Dr. August Oetker Nahrungsmittel KG v. Reza, Mohamed T. aka Reza, Mohhamed T.; The Tower; Yanisco Limited

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Dr. August

Oetker Nahrungsmittel KG v. Reserved For Client

Case No.

D2002-0371

1. The Parties

The Complainant in this

administrative proceeding is Dr. August Oetker Nahrungsmittel KG, a limited

partnership existing and incorporated under the laws of Germany, registered

in the commercial register of the "Amtsgericht" of Bielefeld, and

having its registered office and principal place of business at Lutterstrasse

14, in Bielefeld, Germany.

The Respondent is Reserved

For Client, Yanisco Limited, Nicosia Tower, Nicosia, Cyprus.

2. The Domain Name and

Registrar

This dispute concerns the

domain names: <oetker.net> and <oetker.org> (both

jointly referred to as the "Domain Names", either domain name referred

to as the "Domain Name").

The registrar with

whom the Domain Names are registered is: Tucows Inc., 96 Mowat Avenue, Toronto,

Ontario, Canada (the "Registrar").

The Domain Names were initially

registered with the registrar in question on June 18, 2000.

3. Procedural History

On April 19, 2002, the

World Intellectual Property Organization Arbitration and Mediation Center ("the

Center") received the Complaint by e-mail; on April 25, 2002 the Center

received the hard copy version.

On April 23, 2002, the

Center sent a Request for Registrar Verification to the Registrar and on the

same date, the Registrar responded, (i) confirming that the Domain Names

are registered with the Registrar, (ii) confirming that the Respondent is

the current registrant of the Domain Names, (iii) providing details of the Administrative

contact, Technical Contact and Zone Contact for said registrations, (iv) confirming

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

is in effect in respect of both registrations, (v) indicating that, as far as

the Registrar is concerned, the said registrations were "on hold"

and (vi) indicating that the language of both registration agreements is English.

In accordance with Paragraph

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

Rules") and Paragraph 5 of the WIPO Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy ("the Supplemental Rules") the Center

reviewed the Complaint to ascertain whether it satisfied the formal requirements

of the Policy, the Rules and the Supplemental Rules and that payment in the

required amount had been made to the Center by the Complainant.

On April 30, 2002, the

Center sent a Notification of Complaint and Commencement of Administrative Proceeding

to the Complainant and to the Respondent. Said Notification was sent to the

Respondent by courier (with attachments) and by e-mail (Complaint without attachments).

A copy of said Notification was sent to the company acting as "broker"

for the Domain Names (by e-mail) as well as to the individual being the Administrative,

Technical and Billing Contact of the Respondent by e-mail (without attachments).

Further copies of said Notification were sent to the Internet Corporation for

Assigned Names and Numbers ("ICANN") and to the Registrar by e-mail

(without attachments).

Said Notification of Complaint

and Commencement of Administrative Proceeding inter alia advised the

Respondent that an Administrative Proceeding in accordance with the Policy had

commenced on April 30, 2002, and that the Respondent was required to submit

a Response to the Center on or before May 20, 2002.

On May 13, 2002, the individual

being the Administrative, Technical and Billing Contact of the Respondent informed

the Center by e-email that he was willing to transfer the Domain Names to the

Complainant. On the same date, the Center informed both the parties that the

Center was not allowed to get involved in any settlement negotiations between

the parties. On May 24, 2002, Complainant informed the Center that no settlement

had been reached and requested the administrative proceeding not to be suspended.

On May 24, 2002, a Notification

of Respondent's default was sent by the Center to the Respondent (by e-mail

and by courier), to the individual being the Administrative, Technical and Billing

Contact of the Respondent (by e-mail and by registered letter) as well as to

the Complainant (by e-mail).

On June 10, 2002, after

having received a Statement of Acceptance and Declaration of Impartiality and

Independence from him in accordance with Paragraph 7 of the Rules, the Center

proceeded to appoint Mr. Michael Bernasconi as Administrative Panel (Sole Panelist).

On the same day, a Notification of Appointment of an Administrative Panel and

Projected Decision Date was sent to the Complainant and the Respondent as well

as to the individual being the Administrative, Technical and Billing Contact

of the Respondent. Also on the same day, the case file was transmitted by email

and by courier to the Administrative Panel. In terms of Rule 15(b), in the absence

of exceptional circumstances, the Panel was required to forward its decision

by June 24, 2002.

4. Factual Background

Complainant is a manufacturer

and seller of various food products, including baking powder and other baking

ingredients, frozen products and many others. "Oetker" is (part of)

the trading name, the trademarks (including service marks) and of the company

name of the Complainant. The word "Oetker" is also the name of the

family of the founder of the Complainant.

The Complainant states

that the Respondent had no justification in adopting the Domain Names that have

no connection with the Respondent. The Complainant notes that the registrant

cannot even be identified by the name in which it is registered i.e. "Reserved

For Client", although it is believed that the individual being the Administrative,

Technical and Billing Contact of the Respondent, Mr. Mohammed T. Reza,

is the owner of the Domain Names.

