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ADMINISTRATIVE PANEL DECISION
Haji GmbH v. Worldmarket Limited
Case No. D2006-0943
1. The Parties
The Complainant is Haji GmbH, Hamburg, Germany, represented by Withцft & Terhaag Rechtsanwaltspartnerschaft, Germany.
The Respondent is Worldmarket Limited, London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <haji.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2006. On July 26, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name in dispute. On July 26, 2006, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 8, 2006. The Center verified that the Complaint together with the amendment to 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 August 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2006.
The Center appointed Ross Carson as the sole panelist in this matter on September 12, 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 company registered in Hamburg, Germany, on December 18, 2003. Ali Eghbal and Gregor vom Endt were appointed as the sole two managing directors of the Complainant. Annex 1 to the Complaint, extract from the German Commercial Register. A partnership comprised of Ali Eghbal and Gregor vom Endt are the owners of numerous trademark registrations for or including the trademark HAJI registered in Germany and other countries including the United States of America and Australia. The trademarks registered in Germany include
German word mark HAJI, Registration No. 30332773.1, registered, November 20, 2003.
German word mark HAJI, Registration No. 30429615.5, registered, June 18, 2004.
German word/Picture mark HAJI, Registration No. 30430037.3, registered, August 12, 2004.
International word mark HAJI, Registration No. 821366, registered, November 28, 2003.
International word/ picture mark HAJI, Registration No. 862677, registered, June 18, 2005.
The trademarks are registered for goods in Nice Classification, class 32 and class 33 among others. Annex 4 to the Complaint.
Pursuant to a trademark license agreement dated June 20, 2005 the Licensors, the trademark owners, granted a license to the Complainant to use the trademark HAJI and produce and distribute products carrying the name “haji” worldwide. The trademark license is exclusive and the licensors agree not to grant licenses to any third party. Licensee is allowed to grant sublicenses to a third party only with the prior written permission by licensees. The license has a duration of three years and may be renewed for additional successive periods of two years, unless terminated by either party upon written notice to the other party. The agreement is to be governed by the laws of the Federal Republic of Germany. The Trademark License Agreement is silent as to the right of the licensee to commence legal proceedings based on the trademark registrations for or including the trademark HAJI. Annex 5 to the Complaint.
A search of Tucows Whois search site on September 14, 2006, discloses that the Respondent is the Registrant of the domain name which is in dispute. The domain name <haji.com> was created on February 2, 1997. The record was last updated on October 27, 2005 and the record expires on September 20, 2010.
5. Parties’ Contentions
A.1 Identical or Confusingly Similar
The Complainant submits that only the second-level domain “haji” is of importance in determining identical or confusing similarity. BIC Deutschland GmbH & Co KG v. Paul Tweed, WIPO Case No. D2000-0418. The Complainant submits that the domain name in dispute is identical to the trademarks for or including the trademark HAJI of which the Complainant is the exclusive licensee.
A.2 No right or Legitimate Interests in respect of the Domain Name
The Complainant submits that the Respondent neither has rights nor legitimate interests in respect of the domain name that is the subject of the Complaint.
The domain name in dispute is not used by the Respondent and neither goods nor services have been offered under this domain name.
The Respondent does not own a trademark consisting either of the term “haji” or the term “haji” in connection with any other terms. There are neither German nor European or even IR trademarks in favour of the Respondent in existence.
The Respondent also does not have an unregistered trademark, as he is not commonly known under this name but under the term “world market”.
The Respondent also doesn’t make any non-commercial or fair use of the domain name, as there is no website which is displayed when trying to access this domain name.
A.3 Registered and Used in Bad Faith
The Complainant submits that the domain name <haji.com> was registered and is used by the Respondent
(1) for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark; and
(2) in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.
The Complainant submits that the facts are that the domain <haji.com> is not in active use. It is neither used to display a website nor is the domain name in any way routed to a web server. Thus, the domain is completely unused and is neither in use for displaying a website or for e-mail purposes. It is not even entered correctly into the DNS System. Traceroute for the domain <haji.com> taken on July 14, 2006. Annex 6 to the Complaint.
