective dotcom domain and registered the <alfabet.com>

domain for the sole purpose of selling it to the Complainant. This assumption

is also supported by the fact that, prior to listing the domain for the Internet

auction, the Respondent directly contacted the Complainant and offered to sell

the disputed domain.

The behavior of the Respondent

as described above constitutes a case of bad faith registration and use as defined

in para 4(b) of the Policy.

Additional evidence of

the Respondent’s bad faith use of the disputed domain is his refusal to sell

it when offered the considerable sum of USD 15,000 by the Complainant. Instead,

he made a counter offer for USD 900,000, asking eighteen times the amount of

his original offer (USD 50,000). Even in the year 2000, when the New Economy

was in a livelier state than at present, this was an unrealistically high price

to ask for a domain name. Furthermore, the fact that the Respondent did not

turn around and sell the domain to the alleged third party for USD 825,000 indicates

that there never existed a corresponding offer from any third party and that

the Respondent simply invented such third party, in order to drive up the price.

The Respondent contends

that the term "alfabet" is a "completely and utterly generic word"

and that, therefore, dealing with the disputed domain constitutes normal trade

with a valuable domain name rather than an illegitimate incident of cybersquatting.

By arguing in this manner,

the Respondent fails to take into account the fact that the Complainant is the

holder of the "alfabet" trademark. Whether a term is generic and thus

eligible for trademark protection is one of the issues to be examined in detail

by the OHIM prior to granting trademark protection to any applicant. However,

once the trademark is registered, the generic nature of the term becomes irrelevant.

In Paragraph 4(a)(i), the Policy merely requires the Complainant to prove that

it has rights in a certain trademark, which is identical or confusingly similar

to the Respondent’s domain. It is not an issue under the Policy, whether a domain

name reflects a specific company name or a generic term.

Neither does the Policy

differentiate between different kinds of trademarks: it is equally applicable

to unregistered trademarks and to combined unregistered and visual marks such

as the "alfabet" trademark, in which case the trademark protection

refers to the term in combination with a specific graphic design or image.

Any trademark holder will

thus have a claim to the corresponding domain, whether it be generic or not,

if the domain holder has no legitimate interest in the domain and has been using

it in bad faith.

In the case at hand, the

Complainant is the holder of the "alfabet" trademark while the Respondent

- as has been shown - has no rights or legitimate interests in the <alfabet.com>

domain and has registered and used the disputed domain in bad faith. The Complainant

may, therefore, demand transfer of the domain registration to itself.

B. Respondent

In claiming disloyal or

bad faith use of a domain name, one must first closely scrutinise which prioritised

rights exist that may extend to include it. On examining this, the scope of

any such right must be established. The extent of existing trademark protection,

as well as other legitimate rights and interests, becomes a key issue. If a

trademark, or other right, then in a specific case may be said to encompass

the characteristics of the domain name under scrutiny, then the use of it may

become relevant. Such use need then be deemed disloyal, in order for any action

to be performed against it.

In the present case, the

Complainant is claiming that the domain name <alfabet.com>, which is in

my possession, is identical to the Complainant’s trademark(s). The Complainant

then also claims that I have no right or legitimate interest in respect of it,

as well as it is being used in bad faith.

In effect this means that

the Complainant considers itself to have the sole and unreserved right to the

word "alfabet" in all its uses on a worldwide basis, as the internet

and the dotcom names indeed are international in nature.

To any Scandinavian (Swedish,

Danish, Norwegian) the word "alfabet", with that spelling, carries

the same meaning in Swedish, Danish and Norwegian as the word "alphabet"

in German and English. Being so generic, in every sense of the word, any trademark

protection in connection to it must then be limited in scope. It would place

a bridle on the public sphere in favour of a private single entity, which would

and could not be acceptable.

On scrutinising the trademark

rights of the Claimant, this general IP principle also shows true in the concrete

case. At the time of interest, when the domain name was being offered for sale

at the <afternic.com> auction site, as well as at the time of registration,

in January the same year, the only existing trademark concerning the word "alfabet"

was a figurative/visual mark for the Alfabet Meta–Modeling AG logotype containing

the words "alfabet communicate your knowledge" in connection with

the offering of goods and services within the classes for "Electrical and

Scientific Apparatus" and "Construction of Programs for Data Processing".

With this limited – and fully understandable scope of protection, trademark

rights had been given on a Community level. The trademark had (and has) not

acquired distinctiveness. In it, there is nothing to suggest that the Claimant's

right should extend to the claimed degree.

If at all applicable here,

even the trademarks granted later (September 2001), as presented in the Annexes

to the Response show these clear limitations. In accordance with basic trademark

principles, the additional trademarks granted this year in September – now also

containing a "word-trademark", only give the Complainant protection

for the use of "alfabet" within closely defined areas. In regard to

the word "alfabet", the use for the rest of us, should however, as

before, be free and equal – only now with those few, limited and understandable

exceptions for the protection of the Claimant's legitimate business interests.

