Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is HBO Einkauf und Marketing GmbH & Co, Dietrichsweg 64, 26127 Oldenburg, Germany, represented by Wolfgang Addicks, General Manager.

The Complainant’s Ticket Number provided by the Registry Operator is 1ebK907x21.

The Respondent is Motorland Fahrzeugtechnik GmbH, Christian-Friedrich-Schwan-Strasse 3, 68167 Mannheim, Germany, represented by Dr. Thomas Nägele, Shearman & Sterling, Mannheim Office, Otto-BeckStrasse 43, Germany.

The Domain Name at issue is <motorland.biz>. The Registrar is Knipp Medien und Kommunikation GmbH, Partner of CORE, Internet Council of Registrars, Martin- Schmeisser-Weg 9, 44227 Dortmund, Germany.

The STOP Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on December 18, 2001 (and on December 14, 2001 by hardcopy). On December 20, 2001, the Center acknowledged receipt of the Complaint.

The Center verified that the Complaint satisfies the STOP and the STOP Rules and the WIPO Supplemental STOP Rules and that payment was properly made. The Panel is satisfied this is the case.

On January 8, 2002, the Center notified the STOP Complaint and the Administrative Proceeding commenced. The Center received on January 24, 2002, a Response by e-mail and on January 28, 2002, a hardcopy of the Response. On the same day the Center acknowledged receipt of the Response.

On February 6, 2002, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.

No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panel’s decision is February 20, 2002.

The Complainant is the owner of the Community Trade Mark registration No 167585, word mark MOTORLAND, of April 6, 1998, with application date of April 1, 1996, for, amongst others, mechanical agricultural and horticultural equipment and apparatus, such as lawn mowers; machines for the garden; mechanical and technical cleaning equipment and apparatus, in class 7 (Registration Certificate: Annex 4 to the Complaint). It has also applied for registrations of its mark in the United States.

The Respondent registered on November 19, 2001, the domain name <motorland.biz>, and submits that it intends to use it.

The Complainant submits that (1) the domain name <motorland.biz> is identical to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered or is being used in bad faith.

The Respondent submits that it has rights and legitimate interests in respect of the domain name and that the domain name was not registered and is not being used in bad faith.

The Respondent refers to its German trademark registration 39739432 device mark ("Bildmarke") MOTORLAND, registered on January 20, 1998 (with application date of August 19, 1997), amongst others for vehicles of all kinds and for motor bikes (Registration Certificate: Annex 4 to the Response).

The Respondent also refers to its company name, registered in 1990 (Extract of the Commercial Register of the city of Mannheim: Annex 1 to the Response), its use of the business identifier "motorland"and to its use of the domain name <motorland.de>, registered in June 1997 (Annex 5 and 6).

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:

1) The domain name is identical to a trademark or service mark ("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 or is being used in bad faith.

The domain name <motorland.biz> is identical with the community Trade Mark "MOTORLAND" in which the Complainant has rights.

The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name.

However, "Motorland" is the main – and the only distinctive – element of the Complainant’s company name, which it has used long before the trademark of the Complainant was registered, (the denomination "Fahrzeugtechnik" is descriptive of the Respondent’s business – a so-called "Sachbezeichnung" - and "GmbH" only indicates the type of its legal incorporation). The Respondent has also at least since 1990 been trading under the business identifier "Motorland" as evidenced by the Respondent’s business paper (Annex 2) and advertising (Annex 3).

The Respondent disposes also of a German device mark registration ("Word-Bildmarke"), which contains as main element the word "Motorland" in a special script. Even if that trademark registration is not a word mark, no doubt at least in oral communications it will be referred to as "Motorland". The argument of the Complainant that "motorland" be too close to the Respondent’s products "motorcycles", in order to be protectable as a trademark is at least doubtful (see last year’s decision of the European Court of Justice, finding that "BABY DRY" is distinctive for diapers) and the same argument could also be used in the context of some of the Complainant’s products (motor driven lawn mowers and other apparatus). Only terms, which are exclusively descriptive of the goods or services offered, are under harmonized European standards excluded from trademark protection (unless they have acquired secondary meaning). No doubt, the term "Motorland" indicates to the average consumer a connection to motors (being motors as such or as part of a vehicle), however not necessarily to the Respondent’s main business, which is the offering for sale of motorcycles and the services related hereto.

These considerations play also an important role in the context of the Respondent’s use of the term "Motorland" as part of its registered company name and as business identifier, since the standards of descriptiveness are in principle the same (the difference being that for trademarks descriptiveness relates to the goods or services, for which the mark is used or supposed to be used, and for business identifiers to the business activities of the user of the business identifier). Taking additionally into account the Respondent’s continued use of and advertising for the business identifier "Motorland" for 12 years, the Panelist has no doubt that the Respondent’s business identifier enjoys trade name protection (protection of a so-called "Geschäftsbezeichnung") under German Trademark Law.

Therefore, in the present case, conflicting rights and interests of the parties in the word "Motorland" do exist, and it cannot be the task of the Panelist to decide whether one of the Parties has prior exclusive rights against the other, or whether perhaps both rights in the word "Motorland" may co-exist in view of the different commercial activities of the parties, which apparently peacefully have co-existed over the years. Such questions may be decided by the courts, if the parties to this proceeding wish so. Under the STOP the question to be decided is not whether the Respondent has rights in a mark but whether the Respondent filed the application for registration of the domain name <motorland.biz> without having any right or legitimate interest in that name. In view of the evidence submitted by the Respondent, this must clearly be denied.

The Respondent has been commonly known, at least in the Mannheim region, by the protected business identifier "Motorland", and since 1997 it has used the domain name <motorland.de> (which apparently has co-existed with the Complainant’s domain name <motorland.net>, whilst the domain name <motorland.com> belongs to a third party). Also, the Respondent has used the business identifier "Motorland" in connection with a bona fide offering of goods or services (motorbikes and related services). It has therefore rights in respect of the domain name "motorland". Under the STOP, it is not required for the Respondent to own a trademark that is identical to the domain name and the Panelist to decide whether the device mark registration of the Respondent is to be considered as identical with the domain name (at least phonetically the mark is identical). However, in view of the fact that the Respondent disposes of a four year old German trademark registration, containing as main element the word "Motorland", it has also legitimate interests in using that word as domain name. Furthermore, the Respondent has a legitimate interest in using the main distinctive term of its company name "Motorland Fahrzeugtechnik GmbH" as domain name.

Therefore, the Panelist concludes that the Respondent has legitimate rights and interests in the domain name <motorland.biz>.

Since the Respondent has legitimate rights and interests in the domain name <motorland.biz>, it cannot reasonably have acted in bad faith when registering it. Actually, under the circumstances, in particular in view of the fact that the Respondent since several years already has registered and is using the domain name <motorland.de>, there are no indications, and the Complainant has not submitted any evidence, for its submission that the Respondent had registered the domain name<motorland.biz> in order to prevent the Complainant as the owner of the Community Trade Mark MOTORLAND from reflecting the mark in a corresponding domain name. The evidence shown by the Respondent is at least a very strong indication for its submission that it intends to use the domain name <motorland.biz> for purposes of its own legitimate business.

The Panel decides that the Complainant has not proven its submission that the Respondent has no legitimate rights or interests in the domain name <motorland.biz>,

and that it acted in bad faith when registering it. On the contrary, the Panelist finds that the Respondent has rights and legitimate interests in that domain name.

The Panelist therefore rejects the request to transfer the domain name <motorland.biz> to the Complainant.

Dr. Gerd F. Kunze
Sole Panelist

Dated: February 14, 2002