DECISION

TÜV Rheinland e.V. v. Hamdan GmbH

Claim Number: FA0305000158427

PARTIES

Complainant is TÜV Rheinland e.V., Koeln, Germany (“Complainant”) represented by Marcus A. Ernst of Wuersch & Gering LLC. Respondent is Hamdan GmbH, Zurich, Switzerland (“Respondent”) represented by  Hans Peter Herzig of Hamdan GmbH.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tüv.com> registered with Tucows, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Dr. Reinhard Schanda as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 21, 2003; the Forum received a hard copy of the Complaint on May 23, 2003.

On May 22, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <tüv.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On June 3, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 23, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@tüv.com by e-mail.

A timely Response was received and determined to be complete on June 22, 2003.

Complainant submitted a timely and complete Additional Submission on June 27, 2003.

On June 28, 2003, Respondent submitted a timely and complete Additional Submission.

On June 28, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Reinhard Schanda as Panelist.

The Panel notes that Respondent’s second additional submission dated June 27, 2003 contains an E-Mail from Verisign dated July 1, 2003. Nevertheless the Panel believes it is important that the decision reflect the existence of the above mentioned Submission.

The Panel believes it was constituted in compliance with the ICANN Rules and the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Name Dispute Resolution Policy and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.

The panel is obliged to issue a decision on or prior to July 28, 2003.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is an internationally known testing and certification services company with its worldwide headquarters in Colgne, Germany. With 7400 employees around the world Complainant generates annual revenues of EUR 650 Mio. With more than 80 concern subsidiaries Complainant is represented in more than 40 countries. By virtue of Complainant’s long-standing, continuous and exclusive use of the TÜV mark in international commerce, Complainant owns valid and enforceable trademark and service mark rights in the TÜV Mark. The German Patent and Trademark Office has issued Complainant over 15 trademark registrations. Complainant operates an Internet Web site located at the URL www.tuv.com, which presents the TÜV mark, the services offered by Complainant as well-as an e-commerce feature.

Complainant has spent considerable time and money promoting the TÜV mark in German speaking Europe and throughout the world. Complainant’s mark is famous and serves in the mind of the consuming public to identify Complainant alone.

On February 26, 2001 Respondent registered the domain name <tüv.com>.

The <tüv.com> domain name is identical to the TÜV trademark, which Complainant acquired well prior to the dates Respondent registered <tüv.com> and the service marks owned by Complainant.

Respondent has no connection or affiliation with Complainant, and has not received a license or a consent, express or implied, to use the TÜV mark in domain names or any other manner. Respondent’s use of the TÜV mark as a domain name is a transparent attempt to trade on the goodwill and fame associated with the TÜV mark. Respondent has no rights or legitimate interests in <tüv.com>.

The TÜV mark has to be recognized as a Superbrand in Germany and the German speaking European Respondent knew that at the time it registered the domain name this was identical to the name and trademark of TÜV. It is inconceivable that Respondent could have registered <tüv.com> without knowledge of the Complainant’s rights in the TÜV mark.

Furthermore Respondent registered <tüv.com> in bad faith to prevent Complainant from registering such name for itself. Since Respondent has failed to make any good faith use of <tüv.com> in any way since registering <tüv.com>, it permits the inference that <tüv.com> has been registered in bad faith and is evidence of use in bad faith.

B. Respondent

Respondent is registered as Hamdan GmbH on February 6, 1999 in the Commercial Trade Register of Zuerich, No. CH-020.4.020.108-4 and is entitled, in accordance with the registered statutes of Switzerland, as a company that operates restaurants, bars, dancing locations or any similar activity. 

For the Respondent, it’s an “unintentional overlap of names.”  Respondent is using the three letters as a short for “Tschechischer Übersetzungs Verein.” Therefore the meaning of TÜV is different and also the services provided by Respondent are completely different. Respondent’s use of <tüv.com> does not interfere with the Complainant’s brand.

Respondent’s aim was to create a private non-commercial Internet portal, whose sole purpose is to give free advice and help to Czech citizens, mainly women, currently working in Switzerland in bars, restaurants and dancing locations. Respondent helps women to translate official documents as employment contracts or marriage certificates. In this regard Respondent gives some examples of cases of Czech women who came to Respondent to look for help.

Regarding the use of the domain name <tüv.com> Respondent alleges that <tüv.com> as international domain name was part of the so called “testbed”. Still today, this domain name does not resolve within the DNS system and is not even recognized by some web browsers. Due to these technical circumstances, Respondent has not been able to establish a homepage for the Tschechischer Übersetzungs Verein. Respondent submits that he offers services under the name Tschechischer Übersetzungs Verein. Respondent’s name and its related services are well known but due to these technical problems he had started using <tüv.com>. Therefore, Respondent chose not to promote <tüv.com>.

Respondent did all necessary research before registering <tüv.com>. Respondent strongly feels that this may be a case of reverse domain hijacking, since Complainant did not try to resolve this matter in a good way. Respondent alleges furthermore that the TÜV Mark is not a Superbrand.

 

C. Additional Submissions

Within an additional submission, Complainant alleges that he asked Respondent to transfer <tüv.com> but never had the intention to buy a domain name in which Complainant has primary rights. Regarding Respondent’s rights or legitimate interests Complainant claims that Respondent was unable to show any legitimate interests, which would justify Respondent’s infringement of the Complainant’s trademark. Furthermore, Respondent does not have rights in the abbreviation TÜV, because Respondent is not “Verein” (association) under Swiss Laws.

Complainant firmly believes that Respondent has merely tried to artificially construct a right in the domain name and invented the story of performing charitable work under the name “Tschechischer Übersetzungs Verein”. Furthermore Respondent has not presented a single shred of evidence of its actions in the name of “Tschechischer Übersetzungs Verein”.