The word being so utterly generic in the Scandinavian context, naturally no

prioritised right for the Claimant can be said to exist beyond the limitations

of the Claimant's trademark(s). For anyone outside the Alfabet Meta-Modeling

AG – context, the use of the word "alfabet" must then be as free as

for any other common word.

In this, the offer of sale

to a wider public of equally legitimate and interested parties, that has nothing

to do with the Claimant's business, is no act of bad faith and could not constitute

trademark intrusion. The right of a holder of such a dotcom domain name then

rests on the single principle "first to register", which is the standard

rule for all the gTLDs. Any interested party may then take or leave the conditions

offered, if at all offered, as there is no obligation for a holder to sell.

A specific price, be it "outrageous" or not, is for the interested

buyer to accept at will. The option is free. To question the legitimacy of a

Swede using the word "alfabet" in his or her own context, encased

in a domain name or not, is then far-fetched.

From the Respondent's company’s

point-of-view (Auxit KB), which presently is developing a cultural and literary

site in connection to the <alfabet.com> domain name and the established

portal site of <gagatan.com> (which both are Swedish and have nothing

in common with the Claimant’s products, services or company), the buying and

selling of generic or non-trademark protected domain names in connection with

well-prepared business plans is nothing to be frowned upon. There is a multitude

of developers and venture capital firms that constantly are on the lookout for

new ideas and projects to get involved in. Naturally, this must be distinguished

from that which the Claimant wishes to make this into. Nothing is gained by

bluntly classing everything that has to do with the domain name market as "hi-jacking"

or "cyber-squatting", since serious business is performed out of equally

legitimate interests in that market as in so many others. It is only where rights

truly are intruded upon that action should be taken, or the rights’ system eventually

will be diluted.

To further support the

fact that the Claimant is not the only legitimate rights-owner, one may simply

look at the other existing alfabet-domain names under different TLD’s. As the

Annexes to the Response show, there are a number of alfabet-domain names registered,

and that do not belong to the Claimant. Why the Claimant should have a prioritised

right to particularly the dotcom-domain, where many others, including existing

sites with equally legitimate interests, as well as a broad population of Scandinavia

with potential internet plans, could claim the same thing, is then beyond logic.

In addition, if the Respondent’s

use need even be mentioned, a few things may be noted. The domain name was registered

in January 2000, and put on auction in November the same year. Just the time-factor

alone then indicates that the purpose of registering the domain name hardly

could have been to offer it specifically to the Claimant for a high price. Also,

when put on auction, e-mails were sent out in great numbers to all potentially

interested parties, of which naturally the Claimant was one, in order to promote

the auction - the process being one such promotional step, which is suggested

on several auction sites. At the same time, the auction really being a side

issue, development plans and business discussions continued for the <alfabet.com>

domain, as well as for several other domain names; the idea of the auction being

not to bar any possibilities, whether they be strictly pecuniary in character

or more mixed. In this context the figurative trademark of the Claimant (if

even known of at the time), was of absolutely no concern, it not having anything

to do with the business in question.

Further, to support the

case, after failure to agree on a price last year, no contact has been made

with the Claimant. This should normally indicate that the interest of selling

the domain name at a high price specifically to the Claimant, perhaps, was not

so great or crucial to the scheming of the Claimant’s proposed adversaries,

as had been imagined. However, when the domain name was connected to the existing

site of <gagatan.com>, instead of seeing it as just another parallel alfabet

site, and without any knowledge of the reasons or its purpose, the Claimant

jumps to the conclusion that the only possible reason for connecting the site

can be provocation from a bad faith perspective. And so, almost a year later

after one specific auction event, understood as if completely taken out of context,

the claimant wishes to make credible that the use of Respondent’s domain name

should be unlawful and illegitimate. In view of what has been said and shown,

it ought to support the opposite.

In light of the above,

misconceptions of the scope of trademark protection, unawareness of Scandinavian

languages and the existence of a legitimate domain name market, among other

things, seem to have brought the Claimant to a somewhat clouded conclusion.

The by the Claimant presented and unsubstantiated speculations of the motifs

and schemes underlying the offer of sale in December last year, are here met

with regret. It seems the Claimant is acting from an exaggerated self-image

in regard to the their rights, however legitimate, valuable and highly esteemed

those may be in proper circumstances.

Hence, the burden of proof

in regard to any of the three conditions in Paragraph 4(a) under the Uniform

Domain Name Dispute Resolution Policy required for a successful Complaint, has

not been met. Therefore the Complaint should be denied, as the Respondent is

in his full right.