5. Parties’ Contentions

A. Complainant

The business of Complainant

was founded in 1891 by Dr. August Oetker, who commenced the sale of reliable

baking-powder manufactured in his pharmacy, which later was replaced by his

factory. Today, Complainant is engaged in selling and distributing in many countries

of the world a wide range of food products.

The disputed Domain Names

are completely identical to the company name of the Complainant as well as to

the trademarks under which the Complainant sells, markets and distributes its

products.

It is asserted that the

Respondent is, de facto, an individual residing in Saudi-Arabia who registered

the Domain Names only a few weeks after the filing by Complainant of a trademark

application in that country. Further, Respondent never used the Domain Names

but offered them for sale through a domain name broker.

The Complainant alleges

that the Domain Names are currently offered for sale. Further, the Respondent

himself allegedly offered the Domain Names for Sale to the Complainant. The

Complainant asserts the Respondent has registered the Domain Names and was making

offer for their sale soon after registration without having used the Domain

Names for any bona fide purpose. The Complainant also claims the name of the

registrant, namely Reserved For Client, is itself suggestive of its intention

of selling the Domain Names.

B. Respondent

No Response was received

from the Respondent. However, the individual registered with the Registrar as

being the Administrative, Technical and Billing Contact, confirmed, implicitly,

being the owner of the Domain Names and acknowledged a willingness to transfer

them to the Complainant.

6. Discussion and Findings

According to Paragraph

4(a) of the Policy, the Complainant must prove that:

(i) The domain name

registered by a Respondent 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.

(i) Identical or Confusing

Similarity

It is undisputed that the

Complainant’s company name is "Dr. August Oetker Nahrungsmittel KG".

Further, it is undisputed that the Complainant is the owner of "Oetker"

trademarks.

In the view of the Sole

Panelist, the disputed Domain Names are identical to the Complainant’s trademarks.

Further, being that the Domain Names are also identical to the peculiar part

of the company name of Complainant, it is highly probable that the disputed

Domain Names would be associated in the public’s mind with the Complainant and

its trademarks.

The Complainant has therefore

succeeded in proving that a risk of confusion is very likely. The first criterion,

as per Paragraph 4(a) of the Policy, is established.

(ii) No Rights or Legitimate

Interests

It is undisputed that Complainant

has not authorized Respondent to use Complainant’s trademarks nor to seek the

registration of a domain name incorporating said trademarks.

Further, the Respondent

allegedly is trying to sell the Domain Names.

In these circumstances,

the Panel concludes Complainant has established that Respondent has no rights

or legitimate interests in respect of the disputed Domain Names. The second

requirement of Paragraph 4(a) of the Policy is therefore satisfied.

(iii) Bad Faith

On the third element of

Paragraph 4(a) of the Policy, i.e. the issue of a bad faith registration, it

is undisputed that the Respondent knew of the Complainant, its products and

its trademarks, prior to registering the disputed Domain Names. Indeed, the

word "Oetker" has no meaning in any language of the earth. The fact

that the Respondent did register the disputed Domain Names only a few weeks

after the filing by Complainant of a trademark in Saudi Arabia and thereafter

put the Domain Names on sale is to be considered a clear sign of bad faith.

As a matter of fact, according

to Paragraph 4(b) of the Policy, for the purposes of the third element of Paragraph

4(a), circumstances indicating that a registrant has registered a domain name

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

domain name to a Complainant who is the owner of the trademark or service mark

or to a competitor of that Complainant, for valuable consideration in excess

of the documented out-of-pocket costs directly related to the domain name, if

found by a Panel to be present, shall be evidence of the registration and use

of a domain name in bad faith.

In the present case it

is undisputed that the Domain Names were and are offered for sale. Additionally,

it is also undisputed that during this Administrative Proceeding the Respondent

offered the Domain Names to the Complainant, by asking a reimbursement allegedly

of an amount well beyond the registration costs.

Under these circumstances,

and taking into consideration the fact that the Respondent has not provided

any evidence whatsoever of any actual or contemplated legitimate, good faith

use by himself of the Domain Names, the Panel considers that the Respondent

has registered and used the Domain Names in bad faith.

The third requirement of

Paragraph 4(a) of the Policy is therefore satisfied.

7. Decision

Therefore, and in consideration

of the Complainant’s compliance with the formal requirements for this domain

name dispute proceeding, of Respondent’s default in submitting a Response, to

the factual evidence and legal contentions that were submitted, to the confirmation

of the presence of each of the elements contemplated in Paragraph 4(a)(i)(ii),

and (iii) of the Policy, and on the basis of the statements and documents submitted

and in accordance with the Policy, the Rules and other applicable rules and

principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of

the Rules, it is found:

(1) that the Domain

Names are confusingly similar to the Complainant’s trademarks and company name;

(2) that the Respondent

has no rights or legitimate interests in respect of the Domain Names; and

(3) that the Domain

Names have been registered and are being used in bad faith by the Respondent.

Accordingly, with specific

reference to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the

Administrative Panel directs that the disputed Domain Names <oetker.net>

and <oetker.org> shall both be transferred to Complainant.

Michael

A.R. Bernasconi

Sole Panelist

Dated: June

28, 2002

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