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Dr. August Oetker Nahrungsmittel KG v. Reserved For Client [2002] GENDND 979 (28 June 2002)

WIPO Arbitration and Mediation Center

The Complainant in this administrative proceeding is Dr. August Oetker Nahrungsmittel KG, a limited partnership existing and incorporated under the laws of Germany, registered in the commercial register of the "Amtsgericht" of Bielefeld, and having its registered office and principal place of business at Lutterstrasse 14, in Bielefeld, Germany.

The Respondent is Reserved For Client, Yanisco Limited, Nicosia Tower, Nicosia, Cyprus.

This dispute concerns the domain names: <oetker.net> and <oetker.org> (both jointly referred to as the "Domain Names", either domain name referred to as the "Domain Name").

The registrar with whom the Domain Names are registered is: Tucows Inc., 96 Mowat Avenue, Toronto, Ontario, Canada (the "Registrar").

The Domain Names were initially registered with the registrar in question on June 18, 2000.

On April 19, 2002, the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") received the Complaint by e-mail; on April 25, 2002 the Center received the hard copy version.

On April 23, 2002, the Center sent a Request for Registrar Verification to the Registrar and on the same date, the Registrar responded, (i) confirming that the Domain Names are registered with the Registrar, (ii) confirming that the Respondent is the current registrant of the Domain Names, (iii) providing details of the Administrative contact, Technical Contact and Zone Contact for said registrations, (iv) confirming that the Uniform Domain Name Dispute Resolution Policy ("the Policy") is in effect in respect of both registrations, (v) indicating that, as far as the Registrar is concerned, the said registrations were "on hold" and (vi) indicating that the language of both registration agreements is English.

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and Paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") the Center reviewed the Complaint to ascertain whether it satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment in the required amount had been made to the Center by the Complainant.

On April 30, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Complainant and to the Respondent. Said Notification was sent to the Respondent by courier (with attachments) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the company acting as "broker" for the Domain Names (by e-mail) as well as to the individual being the Administrative, Technical and Billing Contact of the Respondent by e-mail (without attachments). Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar by e-mail (without attachments).

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that an Administrative Proceeding in accordance with the Policy had commenced on April 30, 2002, and that the Respondent was required to submit a Response to the Center on or before May 20, 2002.

On May 13, 2002, the individual being the Administrative, Technical and Billing Contact of the Respondent informed the Center by e-email that he was willing to transfer the Domain Names to the Complainant. On the same date, the Center informed both the parties that the Center was not allowed to get involved in any settlement negotiations between the parties. On May 24, 2002, Complainant informed the Center that no settlement had been reached and requested the administrative proceeding not to be suspended.

On May 24, 2002, a Notification of Respondent's default was sent by the Center to the Respondent (by e-mail and by courier), to the individual being the Administrative, Technical and Billing Contact of the Respondent (by e-mail and by registered letter) as well as to the Complainant (by e-mail).

On June 10, 2002, after having received a Statement of Acceptance and Declaration of Impartiality and Independence from him in accordance with Paragraph 7 of the Rules, the Center proceeded to appoint Mr. Michael Bernasconi as Administrative Panel (Sole Panelist). On the same day, a Notification of Appointment of an Administrative Panel and Projected Decision Date was sent to the Complainant and the Respondent as well as to the individual being the Administrative, Technical and Billing Contact of the Respondent. Also on the same day, the case file was transmitted by email and by courier to the Administrative Panel. In terms of Rule 15(b), in the absence of exceptional circumstances, the Panel was required to forward its decision by June 24, 2002.

Complainant is a manufacturer and seller of various food products, including baking powder and other baking ingredients, frozen products and many others. "Oetker" is (part of) the trading name, the trademarks (including service marks) and of the company name of the Complainant. The word "Oetker" is also the name of the family of the founder of the Complainant.

The Complainant states that the Respondent had no justification in adopting the Domain Names that have no connection with the Respondent. The Complainant notes that the registrant cannot even be identified by the name in which it is registered i.e. "Reserved For Client", although it is believed that the individual being the Administrative, Technical and Billing Contact of the Respondent, Mr. Mohammed T. Reza, is the owner of the Domain Names.

