Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is Kölnmesse GmbH, Messeplatz 1, D-50679 Köln, Germany. The Respondent is Globe Distillery, 1433 Kewalo st. 211, Honolulu, HI 96822, U.S.A.

The domain name in issue is:

Photokina.com.

The Registrar is Network Solutions, Inc.

The WIPO Arbitration and Mediation Center (the Center) received Kölnmesse’s complaint on May 25, 2000 (hardcopy). The registrar verification request was sent on May 25, 2000.

The registrar verification response was received on May 30, 2000.

The Center verified that the complaint satisfied the formal requirements on June 8, 2000. On the same day a notification of complaint was sent to the Respondent and the Administrative proceeding began.

On June 23, 2000, the response was received. Professor François Dessemontet was appointed panelist on June 26, 2000. The response was forwarded to the Center by July 7, 2000, within the time limit set to the panelist.

Kölnmesse GmbH owns the right for the trademark "Photokina" in several countries, e.g.:

a) GERMANY, Reg. No. 788.001, March 8, 1963, international classes 6, 9, 16, 20, 24 and Reg. No. 1001805, September 5, 1980, international classes 35, 37, 41, 42;

b) U.S.A, Reg. No. 841,906 and 853,272, December 9, 1967, USA-classes 38, 101.

Kölnmesse GmbH is the organizer of a trade fair hosted under the name "Photokina", in Cologne for more than 40 years. Photokina is a well known fair in the international photography sector.

The domain name was registered by the Respondent for Photokina Marketing Corporation, a Philippines based company active in business for the last 20 years, allegedly with 5000 stores nationwide.

The Complainant alleges that the trademark is currently used.

The grounds for the complaint are:

The domain name is identical with the registered trademark.

The Respondent uses the domain name in bad faith as it is a worldwide well known name for the trade fair. The manner in which the Respondent uses the name is misleading for any person who wants information about the trade fair and tries to find it under the trade fair’s name.

There is no relation between the translating services offered on the photokina.com web address and the trade fair or the photographic scene.

The Respondent uses the image of the trade fair in a way that visitors of the web-site, which should be exhibitors or visitors of the trade fair, could also develop an interest his translating services.

In its complaint the Complainant requests that the domain name "photokina.com" be transferred to him.

In its response the Respondent avers the following:

The domain name was registered by the Respondent for the Photokina Marketing Corporation with no knowledge of the Complainant’s trademark.

The Respondent representing the Photokina company have legitimate rights to the domain name.

The Respondent never used the name in bad faith.

In its response the Respondent requests that the ownership of the domain name be transferred to the Photokina Marketing Corporation to avoid future misrepresentations of ownership.

The relevant part of the domain name Photokina is identical to the trademark of the Complainant. In addition, the whole of the domain name is confusingly similar to the Complainant’s trademark registration.

The Respondent has, however, provided sufficient evidence of circumstances giving rise prima facie to a legitimate interest in the domain name. The domain name was registered by Respondent for Photokina Marketing Corporation. Photokina Marketing Corporation has been incorporated in the Philippines since 20 years, with allegedly more than 5000 retail stores countrywide. Further, the Respondent himself explains that he was using a default template on the name server set up as the web site for Photokina Marketing Corporation was being built. This allegedly caused the domain name to redirect to an internal Worldpoint Interactive, Inc. (of which the Respondent is an employee) web-site used for internal testing. It was allegedly not redirected to the company’s web-site for public use and was for the most part password protected. The domain name was at no time published and was redirecting allegedly for less than a month.

In those circumstances, this panel cannot find for the Complainant. The Respondent is apparently working on behalf of a third entity, which itself might well have better rights to the Photokina trade name and trademark in the Philippines. Any dispute of this kind between bona fide users of the same mark or name is properly to be adjudicated by ordinary courts of law in the relevant jurisdiction upon regular proceedings with full evidence and pleadings of facts and legal issues. This has already been decided, e.g. in the sixnet.com case of the WIPO Arbitration and Mediation Center (N° D-2000-008).

For the reasons set out above ( B ), the panel cannot find that the Respondent acted in bad faith when registering the domain name. There is no reason to disbelief the Respondent’s contention that he ignored the Complainant’s trademark when registering the domain name, even if the Complainant alleges that "Photokina" is a worldwide well known name for the Cologne trade fair. This may well be so, or it may be a well known mark in given regions of the world such as Europe and a known mark in other regions for the photography sector. More than 1500 persons or entities coming from 47 different countries are exhibiting their products or services at the Cologne trade fair. Nevertheless, there is no reason to believe that the Respondent personally knew the existence of the Complainant’s trade mark, as Photokina is not as famous as some really worldwide famous trademarks such as Coca-Cola, IBM or Nokia (see a table published in the Wall Street Journal Europe in June 1999, as seen on the site www.branding-kaeuffer.com/e/mark visited on May 24, 2000).

Finally there is no other sign of bad faith in the registration or use of the domain name.

Complainant’s request for transfer of the domain name is hereby rejected. Further, the panel cannot rule on the transfer of the ownership of the domain name to the Photokina Marketing Corporation which is not party to the proceedings.

Sole Panelist

Dated: July 7, 2000