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C. & A. Veltins GmbH & Co. KG v. Heller Highwater Inc. [2004] GENDND 1100 (27 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

C. & A. Veltins GmbH & Co. KG v. Heller Highwater Inc.

Case No. D2004-0466

1. The Parties

The Complainant is C. & A. Veltins GmbH & Co. KG of Meschede-Grevenstein, Germany, represented by Aderhold v. Dalwigk Knüppel Rechtsanwaltsgesellschaft GmbH, of Dortmund Germany.

The Respondent is Heller Highwater Inc. of Smyrna, Georgia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <veltins-usa.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2004. On June 28, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On July 1, 2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2004. A partial Response was filed with the Center on July 26, 2004, together with a request for an extension to file a further response. An extension of time was granted by the Center until August 3, 2004. No further Response was received from the Respondent.

The Center appointed Peter G. Nitter as the sole panelist in this matter on August 23, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant has documented that it is the holder of trademark registrations for the trade mark VELTINS in the United States since 1995.

Respondent has previously been the distributor of Complainant’s products in the United States. It is not disputed that the business relation between the parties is now terminated.

Respondent has registered and is currently using the contested domain name.

5. Parties’ Contentions

A. Complainant

The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Complainant commonly uses the short name VELTINS to present itself in Germany and the United States, and own numerous VELTINS trademarks which are used in connection with its selling of beer. Apart from the added “usa”, the contested domain name is identical to the Complainant’s trademark VELTINS.

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

The parties used to have a contractual relationship which was terminated on July 29, 2003. There is no longer any contractual or other relationship between the parties that would give Respondent any license, permission or other rights by which Respondent could use a domain name incorporating the VELTINS mark.

Respondent no longer sells VELTINS products, and has therefore no honest reason to keep up the contested domain name.

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

The Respondent did not have any license, permission or other rights concerning the mark VELTINS when the registration of the disputed domain name was made. The Complainant contacted him after they had found – by coincidence – the disputed domain, the contents and presentation of which was totally unacceptable to the Complainant. Thereafter, the Parties entered into a contractual relationship, in the course of which the Respondent agreed to make some alterations to the site, and the Complainant, therefore, tolerated the Respondent’s presentation on the Web for the duration of the contract. Since the relationship between the parties is now terminated, the Complainant does not have any reason to let the Respondent promote competitors’ and his products under their name.

Consequently, the Respondent is currently making commercial use of the domain name which is misleadingly intended to distract customers from the services of the Complainant. The site is used to promote the products sold by the Respondent, namely “Rhinebecker Extra Bräu” and “Heller Hochbräu”. By using a web site under the contested domain name, the Respondent creates a likelihood of confusion with the Complainant’s mark as to the source of these products.

B. Respondent

The allegation by Complainant that he was unaware that Respondent was producing a web site incorporating Complainant’s trademark is false. The web site was part of the discussions in a meeting between the parties in January 1997.

“Veltins USA - Heller Highwater” remains a registered DBA of Respondent.

The web site corresponding to the disputed domain name was built and maintained for seven years completely at the expense of Respondent, and all goodwill built on that site is Respondent’s work product.

Once Complainant decided to terminate the import agreement with Respondent, Respondent voluntarily removed all logos and references to the VELTINS brand.

6. Discussion and Findings

A. Identical or Confusingly Similar

The contested domain name is not identical to Complainant’s trade mark VELTINS, and the question is therefore whether there is confusing similarity between the two.

The disputed domain name is composed of Complainant’s mark, only with the addition of ‘usa’. The addition of a geographical suffix to a trademark, such as in the present case, is a common way of indicating the geographical area that goods are offered under a trade mark.

The panel finds that the addition of the geographical suffix ‘usa’, does not sufficiently alter the underlying mark to which it is added. A user of the Internet is, in the Panel’s opinion, likely to assume that Complainant is the sponsor of, or is associated with, the web site identified by the disputed domain name.

The addition of a hyphen between “veltins” and the country name is dictated by technical factors and customary practice among domain name registrants, and is without legal significance from the standpoint of comparing Complainant’s trademark and the contested domain name.

Hence, Complainant has met its burden of proving that the domain name at issue is confusingly similar to Complainant’s trade mark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Respondent is no longer in a business relationship with Complainant, and no longer sells Complainant’s products. On the web site corresponding to the contested domain name, Respondent now offers beers from competitors of Complainant.

The Panel has not received any written documentation from the parties regulating their business relationship, or Respondent’s right to incorporate Complainant’s trade mark in a domain name, and it seems like the latter issue has been subject to an oral agreement between the parties, or no agreement at all. There is, in any case, a presumption that any right to use Complainant’s trade mark that Respondent may have been granted, has been granted as a result of, and on the condition that the parties remain in a business relationship, and that such right is no longer valid when the business relationship between the parties is terminated.

Respondent has asserted that “Veltins USA - Heller Highwater” remains a registered DBA of Respondent. This name is clearly derived from Complainant, and adopted as a result of Respondent’s previous business relationship with Complainant, and cannot establish an independent right for Respondent in relation to the Policy. It is, furthermore, not likely that Respondent would have any legitimate interest in marketing beers from competitors of Complainant under a domain name that predominantly consists of Complainant’s trade mark.

The Panel thus finds that Respondent does not have any rights or legitimate interests in respect of the domain name at issue.

C. Registered and Used in Bad Faith

It is disputed whether Respondent registered the contested domain name according to an agreement with Complainant, or whether Complainant, as a result of their business relationship with Respondent, merely chose not to complain when they became aware of the registration.

Regardless of the above, it is a fact that Respondent currently is using the domain name at issue in order to market and sell products that are competing with Complainant’s products. As Respondent’s status as Complainant’s retailer is terminated, the Respondent lacks a legitimate purpose to retain (usage of) the contested domain name, and the use of the domain name now appears to be an intentional attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or the products offered at this site. Respondent’s continued use of the domain name must therefore be deemed to be in bad faith. Furthermore, the fact that the Respondent did not have any license, permission or other rights relating to the Complainant’s mark VELTINS is an indication that the disputed domain name was registered in bad faith. It is also clear that Respondent knew of Complainant’s rights in the mark when he registered the domain name. These facts, as well as the lack of any clear written indication that the Complainant agreed to the initial registration of the disputed domain name, the circumstances of the dispute between the parties and the current bad faith use are all indications that the disputed domain name was originally registered in bad faith.

The Panel therefore finds that Respondent has registered and is using the domain name at issue in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <veltins-usa.com> be transferred to the Complainant.

Peter G. Nitter
Sole Panelist

Dated: August 27, 2004