Ideenhaus Kommunikationsagentur GmbH v. Ideenhaus GmbH

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Ideenhaus Kommunikationsagentur GmbH v. Ideenhaus GmbH

Case No. D2004-0016

1. The Parties

The Complainant is Ideenhaus Kommunikationsagentur GmbH, Nürnberg, of Germany, represented by Dr. Cöster & Partner, Germany.

The Respondent is Ideenhaus GmbH, Hamburg of Germany.

2. The Domain Name and Registrar

The disputed domain name <ideenhaus.com> (the "Domain Name") is registered with Tucows, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 9, 2004. On January 9, 2004, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the domain name at issue. On January 12, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally

notified the Respondent of the Complaint, and the proceedings commenced on January 26, 2004.

In accordance with the Rules, paragraph 5(a), the due date for Response was

February 15, 2004. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on February 16, 2004.

The Center appointed Brigitte Joppich as the sole panelist in this matter on

February 18, 2004. The Panel finds that it was properly constituted.

The Panel has submitted the Statement of Acceptance and Declaration of Impartiality

and Independence, as required by the Center to ensure compliance with the Rules,

paragraph 7.

4. Factual Background

The Complainant is an advertising agency operating in Germany and all over

Europe. It was founded and registered in the commercial register in February

1992, under the name "Das Ideenhaus Werbeagentur GmbH". It changed

its business name on May 16, 2000, into "Ideenhaus Kommunikationsagentur

GmbH". The Complainant is the owner of the Community Trademark no. 001715598

("ideenhaus") with priority of June 20, 2000, registered

on August 14, 2001, for products and services in classes 16, 35 and

41.

The Respondent was founded on December 22, 1997, and was inter alia

acting in the field of advertisement and promotion. The Domain Name was registered

on January 15, 1999, on behalf of the managing director of the Respondent.

By judgment of December 12, 2001, on request of the Complainant,

the Regional Court of Nürnberg-Fürth, Germany ordered the Respondent

to restrain from offering its services under the company name "Ideenhaus

Consulting Gesellschaft zur Verwertung geistigen Eigentums" and under the

Domain Name (file no. 3 O 10290/00).

In January 2002, the Complainant found out that the Domain Name was no longer

registered in the name of the managing director but in the name of the Respondent

itself.

With reference to the judgment of the Regional Court of Nürnberg-Fürth

the Complainant asked the Respondent to transfer of the Domain Name to the Respondent

by letters dated January 25, 2002, and February 14, 2002.

The Respondent did not reply.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in the Policy,

paragraph 4(a), are given in the present case, i.e.

(i) the Domain Name is identical to Complainant’s trademark;

(ii) the Respondent has no rights or legitimate interests in respect of the

Domain Name;

(iii) the Domain Name was registered and is being used by the Respondent in

bad faith:

- upon Complainant’s information, the Respondent is no longer using its office

in Albert-Schweitzer-Ring, Hamburg, while it is still registered in the commercial

register and the WhoIs-database with this address. Both email addresses mentioned

in the WhoIs-database seem to be invalid as several transmissions to the admin-c

and tech-c have failed;

- at present no content is offered under the Domain Name. The Domain Name was

offered for sale on the website of <sedo.de> on August 19, 2003,

at a price of USD 2,500;

- the Respondent registered the Domain Name only to prevent the Complainant

from reflecting the Community Trademark "ideenhaus" in a corresponding

domain name and to hinder the Complainant from doing its business.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, paragraph 4(a) the Complainant must prove that each of the

following three elements are present:

(i) the Domain Name is identical with or confusingly similar to a trademark

in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The domain name <ideenhaus.com> is identical to the trademark in which

the Complainant has rights as the global top level domain name identification

<.com> has no distinctive function. The Complainant has satisfied the

requirements of the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Policy, paragraph 4(c) sets out three illustrative circumstances as examples,

which, if proved by the Respondent, shall demonstrate its rights to or legitimate

interests in the Domain Name for purposes of the Policy, paragraph 4(a)(ii),

i.e.

(i) before any notice to the Respondent of the dispute, the use by the Respondent

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;

or

(ii) the Respondent (as an individual, business or other organization) has

been commonly known by the Domain Name, even if the Respondent has acquired

no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the

Domain Name, without intent for commercial gain to misleadingly divert customers

or to tarnish the trademarks or service marks at issue.

