|Complainant||Zweites Deutsches Fernsehen (ZDF)|
|Date of Decision||18.05.2001|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zweites Deutsches Fernsehen (ZDF) v. Franz Maier
Case No. D2000-1071
1. The Parties
The Complainant in this administrative proceeding is Zweites Deutsches Fernsehen, Anstalt des öffentlichen Rechts (ZDF) ("Complainant"), a public-law institution, incorporated under the laws of Germany, with its main business address at ZDF-Strasse 1, 55100 Mainz, Germany. Complainant's authorized representative is Bettina Krause, Attorney at law, Hauptstrasse 35, 82327 Tutzing, Germany.
According to the Registrar's WHOIS database, the Respondent is Franz Maier ("Respondent"), Seebeelane 5A, Discovery Bay, Hong Kong, HK.
2. The Domain Name and Registrar
The domain name at issue is <3sat.com> ("Domain Name"), registered at Register.comtm ("Registrar") of 575 Eighth Avenue, 11th Floor, New York, NY 10018, USA.
3. Procedural History
A complaint ("Complaint"), pursuant to the Uniform Domain Name Dispute Resolution Policy, implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy, implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on August 15, 2000 by fax and was received on September 8, 2000 in hardcopy.
The Acknowledgement of Receipt of Complaint was submitted to the Complainant by the WIPO Center on August 31, 2000. On the same date, the assigned WIPO Center Case Manager transmitted a Complaint Deficiency Notification to the Complainant since the review of the Complaint had revealed the following formal deficiencies:
- The Complaint had not been submitted in electronic format as required by Rules, Paragraph 3(b).
- The Complaint had not been submitted in one original and four copies, as required by Rules, Paragraph 3(b) and Supplemental Rules, Paragraph 3(c).
- The Complaint did not identify the registrar with which the domain name was allegedly registered at the time the Complaint was filed, as required by Rules, Paragraph 3(b)(vii). Also, the Complaint did not indicate whether a copy of the Complaint had been forwarded to the registrar (Supplemental Rules, Paragraph 4(b)).
- The Complaint did not contain the statement required by Rules, Paragraph 3(b)(xii) that a copy of the Complaint, together with the Complaint Transmittal Coversheet, had been sent or transmitted to the Respondent by all required means in accordance with Rules, Paragraph 2(b).
- The Complaint did not include a submission by the Complainant to the jurisdiction of the courts in at least one specified Mutual Jurisdiction, which must be expressly identified, as required by Rules, Paragraph 3(b)(xiii).
On September 1, 2000, Respondent transmitted a statement to the WIPO Center by e-mail. This statement was written in German and contained a brief summary of Respondent's position. The Panel finds that Respondent's statement does not meet the formal requirements of a Response according to Rules, Paragraph 5. In spite of this formal deficiency, the Panel has read the statement and, to the extent deemed necessary, will deal with Respondent's arguments below.
By two Amendments to the Complaint dated September 5 and 13, 2001, Complainant's representative cured the objected formal deficiencies on their side.
On September 15, 2000, a Request for Registrar Verification was transmitted to the Registrar, which confirmed with its Verification Response of September 18, 2000 that the disputed Domain Name was registered with Register.comtm and that Respondent, Franz Maier, was the current registrant of the name. The reply also contained contact information for the Respondent.
All formal deficiencies having been cured, a Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") was transmitted to the Respondent on September 29, 2000, setting a deadline as to
October 18, 2000 by which the Respondent could file a Response to the Complaint. The Commencement Notification and Complaint was transmitted to email@example.com (administrative contact) and firstname.lastname@example.org. Because the Message was undeliverable due to a non active e-mail address, the aforementioned documents were sent, in addition, by DHL courier service to the available postal address of Respondent. Despite several delivery attempts at Respondent's postal address, the courier company returned the shipment on October 25, 2000 to the WIPO Center as undeliverable.
Following these unsuccessful delivery attempts, the assigned Case Manager tried to contact Respondent by e-mail on November 28, 2000 in order to be provided with Respondent's valid contact details such as fax number and/or postal address. In addition, on April 12, 2001 and April 23, 2001, Respondent was again requested by the Case Manager in charge to eventually provide valid contact details, but once again the messages were undeliverable.
Having reviewed the communications' records in the case file, the Panelist finds that the WIPO Center has discharged its responsibility under paragraph 2(a) of the Rules to "employ reasonably available means calculated to achieve actual notice to Respondent".
Complainant requested a single-member panel. Since Respondent failed to submit a response, the WIPO Center invited the undersigned to serve as sole panelist in Case No. D2000-1071 and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence which was duly signed and returned to the WIPO Center on April 27, 2001.
