WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
shopping24 Gesellschaft für multimediale Anwendungen mbH v. Christian Rommel
Case No. D2000-0508
1. The Parties
Complainant is shopping24 Gesellschaft für multimediale Anwendungen mbH, Haldesdorfer Strasse 21, D-22179 Hamburg, Germany.
Respondent is Christian Rommel, 1506 The Centre Mark, 287 Queens Road Central, Hong Kong, H-9999 China.
2. The Domain Names and Registrar
The domain names at issue (the Domain Names) are:
The registrar of the Domain Names is Global Village GmbH Communications Services, Mehrumer Strasse 16, D-46562 Voerde, Germany.
3. Procedural History
On May 26, 2000, the Complainant filed a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center], receipt of said Complaint being acknowledged by the Center in a facsimile to the Complainant dated May 30, 2000, a copy of which was also sent to the Respondent by e-mail. Included with the Acknowledgement of Receipt of Complaint was a Complaint Deficiency Notification wherein the Center informed the complainant that the Complaint was deficient in two manners: the Complaint had not been submitted in electronic format and the requisite four copies of the Complaint had not been submitted to the Center.
In a letter dated the same date the Center informed the registrar, Global Village GmbH Communications Services, that a complaint had been submitted to the Center regarding the Domain Names. On June 14, 2000, the Registrar confirmed that the Domain Names had been registered via the Registrarís registration services and that the Respondent was the current registrant of the Domain Names.
The Center then proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Dispute Resolution Policy [hereinafter referred to as the ICANN Rules] and the World Intellectual Property Organization Supplemental Rules for Uniform Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on June 2000.
The panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
In a letter dated June 12, 2000, the Center informed the Respondent of the commencement of the proceedings as of June 12, 2000, and of subsection 5(a) of the ICANN Rules, which grants the respondent 20 days to respond to the Complaint. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings.
In a letter July 10, 2000, the Center informed the Respondent that he was in default pursuant to the ICANN Rules and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant. A three-member Panel was appointed on July 31, 2000, consisting of Hugues Richard, the Presiding panelist, with Dr. Thomas Legler and Prof. Peter Chrocziel, serving as co-panelists. The Panel was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions have been received formally by the Panel from either party since its formation. However, it was felt that it would prove difficult to render a decision on or prior to August 14, 2000, the Panel therefore requested an extension until August 22nd, 2000, which was granted. The Panel is unaware of any other proceedings, which may have been undertaken by the parties or others in the present matter.
4. Factual Background
The Complainant is a limited liability company according to the laws of Germany and is a wholly owned subsidiary of the large German mail order firm Otto Versand (GmbH & Co). It carries on business under the trade name shopping24 Gesellschaft für multimediale Anwendungen mbH. The Complainant has been operating an Internet shopping mall under the name of shopping24 since October 1997.
The Respondent maintains a website, www.domains-a-la-carte.com, where a large number of domain names are offered for sale.
As indicated at Annex C to the Complaint, Otto Versand GmbH & Co. is the registered owner of the German Trademark No. 39712722 for the mark "shopping24" since May 20, 1997, (in classes 36, 38, 39, 41 and 42).
The Complainantís Internet shopping mall is accessible via the Internet addresses www.shopping24.com and www.shopping24.de and currently offers a wide range of goods through 22 subordered "shops".
According to the Whois database the Respondent registered the Domain Names "home-shopping24.com", "e-homeshopping24.com", "internet-shopping24.com", and "online-shopping24.com" on March 27, 2000, and "cyber-shopping24.com" and "cybershopping24.com" on April 3, 2000.
5. Partiesí Contentions
The Complainant alleges at paragraph 12(1)(ii) that the Domain Names are confusingly similar to the Complainantís trademark "shopping24". In this regard, the Complainant contends that the overall impression of the Domain Names has to be taken into account and that "shopping24" stands out in all of the Domain Names given that the prefixes "home", "cyber", "e-home", "internet" and "online" have only a descriptive function. Therefore, the Complainant continues, the use of these prefixes are not adequate to avoid confusion owing to their lack of distinctiveness.
The Complainant continues at paragraph 12(2) by alleging that the Respondent has no rights in the Domain Names and that the Respondent is not engaged in any businesses, which are promoted via the Domain Names.
Finally, at paragraph 12(3) of the Complaint the Complainant alleges that the Respondent has registered and uses in bad faith the Domain Names as links to the website domains-a-la-carte where the Domain Names are offered for sale.
The Respondent failed to file a response with the Center within the foreseen delays and has failed to file a response since.
6. Discussion and Findings
Pursuant to the Uniform Domain Name Dispute Resolution Policy [hereinafter the ICANN Policy] the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:
i) that the Domain Name is identical or confusingly similar to a trademark in which the Complainant holds rights;
ii) that the Respondent has no legitimate rights or interests in the Domain Name; and
iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
Identical or Confusingly Similar to Trademark
The panel is of the opinion that the evidence provided by the Complainant supports a finding that the Complainant has registered the trademark "shopping24". The panel is also of the opinion that the Complainant has met the burden of proof as established by paragraph 4(a)(i) of the ICANN Policy regarding identical or confusingly similar trademarks, however the panel feels that some discussion is in order regarding this matter.
It is perhaps obvious that if the Respondent had registered shopping24.com as a domain name that there would have been adequate grounds for finding that such a domain name is confusingly similar to the registered trademark of the Complainant. The question that the Panel is therefore obliged to answer is whether or not the combination of an obviously confusing domain name with the prefixes "cyber", "home", "e" and "internet" also provides grounds for a finding of confusion sufficient for the purposes of paragraph 4(a)(i) of the ICANN Policy.
In general it can be said that there is no set standard which may be used for finding confusion between similar trademarks. A finding of confusion depends on the assessment of all surrounding circumstances.