The Complainant further submits that it has to be assumed that the domain name was only registered by the Respondent to block this domain name and prevent the Complainant from reflecting the mark in a corresponding domain name.
The Respondent therefore can not have any legitimate interest in the domain name when it was first registered. Obviously, the Respondent had no plan of what to do with this domain name and just registered it for blocking purposes.
The domain is not used in any way so that the Respondent can in no way actively conduct his business on the basis of this domain name. Thus, the domain remains unused in his portfolio of domain names out of which the Respondent is most likely to make an offer to the Complainant if the Complainant would ask for a price for this domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) 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) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The fact that the Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant. The failure of the Respondent to file a Response results in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy the Complainant must establish rights in a trademark and secondly that the domain name in dispute is confusingly similar to the trademark in which the Complainant has rights.
The Complainant is a corporation which is the exclusive licensee of the trademark registrations for or including the trademark HAJI. The trademarks for or including HAJI, some of which are described in paragraph 4 above, are owned by a partnership comprised of Ali Eghbal and Gregor vom Endt. Ali Eghbal and Gregor vom Endt are also the sole managing directors of the Complainant corporation.
Pursuant to the license agreement between the partnership and the Complainant there is no authorization for the Complainant to commence proceedings based on the trademarks for or including HAJI either with or without the written permission of the partnership. The license agreement is not to be altered or modified unless in writing and signed by the parties thereto. As there is no evidence before the Panel that this has occurred, there would appear to be no basis on which the Complainant can commence proceedings based on this trademark.
The Complainant has not filed any evidence disclosing that the Complainant has acquired any common law rights in the trademarks for or including the trademark HAJI. No evidence of trademark use, extent of sales in association with the trademark HAJI or surveys showing the reputation of the Complainant among the public in association with the trademark HAJI was filed by the Complainant. In Applegate Directory Ltd. v. Interlution a/k/a Matthew Bessette, WIPO Case No. 2004-0181, the Panel found that the Complainant’s contention that it had legal and contractual rights to enforce the APPELGATE trademark by virtue of an exclusive license to use the trademark was found not acceptable in the absence of documentary evidence that the Complainant had been granted the right by Licensor to enforce the trademark. See also SK Energy Sales Co., Ltd. v. Superkay Comdomain, WIPO Case No. D2000-0380.
The Panel finds that the Complainant entity has not established rights in the trademark for the purpose of these UDRP proceedings.
With respect to the issue of identical or confusingly similar, it is unnecessary for the Panel to make a finding on this issue.
Accordingly, the first requirement of the Policy is not met.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name.
In accordance with paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests to the domain name by proving, on a non-exhaustive basis, any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s use 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 consumers or to tarnish the trademark or service mark at issue.
Based on the submissions and evidence filed by the Complainant and the absence of a submission or evidence filed by the Respondent, the Panel notes that the Complainant appears to have made out at least a prima facie case that the Respondent on balance lacks rights or legitimate interests in the domain name in dispute pursuant to paragraph 4(a)(ii) of the Policy. However, given the finding above and below a definitive determination on this issue is not necessary.
C. Registered and Used in Bad Faith
While noting this finding is not strictly necessary, having regard to the Panel’s finding under the first element, the Panel notes the following for the purpose of completeness:
Paragraph 4(b) of the Policy sets out four circumstances, without limitation, any of which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The domain name in dispute <haji.com> was created on February 2, 1997 according to a Tucows Whois search conducted on September 14, 2006. The trademarks for or including HAJI were not registered by the partnership before 2003. The Complainant was not licensed as an exclusive licensee to the trademarks for or including HAJI until June 20, 2005.
Bad Faith cannot be found when the domain name in dispute is registered before the Complainant has established a trademark right by registration or common law use. The registration of the domain name was not in bad faith because the registrant of the domain name could not have contemplated the Complainant’s non-existent right. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.1. Dreamgirls, Inc. v. Dreamgirls Entertainment, WIPO Case No. D2006-0609.
Accordingly, the third element of the Policy is not met.
For all the foregoing reasons, the Complaint is denied.
Dated: September 26, 2006