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01059 GmbH v. VARTEX Media Marketing GmbH/Stefan Heisig [2004] GENDND 1222 (10 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

01059 GmbH v. VARTEX Media Marketing GmbH/Stefan Heisig

Case No. D2004-0541

1. The Parties

The Complainant is 01059 GmbH, Düsseldorf, Germany, represented by Raoul F. Sandner, Germany.

The Respondent is VARTEX Media Marketing GmbH/Stefan Heisig, Kaarst, Germany, represented by Withöft, Terhaag & Rossenhövel, Germany.

2. The Domain Name and Registrar

The disputed domain name <01059.com> is registered with CORE Internet Council of Registrars.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2004. On July 22, 2004, the Center transmitted by email to CORE Internet Council of Registrars a request for registrar verification in connection with the domain name at issue. On July 26, 2004, CORE Internet Council of Registrars 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 27, 2004. The Center verified that the Complaint together with the amendment to 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 August 3, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2004. The Response was filed with the Center on August 23, 2004.

The Center appointed Torsten Bettinger as the sole panelist in this matter on August 27, 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

The Complainant, 01059 GmbH, is a German telecommunication network operator. On January 21, 2004, the Complainant was assigned the interconnection operator prefix 01059 by the German Regulatory Authority.

The Complainant provided evidence that it is registered under the company name 01059 GmbH in the German Commercial Register.

The Respondent is a German Service Provider and marketing agency for 01058 Telecom GmbH. The Respondent registered the disputed domain name <01059.com> on January 26, 2001.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant asserts that the number 01059 is protected as a “identification mark” pursuant to § 5 of the German Trademark Act and that the domain name <01059.com> is virtually identical or confusingly similar to this mark.

In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant states that the Respondent is a competitor of the Complainant and that the Respondent uses the domain name “in an unfair manner to redirect the traffic from the domain name <01059.com> to <01058.com>.”

In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant states that the Respondent registered the domain name in order

- to prevent the Complainant from registering the domain name

- to disrupt the business of the Complainant

- to gain unfair competitive advantage by misleadingly divert potential customers to the website at “www.01058.com”.

B. Respondent

Respondent asserts that the company name 01059 GmbH was registered in the commercial Register three years after the registration of the disputed domain name.

It contends that it “registered the domain name in order to distract domain grabbers from registering this domain name and using it in bad faith with respect to 01058 Telecom GmbH”.

6. Discussion and Findings

A. Identical or Confusingly Similar

The first element that a Complainant has the burden of proving is whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has not indicated that it has any trademark registration for the number 01059 nor has it provided evidence that it has unregistered trademark rights arising out of the use in commerce and the acquisition of secondary meaning of the number 01059 pursuant of Sec. 4 (2) German Trademark Act. The Complainant merely claims that it has registered and uses the number 01059 as part of its company name and that the number 01059 is protected as an “identification mark” pursuant to § 5 of the German Trademark Act. § 5 of the German Trademark Act defines the requirements for the protection of commercial designations but does not relate to trademarks or service marks.

The Policy states that the domain name in question in any dispute must be, “identical or confusingly similar to a trademark or service mark in which the complainant has rights” (emphasis added).

It is the clear language of the Policy that this administrative proceeding does only apply to disputes involving trademarks or service marks, but does not offer relief to holders of trade names, company names or any other commercial designations. As a result, in the event of abuse, holders of these rights are required to defend their legal rights through national judicial systems. (See The Recognition of Rights and the Use of Names in the Internet Domain Name System, Report of the Second WIPO Internet Domain Name Process, September 3, 2001, http://wipo2.wipo.int, at 138, in the following “Final Report”, at 21 et seq. and 138).

Therefore, the Panel finds the Complainant has not discharged its burden of proof to show it has trademark rights in the disputed domain name <01059.com>.

B. Rights or Legitimate Interests; Registration and Use in Bad Faith

The Policy requires that the Complainant prove all elements of paragraphs 4(a)(i-iii) of the Policy. Thus, since the Complainant has failed to prove 4(a)(i), the Panel need not discuss whether the Respondent has legitimate rights and interests in the disputed domain name, or whether the Respondent registered and was using the disputed domain in bad faith.

7. Decision

The Panel has found the Complainant failed to show that the disputed domain name, <01059.com>, is identical or confusingly similar to a trademark in which the Complainant has rights pursuant to paragraph 4(a)(i) of the Policy.

Therefore, based on Policy paragraph 4(i) and the Rules, paragraph 15, the Complaint is denied.

Torsten Bettinger
Sole Panelist

Dated: September 10, 2004