6. Discussion and Findings

According to Paragraph

15(a) of the Rules the Panel shall decide a Complaint in accordance with the

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

Paragraph 4(a) of the Policy

directs that the Complainant must prove each of the following:

1) 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; and,

2) that the Respondent

has no legitimate interests in respects of the domain name; and

3) the domain name has

been registered and used in bad faith.

Identical or confusingly

similar

According to the provided

information Complainant is the holder of a registration of the word device mark

"aLFABET - communicate your knowledge". The mark is registered as

a Community Trademark on June 2, 1999.

The domain name <alfabet.com>

is identical or almost identical to the dominant and distinctive part of the

said mark except for the addition ".com", and must be considered confusingly

similar to the said mark.

The prerequisites in the

Policy, Paragraph 4(a)(i) are therefore fulfilled.

Legitimate interest

The Complainant has not

licensed or otherwise permitted Respondent to use its trademark or to apply

for any domain name incorporating the mark. Further, the Respondent has not

proven that he has any prior rights in the domain name.

However, the word "alfabet"

is indeed, as claimed by the Respondent, a generic term in Respondents home-country,

being the Scandinavian word for "alphabet". As pointed out by the

Complainant, this does not preclude that the word can be protected as a trademark

for goods and services for which it is not descriptive. On the other hand this

means that the Registrant of a domain name incorporating a generic term may

well have registered and even used the domain name based on an bona fide

assumption that the term incorporated in the domain name is generic and not

reflective of a protected mark. In such cases the Registrant can bee deemed

to have a legitimate interest in the domain name as required in Paragraph 4

(a)(ii) and Paragraph 4(c). The Panel notes that many previous decisions under

the UDRP has addressed the same question, see inter alia WIPO

Case No. D2000-0617 <stmoritz.com>, WIPO

Case No. D2000-0054 <crew.com>, WIPO

Case No. D2000-0161 <zero.com> and WIPO

Case No. D2001-0179 <deepfreeze.com>.

Based on the facts of this

particular case as it is presented to the Panel, the Panel cannot preclude that

Respondent has perceived the domain name as being "generic". Whether

this is the actually case is closely related to the discussion of bad faith,

and will therefore be discussed below

Bad faith

Paragraph 4(a)(iii) of

the Policy further provides registration and use in bad faith. Paragraph

4(b) regulates, by way of example, the kind of evidence that is required. Further

it must be stressed that the burden of proof of the bad faith rests with the

Complainant.

Respondent registered the

contested domain name on January 17, 2000. Respondent does not recognize having

had any knowledge of Complainants trademark rights at this point. In addition,

Complainant has not put any evidence before the Panel that could indicate otherwise,

such as proof that the mark is in use and is well-known in Sweden.

Complainant claims that

Respondent then approached them and offered to sell the domain name, for a price

of 50.000 USD. Complainant has however not furnished any documentation in support

of this claim. Since the Respondent has not confirmed that such contacts were

made and since the onus is on the Complainant, the Panel cannot base its decision

on this claim.

The domain name was then

put on auction in November 2000. It is undisputed that Respondent has registered

a number of domain names, including <alfabet.com> and has offered these

for sale by way of an auction. This is however, not in itself an act of bad

faith as required under the UDRP nor is it an illegitimate business, as long

as the domain names does not incorporate trademark rights of other businesses

or otherwise infringes rights of others. Complainant has presented a list of

domain names registered by and offered for sale by the Respondent, but Complainant

has not put forward more specific information or proof that these domain names

contain trademarks of other entities. It is not within the powers of the Panel

to make an independent investigation into this, but a prima facie look

at the list does not indicate that this is the case. In the Panels view, the

described activities of the Respondent does thus not fall under the definition

of "bad faith" within the meaning of the UDRP as set out in Paragraph 4(a)(iii)

and 4(b).

Bearing all these facts

and the above arguments in mind, the Panel finds that the Complainant has not

been able to demonstrate that the domain name has been registered and is being

used in bad faith, cf. Paragraph 4 (a) iii and 4 (b).

Consequently, the prerequisites

for cancellation or transfer of the domain name according to Paragraph 4(a)

of the Policy are not fulfilled.

The Complainant has requested

transfer of the domain name.

7. Decision

In view of the above circumstances

and facts the Panel decides, that the domain name registered by Respondent is

identical or confusingly similar to the trademark in which the Complainant has

rights, but that the Respondent may have a legitimate interest in respect of

the domain name, and that it has not been established that the Respondent’s

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

Accordingly, pursuant to

Paragraph 4(i) of the Policy, the Panel denies the request that the domain name

<alfabet.com> be transferred to the Complainant.

Knud Wallberg

Sole Panelist

Dated: November

21, 2001