Rights of a respondent to, or legitimate interests in a domain name under the

Policy, paragraph 4(c) are based on various types of (active or passive) use

of a name. It is generally acknowledged that rights in (business) names come

into existence with the first use of a name and cease to exist when use of such

name is given up. It is therefore the Panel’s opinion that protection of legitimate

interests under the Policy, paragraph 4(c) includes past facts and circumstances

only if they subsist, i.e. the name must still be used (actively or passively)

when the dispute arises. As a result, use "before any notice to the Respondent

of the dispute" as in the Policy, paragraph 4(c)(i) must be interpreted

as use immediately preceding the dispute.

The "dispute" means the difference of opinion between the Complainant

and the Respondent leading to the administrative proceeding under the Policy.

In the present case, the question is whether the Respondent used the Domain

Name or a name corresponding to the Domain Name in connection with a bona fide

offering of goods and services just before receipt of the Complainant’s letter

dated January 25, 2002. As the prohibitory action against the Respondent

was filed on December 5, 2000, already, no good faith offering of

services by the Respondent under its company name "Ideenhaus" or the

Domain Name is conceivable after such date. As a result, neither the Domain

Name nor a name corresponding to the Domain Name were used by the Respondent

in connection with a bona fide offering of goods and services before notice

of the dispute.

No facts have been submitted that Respondent was commonly known by the Domain

Name or that any legitimate non-commercial or fair use was made by the Respondent.

The Panel therefore sees no rights of the Respondent to or legitimate interests

in the Domain Name and finds that the Complainant has satisfied the requirements

of the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b) sets out four illustrative circumstances, which

for purposes of the Policy, paragraph 4(a)(iii) shall be evidence of the registration

and use of the Domain Name in bad faith, including

(i) circumstances indicating that the Respondent has registered or acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who is the owner

of the trademark or service mark or to a competitor of that complainant, for

a valuable consideration in excess of your documented out-of-pocket costs directly

related to the domain name; or

(ii) where the Respondent has registered the Domain Name in order to prevent

the Complainant as owner of the trademark or service mark from reflecting the

mark in a corresponding domain name, provided that the Respondent has engaged

in a pattern of such conduct; or

(iii) where the Respondent has registered the Domain Name primarily for the

purpose of disrupting the business of a competitor.

The Respondent did not register the Domain Name directly with the registrar

but became the new owner by way of a transfer after acquiring the Domain Name

from its managing director. It is the Panel’s view that this does not mean that

the Respondent has not "registered" the Domain Name within the meaning

of the Policy, indeed, there is no reason to differentiate between a direct

registration and registration after a transfer (see also Dixons Group Plc

v Mr. Abu Abdullaah WIPO Case No. D2000-1406,

and Société Air France v. Vladimir Federov WIPO

Case No. D2003-0639). The Domain Name was in fact "registered"

within the meaning of the Policy after it had been acquired by the Respondent

between June 6, 2001, and January 17, 2002.

The Respondent had active knowledge of the Complainant’s trademark rights when

he acquired the Domain Name because the action against him before the German

regional court was at least pending, if not decided. Therefore, the Panel finds

that this acquisition (registration) occurred in bad faith.

As far as the panel is aware, the Respondent did not actively use the Domain

Name after its acquisition due to the pending action and the later judgment.

However, it is common understanding that the circumstances of a case may be

such that even non-use constitutes "bad faith use" or, as it has often

been phrased following the Telstra case "inaction is within the concept"

(see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO

Case No. D2000-0003). Paragraph 4(b) of the Policy is intended to be illustrative

rather than exclusive.

In the present case, the Panel finds that where (1) a domain name cannot be

used by the Respondent according to a final judgment against such Respondent,

(2) the Respondent offered the Domain Name for sale on the Internet at a price

of USD 2,500, (3) the Respondent failed to submit a response in the administrative

proceeding under the Policy, (4) the Respondent is no longer using its registered

office, and (5) neither the administrative contact nor the technical contact

can be contacted via email, the Domain Name is used in bad faith.

Therefore the Panel finds that the Complainant has satisfied the requirements

of the Policy, paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, in accordance with Policy, paragraphs 4(i) and

Rules, paragraph 15, the Panel orders that the domain name <ideenhaus.com>

be transferred to the Complainant.

Brigitte Joppich

Sole Panelist

Dated: February 25, 2004