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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Peter Voigt v. Niels Korte

Case No. D2006-1460

 

1. The Parties

The Complainant is Peter Voigt, of Berlin, Germany.

The Respondent is Niels Korte, of Berlin, Germany.

 

2. The Domain Name and Registrar

The disputed domain name <rechtsanwalt.info> is registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2006. On November 15, 2006, the Center transmitted by email to register.com a request for registrar verification in connection with the domain name at issue. On November 15, 2006, Register.com, 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 November 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2006. The Response was filed with the Center on November 23, 2006.

The Center appointed Brigitte Joppich as the sole panelist in this matter on December 8, 2006. 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 a natural person. The Complainant applied for the trademark “Rechtsanwalt” (which is the German word for “attorney at law”) with the German Patent and Trademark Office on November 19, 2002. The trademark was registered on February 7, 2003, for goods and services set forth neither in the Complaint nor in the Response and therefore unknown to the Panel.

The Respondent also is a natural person. The domain name was registered on July 30, 2001. There is no information available on the use of the domain name. Furthermore, the Panel is unaware of whether the Respondent is in fact a member of the legal profession, an attorney at law.

The Parties were very reluctant to supply the Panel with the facts of this case. While the Panel is of the opinion that it may in principle visit the Internet site linked to the disputed domain name in order to obtain more information about the Respondent and the use of the domain name and that it may also undertake limited factual research into matters of public record (cf. Sociйtй des Produits Nestlй SA v. Telmex Management Services – WIPO Case No. D2002-0070 - <nestlefoods.com>), this is in the view of the Panel only if such assistance is needed in reaching a decision (cf. the Policy, paragraph 4(a), “in the administrative proceeding, the complainant must prove that each of these three elements are present”, and the Rules, paragraph 15, “a Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”). However, a decision may be found in this case without reverting to any additional information, and the Panel has therefore refrained from carrying out any searches.

 

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) The domain name is identical to the Complainant’s German trademark “Rechtsanwalt”.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name: The Respondent has registered the disputed domain name during the .info Sunrise Period. His application for the domain name was based on a Bulgarian trademark “Rechtsanwalt” which, according to the Complainant’s research, does not exist.

(iii) The domain name was registered in bad faith since the Respondent based his .info Sunrise application on a non-existing Bulgarian trademark. Furthermore, the domain name is also being used in bad faith. The Complainant contacted the Respondent on November 1, 2006, asking for the transfer of the domain name. In his reply the Respondent offered the domain name to the Complainant at a price of € 10,000. This indicates that the domain name was primarily registered for the purpose of selling it for valuable consideration far in excess of the Respondent’s out-of-pocket costs directly related to the domain name.

B. Respondent

The Respondent contends that the domain name was not registered and is not being used in bad faith. The Respondent admits that he is not able to prove the existence of the Bulgarian trademark on which he based the .info Sunrise application and claims that he was misled by a Bulgarian business partner when receiving the information on the Bulgarian trademark “Rechtsanwalt” prior to the Sunrise application for the disputed domain name. The Respondent further contends that the price of € 10,000 is a very moderate and fair price for the domain name in question and can therefore not constitute bad faith use.

 

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 or confusingly similar to the Complainant’s trademark, 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.

A. Identical or Confusingly Similar

The domain name fully incorporates the Complainant’s trademark without any additional elements.

It is well established that the specific top level domain (in this case .info) is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the Complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 - <magnumpiering.com> et al; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 - <rollerblade.net>).

If the complainant owns a registered trademark, it will satisfy the threshold requirement of having trademark rights; the goods and/or services the complainant’s trademark is registered for are irrelevant when finding rights in a mark (cf. Uniroyal Engineered Products, Inc. v. Nauga Network Services - WIPO Case No. D2000-0503 - <nauga.net> and <naugacase.com>; Thaigem Global Marketing Limited v. Sanchai Aree – WIPO Case No. D2002-0358 - <thaigem.net>; Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano – WIPO Case No. D2003-0661 - <parmigiano.org>).

Therefore, even without knowing further details of the Complainant’s trademark “Rechtsanwalt”, the Panel finds that the domain name is identical to such trademark and that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

As the Panel does not know whether the Respondent is an attorney at law and whether he uses the disputed domain name for his business activities, the Panel cannot find on any rights or legitimate interests possibly resulting therefrom.

The Complainant asserts that the Respondent cannot have rights or legitimate interests in the disputed domain name because he succeeded in registering the domain name during the .info Sunrise Period only by providing false information to the Registrar. In order to take advantage of Sunrise registration, a registrant was required to be the holder of a valid trademark. The Complainant argues that the Respondent did not hold such trademark and therefore misled the Registrar and Registry.