In decisions by the various panels constituted by the World Intellectual Property Organization to resolve domain name disputes there has been some discussion of what constitutes confusion for the purposes of paragraph 4(a)(i) where "strong" registered trademarks and domain names already in use had been joined together with generic prefixes or suffixes to form a new domain name (sometimes referred to as a derivative). Although the panel is well aware that the principle of stare decisis does not apply in these proceedings and that he is not bound by decisions reached by earlier panels, this panel is of the opinion that a review of some the cases provides some support for the conclusions of this decision.
In Quixtar Investments, Inc. v. Dennis Hoffman, Case No. D2000-0253 the panel found that the domain name formed by appending the word "mortgage" with the Complainantís registered mark "quixtar" to form quixtarmortgage was confusingly similar. In Yahoo! Inc. v. Eitan Zviely, et al., Case No. D2000-0273, the panel found that the combination of the Complainantís registered mark "yahoo" with a number of generic words, such as city names or single and two letter abbreviations for country names, gave rise to a domain name which was confusingly similar to the registered mark of the Complainant. The panel is well aware that the marks "quixtar" and "yahoo" are perhaps more fanciful in nature than the mark "shopping24", which is itself formed through the concatenation of the number 24 to the generic term "shopping". However, in this regard the panel has decided to accept the Complainantís contention that shopping24 is of an above average distinctive nature, a contention that the Complainant bases partially on the large number of hits received on the www.shopping24.com website. Although the Respondentís failure to respond does not relieve the Complainant of its burden of proving confusion, it does permit the panel to take the Complainantís contentions as true and to draw appropriate inferences.
The panel is also of the opinion that there is a serious risk that the Domain Names will be used by the Respondent or his assignees in the future in a confusing manner. In this regard, the panel finds that, given the general descriptive nature of such prefixes "cyber", "home", "e" and "internet", especially when used as a portion of a domain name, the Domain Names would have a prime value when used as a terminating address for a websites offering a generalized selection of goods for sale. Therefore, the likely use by the Respondent or his assignees would be in conjunction with a business the same or similar to that of the Complainant.
No Rights or Interest
Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the respondent has any rights or legitimate interests vested in the Domain Names. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Names; and (iii) legitimate non-commercial or fair use of the Domain Names.
No evidence was provided by the Respondent to dispute the Complainantís contention that the Respondent possesses no rights to the Domain Names. In this regard the panel is of the opinion that the Respondent has failed to establish a legitimate right or interest under paragraph 4(c)(ii) and (iii) in that there is no evidence to support a finding that the Respondent is commonly known by the Domain Names nor is there any evidence that the Respondent has a legitimate non-commercial or fair use of the Domain Names. Additionally, the panel finds that: the Respondent is not a licensee of Complainant, nor has he received any permission or consent to use the mark "shopping24"; the Complainant has prior rights in that mark which precede Respondentís registration of the Domain Names; and the Respondent is not (either as an individual, business or other organization) commonly known by the names shopping24, home-shopping24, e-homeshopping24, internet-shopping24, online-shopping24, cyber-shopping24, or cybershopping24.
The panel is also of the opinion that the Respondent has no legitimate right or interest under paragraph 4(c)(i), i.e. that by merely offering the Domain Names for sale via the domain-a-la-carte website the Respondent has failed to demonstrate the existence of the use of, or preparation to use, the Domain Name in connection with a bona fide offering of goods or services. However, the panel is of the opinion that his motivation in this regard warrants discussion.
In decisions by the various panels constituted by the World Intellectual Property Organization to resolve domain name disputes there has been some discussion of what constitutes a bona fide offering of services for the purposes of paragraph 4(c)(i). In Allocation Network G.m.b.H. v. Steve Gregory, Case D2000-0016, the panel found that offering of a generic domain name solely for sale could in principle be considered in itself a bona fide offering of goods or services for the purposes of paragraph 4(c)(i). However, this decision should be read in conjunction with the later decision rendered in LIBRO AG v. NA Global Link Limited, Case D2000-0186, where the panel found that the mere speculative idea for a bona fide business application of a generic domain name does not fall within paragraph 4(c)(i). They go on to find that the mere speculation in generic domain names without showing any demonstrable evidence of plans for a bona fide use is not sufficient to prove legitimate interest in a domain name.
Furthermore, the panel finds it appropriate in this regard to draw an adverse inference from the Respondentís failure to reply to the Complaint and detail any legitimate rights or interests he may have in the Domain Names of the type defined in paragraph 4(c) of the ICANN Policy.
Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent on the Complainant to prove that the Respondent has registered and is using the Domain Name in Bad Faith.
The panel is of the opinion that the circumstances indicate clearly that the Respondent registered the Domain Names primarily for the purpose of selling their registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of out-of-pocket costs directly related to the Domain Names. Therefore, the panel is of the opinion that there are adequate grounds for a finding that the Respondent registered the Domain names in bad faith. Furthermore, the panel is also of the opinion that by continuing to offer the Domain Names for sale via the domain-a-la-carte website there are adequate grounds for a finding of bad faith use of the Domain Names.
The panel is also of the opinion that the Respondent is likely of German origin, notwithstanding the Hong Kong address, and is therefore, on the balance, aware of the notoriety of the Complainants mark "shopping24" and the use of the mark as domain name for the Complainantís commercial website. The panel is of the opinion that this shows some degree of opportunistic bad faith on behalf of the Respondent in both registration and use.
For the foregoing reasons, the panel decides:
Accordingly, the panel finds that the Complaint should be allowed and the Domain Names:
be transferred to the Complainant and so directs Global Village GmbH Communications Services to do so forthwith.
Hugues G. Richard
Dr. Thomas Legler Peter Chrocziel
Dated: August 22, 2000