Complainant alleges that Respondent as GmbH under Swiss Laws (limited liability company) can only be established for commercial or business purposes but not for non-commercial purposes. In Respondent’s corporate statutes is no listing of a non-commercial activity. From Complainant it seems not very logical to design an Internet homepage with the abbreviation TÜV for Czech women who are in Switzerland and do not speak the German language.  The letter “ü” not even exists in the Czech language. Regarding the IDN, Complainant alleges that IDN can be used and are used worldwide; a  user would only be asked to download a plug-in for his browser. For Complainant it seems to be a very unlikely coincidence, that Respondent had the need for a domain name for his alleged association just at the moment that IDNs were first made available.

In an additional submission, Respondent denied Complainant’s allegations in the above mentioned additional submission. In a second additional submission Respondent mainly brings forward an e-mail from Verisign, explaining the technical status quo of IDNs.

FINDINGS

Complainant is an internationally known testing and certification services company with its worldwide headquarters in Colgne, Germany.

Complainant has registered a trademark with the German patent and trademark office for the TÜV mark (Reg. No. 1,005,645) since 1979 relating to services of engineers, physicists and chemists in the field of consulting, training, giving expert opinions, research, testing and surveillance in the field of technics, especially security technics for industry, trade agriculture, household, leisure time, traffic, environment protection and heat technology.

Complainant has spent considerable time and money promoting the TÜV mark in German speaking Europe and throughout the world.

On February 26, 2001 Respondent registered the domain name <tüv.com>.

Respondent was registered as Hamdan GmbH on February 6, 1999 in the Commercial Trade Register of Zuerich, No. CH-020.4.020.108-4 and is entitled in accordance with the registered statutes of Switzerland as, a company that operates restaurants, bars, dancing locations or any similar activity. 

The domain name and Complainant’s trade and service marks are identical.

The Respondent has no rights or legitimate interests in respect of the domain name.

The domain name was registered and is being used in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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;

(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.

Identical and/or Confusingly Similar

Complainant provides evidence of having registered a trademark with the German patent and trademark office for the TÜV mark (Reg. No. 1,005,645) since 1979 related to services of engineers, physicists and chemists in the field of consulting, training, giving expert opinions, research, testing and surveillance on the field of technics, especially security technics for industry, trade agriculture, household, leisure time, traffic, environment protection and heat technology. Complainant has also produced evidence that demonstrates it has registered various trademarks related to the TÜV mark with the German patent and trademark office and the United States Patent and Trademark Office. The Panel may find that Complainant has established that it has rights in the TÜV mark for purposes of Policy Para. 4(a)(i) through its trademark registrations. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding “Complainant has sufficiently established its rights in the HANNOVER RE mark through registration with the German government”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates. It is sufficient that Complainant can demonstrate a mark in some jurisdiction).

Complainant contends that Respondent’s <tüv.com> domain name is identical to Complainant’s TÜV mark because the disputed domain name appropriates Complainant’s mark and simply adds the generic top-level domain (“gTLD”) “.com” to the end of the mark. The Panel may hold that the addition of a gTLD such as “.com” is irrelevant to the identical or confusingly similar analysis under Policy Para. 4(a)(i). Thus, the <tüv.com> domain name is identical to Complainant’s TÜV mark. See Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

Rights or Legitimate Interests

Complainant maintains that Respondent has no connection or affiliation with Complainant. Moreover, Complainant avers that Respondent has not received a license or consent, express or implied, from Complainant to use the TÜV mark in domain names or any other manner. The Panel may conclude that Respondent has no rights to or legitimate interests in the <tüv.com> domain name because Respondent is not commonly known by the disputed domain name pursuant to Policy Para. 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy Para. 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Furthermore, Respondent asserts that the <tüv.com> domain name does not resolve to an active website. The Panel may find that Respondent’s failure to use the disputed domain name amounts to neither a bona fide offering of goods or services with regard to Policy Para. 4(c)(i) nor a legitimate noncommercial or fair use with regard to Policy Para. 4(c)(iii), which indicates that Respondent lacks any rights to or legitimate interests in the domain name under Policy Para. 4(a)(ii). See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

In its Additional Submission, Complainant suggests that Respondent’s stated rights to and legitimate interests in the <tüv.com> domain name may have been fabricated for this proceeding. Moreover, Complainant asserts that Respondent has failed to present any evidence that it engages in charitable work for Czech women in Switzerland. Despite Respondent’s assertions of altruistic intentions, the Panel may conclude that Respondent has failed to establish any rights to or legitimate interests in the disputed domain name pursuant to Policy Para. 4(a)(ii). See BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain name where Respondent claimed to be using the domain name for a non-commercial purpose but had made no actual use of the domain name).

Registration and Use in Bad Faith

Complainant avers that, in German-speaking Europe, the vast majority of the population knows its TÜV mark. Complainant contends that, due to the fame of its mark, Respondent must have had either actual or constructive knowledge of Complainant’s rights in its mark. The Panel may find that Respondent’s registration of the <tüv.com> domain name despite actual or constructive knowledge of Complainant’s rights demonstrates bad faith registration and use for purposes of Policy Para. 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).

Moreover, Complainant contends that Respondent’s failure to use the <tüv.com> domain name since its registration in February 26, 2001 indicates that Respondent registered the domain name in bad faith. The Panel may find that Respondent’s failure to use the disputed domain name demonstrates registration and use in bad faith under Policy Para. 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <tüv.com> domain name be TRANSFERRED from Respondent to Complainant.

Dr. Reinhard Schanda, Panelist
Dated: July 28, 2003

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