The business of Complainant was founded in 1891 by Dr. August Oetker, who commenced the sale of reliable baking-powder manufactured in his pharmacy, which later was replaced by his factory. Today, Complainant is engaged in selling and distributing in many countries of the world a wide range of food products.

The disputed Domain Names are completely identical to the company name of the Complainant as well as to the trademarks under which the Complainant sells, markets and distributes its products.

It is asserted that the Respondent is, de facto, an individual residing in Saudi-Arabia who registered the Domain Names only a few weeks after the filing by Complainant of a trademark application in that country. Further, Respondent never used the Domain Names but offered them for sale through a domain name broker.

The Complainant alleges that the Domain Names are currently offered for sale. Further, the Respondent himself allegedly offered the Domain Names for Sale to the Complainant. The Complainant asserts the Respondent has registered the Domain Names and was making offer for their sale soon after registration without having used the Domain Names for any bona fide purpose. The Complainant also claims the name of the registrant, namely Reserved For Client, is itself suggestive of its intention of selling the Domain Names.

No Response was received from the Respondent. However, the individual registered with the Registrar as being the Administrative, Technical and Billing Contact, confirmed, implicitly, being the owner of the Domain Names and acknowledged a willingness to transfer them to the Complainant.

According to Paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain name registered by a Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

It is undisputed that the Complainant’s company name is "Dr. August Oetker Nahrungsmittel KG". Further, it is undisputed that the Complainant is the owner of "Oetker" trademarks.

In the view of the Sole Panelist, the disputed Domain Names are identical to the Complainant’s trademarks. Further, being that the Domain Names are also identical to the peculiar part of the company name of Complainant, it is highly probable that the disputed Domain Names would be associated in the public’s mind with the Complainant and its trademarks.

The Complainant has therefore succeeded in proving that a risk of confusion is very likely. The first criterion, as per Paragraph 4(a) of the Policy, is established.

It is undisputed that Complainant has not authorized Respondent to use Complainant’s trademarks nor to seek the registration of a domain name incorporating said trademarks.

Further, the Respondent allegedly is trying to sell the Domain Names.

In these circumstances, the Panel concludes Complainant has established that Respondent has no rights or legitimate interests in respect of the disputed Domain Names. The second requirement of Paragraph 4(a) of the Policy is therefore satisfied.

On the third element of Paragraph 4(a) of the Policy, i.e. the issue of a bad faith registration, it is undisputed that the Respondent knew of the Complainant, its products and its trademarks, prior to registering the disputed Domain Names. Indeed, the word "Oetker" has no meaning in any language of the earth. The fact that the Respondent did register the disputed Domain Names only a few weeks after the filing by Complainant of a trademark in Saudi Arabia and thereafter put the Domain Names on sale is to be considered a clear sign of bad faith.

As a matter of fact, according to Paragraph 4(b) of the Policy, for the purposes of the third element of Paragraph 4(a), circumstances indicating that a registrant has registered a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to a Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name, if found by a Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case it is undisputed that the Domain Names were and are offered for sale. Additionally, it is also undisputed that during this Administrative Proceeding the Respondent offered the Domain Names to the Complainant, by asking a reimbursement allegedly of an amount well beyond the registration costs.

Under these circumstances, and taking into consideration the fact that the Respondent has not provided any evidence whatsoever of any actual or contemplated legitimate, good faith use by himself of the Domain Names, the Panel considers that the Respondent has registered and used the Domain Names in bad faith.

The third requirement of Paragraph 4(a) of the Policy is therefore satisfied.

Therefore, and in consideration of the Complainant’s compliance with the formal requirements for this domain name dispute proceeding, of Respondent’s default in submitting a Response, to the factual evidence and legal contentions that were submitted, to the confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i)(ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, it is found:

(1) that the Domain Names are confusingly similar to the Complainant’s trademarks and company name;

(2) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and

(3) that the Domain Names have been registered and are being used in bad faith by the Respondent.

Accordingly, with specific reference to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Administrative Panel directs that the disputed Domain Names <oetker.net> and <oetker.org> shall both be transferred to Complainant.

Michael A.R. Bernasconi
Sole Panelist

Dated: June 28, 2002