The WIPO Center transmitted to the parties on April 30, 2001 a Notification of Appointment of Administrative Panel and Projected Decision Date as of May 13, 2001. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
The following facts and statements appear from the Complaint and its annexed documents which have not been contested by Respondent:
Complainant, a German public broadcasting corporation, is the registered owner of the German trade mark No. 395 04 562 "3sat" as the basis for:
- International registered trademark No. 653 129 "3sat", registered for Austria, Bulgaria, Benelux, Croatia, Spain, Russia, France, Hungary, Italy, Liechtenstein, Monaco, Poland, Portugal, the Czech Republic, Rumania, St. Marin, Slovakia, Slovenia, Switzerland; and
- Community trade mark No.000883348 "3sat"; and
- German Trade mark 1083423 "3sat Satellitenfernsehen des deutschen Sprachraums ZDF/ORF/SRG.
A computer printout of all trade mark registrations for "3sat" was attached to the Complaint [Annex 3].
The disputed domain name <3sat.com> was registered by Respondent on
May 19, 2000.
5. Parties Contentions
Complainant contends that:
- the domain name is identical to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith; and
- the Domain Name should be transferred to the Complainant.
Additional respective contentions of the Complainant may be contained in the following discussions and findings.
As mentioned above, Respondent has been notified in accordance with paragraph 2(a) of the Rules, but failed to submit a Response in accordance with the requirements under the Policy. Nevertheless, to the extent deemed appropriate, his statement shall be taken into consideration by the Panel.
6. Discussion and Findings
Paragraph 4(a) of the policy directs that the Complainant must prove each of the following:
"(i) that 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
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and used in bad faith."
Identical or confusingly similar Domain Name: Policy 4(a)(i)
The Domain Name at issue is <3sat.com>. Complainant is the holder of the registered trade mark "3sat", which obviously is identical with the relevant and disputed part of the Domain Name.
In any event, the Respondent can not contest this point.
The Panel holds that the Complainant has established element (i) of the policy's paragraph 4(a).
Respondent's Rights or Legitimate Interests in the Domain Name: Policy 4(a)(ii)
It is first convenient to recall that, according to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."
Respondent has not provided any evidence of legitimate rights or interests in the above sense, and has not shown any other circumstances reflecting right or legitimate interest in the disputed Domain Name.
In the absence of any indications as to a legitimate interest of Respondent to use the Domain Name, the Panel finds that Complainant has fulfilled its burden of proof under paragraph 4(a)(ii) of the Policy.
Domain Name Registered and Used in Bad Faith: Policy 4(a)(iii)
The third element to be established by Complainant is that the Domain Name has been registered and used in bad faith.
Paragraph 4(b) states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name:
"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have 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 trade mark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name.; or
(ii) you [Respondent] have registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or your location."
Complainant alleges that Respondent registered and used the Domain Name in bad faith.
Complainant alleges, and Respondent does not deny, that the disputed Domain Name originally was offered for auction at a price of U$ 100'000 on the web site <greatdomains.com> (Annex 4 and 6). Obviously, the requested price of U$ 100'000 is by far higher than any out-of-pocket costs directly related to this Domain Name and this fact by itself is one of the indications mentioned in the Policy for bad faith. The fact that since then the price has been removed from the mentioned auction site, and that the Domain Name is now offered without any "price tag", does not change the fact that an excessive amount is being sought. Of course, Respondent now contends that the auctioning of the Domain Name never had any selling purpose but was only made with the intent to evaluate the response in the hi-tech market. The Panel finds it hard to believe this, especially because of the fact that the disputed domain name <3sat.com> currently still automatically relays internet users to the web site "greatdomains.com". This can only mean that the auctioning of the Domain Name is still ongoing.
Additionally, in WIPO Case No. D2000-0003 (<telstra.org>), paragraphs 7.9 to 7.11, as well as in other WIPO decisions, it was ascertained that a passive holding of a domain name may be sufficient to constitute bad faith, taking into consideration the overall context of Respondent's behavior. In the present case, the following circumstances seem relevant in this respect: Complainant's trademark is well known throughout Europe; Respondent provided no evidence of any good faith use of the disputed Domain Name, and doesn't seem to have associated the Domain Name with any serious activity or any genuine web site presence of his own until today.
In an overall assessment of the contentions and the facts mentioned above, the Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by the Complainant, and that Respondent's bad faith registration and use of the Domain Name have been proven.
In view of the circumstances and facts discussed above, the Panelist decides that the disputed Domain Name is identical to the registered trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent's Domain Name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panelist requires that the disputed Domain Name, <3sat.com>, shall be transferred to the Complainant.
Bernhard F. Meyer-Hauser
Dated: May 14, 2001