The Respondent does not argue against these allegations and concedes that he cannot prove any right in the Bulgarian trademark “Rechtsanwalt”. Furthermore, the Respondent does not provide evidence of any right or legitimate interest. He only states that the term “Rechtsanwalt” is the German word for “attorney at law” and that the domain name is therefore generic.

This case was brought forward under the UDRP and not under the .info Sunrise Challenge Policy which was established to handle disputes concerning the eligibility to register a domain name during or pursuant to the .info Sunrise Period. The UDRP procedure is not meant to and cannot provide a remedy against inaccurate representations made during the domain name registration process (cf. Excmo. Cabildo insular de Tenerife and Promocion Exterior de Tenerife, S.A. v. Jupiter Web Services Limited, WIPO Case No. D2003-0525 - <tenerife.info>). The Panel wishes to point out, however, that the present decision is not to be understood as an approval of the Respondent’s inaccuracy.

The Respondent might yet rely on legitimate interests in the domain name because of its generic content. In trademark terms, the domain name <rechtsanwalt.info> is to be considered merely descriptive of certain services, or generic. As the commercial value of descriptive or generic domain names has increased, many people have seized the opportunity to register and sell such domain names to the highest bidder in principle, such a practice (i.e. the sale of the domain name itself) may constitute use of the domain name in connection with a bona fide offering of goods or services (cf. Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016 - <allocation.com>; General Machine Products Company, Inc. v. Prime Domains (a/k/a Telepathy, Inc.), National Arbitration Forum Case No. FA 92531 – <craftwork.com>; Shirmax Retail Ltd. v. CES Marketing Group, Inc., E-Resolution Case No. AF-0104 - <hyme.com>; CAR TOYS, INC. v. INFORMA UNLIMITED, INC., National Arbitration Forum Case No. FA 93682 - <cartoys.net>; General Machine Products Company, Inc. v. Prime Domains (a/k/a Telepathy, Inc.), National Arbitration Forum Case No. FA 92531 - <craftwork.com>; Robert Chestnutt v. Jennifer Tumminelli, WIPO Case No. D2000-1758 - <racegirl.com>; COMING ATTRACTIONS, LTD. v. COMINGATTRACTIONS.COM, National Arbitration Forum, Case No. FA 94341 - <comingattractions.com>; John Fairfax Publications Pty Ltd v. Domain Names 4U and Fred Gray, WIPO Case No. D2000-1403 - <financialreview.com>).

Even though the Respondent does not supply the Panel with any circumstances giving evidence of rights or legitimate interests under the Policy, paragraph 4(c), but only states that the domain name consists of a generic term, the Panel consequently finds that the Respondent has a legitimate interest in the domain name in this specific case due to its generic nature.

C. Registered and Used in Bad Faith

As the Panel found that the Respondent has established a legitimate interest in the domain name, it need not make a finding concerning bad faith use and registration. However, the Panel wishes to point out the following:

Bad faith registration by the Respondent does not already stem from the fact that he based his .info Sunrise application on a non-existing trademark. As already stated above, the Panel has no authority under the UDRP to decide whether or not the Respondent’s domain name registration during the .info Sunrise Period was made in bad faith.

Nor is bad faith registration and use indicated in this case by the Respondent’s offer (upon request) of the domain name to the Complainant for “a compensatory payment of 10,000 EUR plus expenses”. The Complainant states and provides evidence that the domain name was registered on July 30, 2001, while the Complainant’s trademark was applied for only on November 19, 2002. Therefore, the Respondent could not have contemplated the Complainant’s right at the time of the domain name registration and the domain name could not have been registered with the intent to sell it “to the Complainant who is the owner of the trademark”, as required under the Policy, paragraph 4(b)(i).

Finally, the generic content of the domain name shows that the domain name was not registered in bad faith. Considering that “Rechtsanwalt” is the generic word in German for “attorney at law” and that the Respondent is a German individual, the Respondent could not reasonably expect that the registration of the domain name might infringe trademark rights of a third party (cf. Notar Eiendom AS v. LIPnet, WIPO Case No. D2000-0170 - <notar.com> and <notar.org>; LIBRO AG v. NA Global Link Ltd., WIPO Case No. D2000-0186 - <ibro.com>).

As a result, the Panel finds that the Complainant also failed to prove that the Respondent registered and used the domain name in bad faith.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Brigitte Joppich
Sole Panelist

Dated: December 22, 2006