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Krone Radio Marketing und Beteiligungs GmbH v. A. Amfort [2004] GENDND 1315 (27 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Krone Radio Marketing und Beteiligungs GmbH v. A. Amfort

Case No. D2004-0686

1. The Parties

The Complainant is Krone Radio Marketing und Beteiligungs GmbH, Vienna, Austria, of Austria, represented by Ebert & Huber Rechtsanwälte, Austria.

The Respondent is A. Amfort, Cornelius, North Carolina, United States of America, represented by Arno Ahornegger and Alpine Wolf Inc., Shalimar, Florida, United States of America.

2. The Domain Names and Registrar

The disputed domain names <kronehit.com> and <kronehit.net> are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2004. On August 30, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On August 31, 2004, eNom 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. eNom informed the Center that the domain name <kronehit.com> has been placed on hold, but the domain name <kronehit.net> had expired and was listed in the redemption period with the global registry. Since the Respondent did not renew that domain name in the periods provided, the Complainant exercised its right to redeem it on behalf of its holder and eNom reactivated and locked it so that both domain names were placed on hold during the present proceedings.

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 September 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2004. Whilst Mr. Arno Ahornegger, acting on behalf of the Respondent, had sent two early communications to the Center by email (on September 1 and September 9, 2004), the Response was filed with the Center after the due date and after the appointment of the Panelist (see below).

The Center appointed Dr. Gerd F. Kunze as the sole panelist in this matter on October 13, 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.

On October 17, 2004, the Respondent informed the Center that its Response was delayed because of exceptional circumstances (damage caused to the town and headquarters of the Complainant by Hurricane Ivan), and that it could be downloaded, using a code word, from its “www.kronehit.com” main page. Finally, hardcopies of the Response were received by the Center on October 21, 2004, and the Panel received it from the Center on the same day per facsimile. Despite the late receipt of the Response, the Panel accepted to take the Response into consideration for its decision. However, the Panel fails to understand why the Respondent placed its Response on one of its websites, instead of sending it per email to the Center, with copy to the Complainant, as required by the Rules. This strange behavior caused the Complainant to send to the Center a late statement with comments on the Response on October 21, 2004, followed by a request from Respondent to reply to Complainant’s further comments. Although the Panel, under the circumstances, understands Complainant’s reaction, he chose not to take into account its additional comments nor to accept further comments from Respondent, since he felt that Complainant’s further statements did not contain any new elements which could have influenced the decision of the Panel.

4. Factual Background

A. Complainant

The Complainant is the owner of the service mark KRONE HIT RADIO, registered in Austria on May 23, 2001, for services in class 35 (advertising), class 38 (telecommunication) and class 41(education, entertainment, sports and cultural activities) of the international classification of goods and services.

This mark is being used by different companies, mainly of the Krone group of companies to which the Complainant belongs, in different parts of Austria for private local radio programs that are called “Krone Hit Radio” (sometimes also “Krone Hit”) and are designed by one of the group’s companies. The Complainant explains that this rather complicated structure results from the fact that the Austrian radio authorities do not grant nation-wide private radio licenses but only regional radio licenses. The group’s radio program “Krone Hit Radio” is also advertised on the website “www.kronehit.at” that is owned and designed by companies of the same group. These submissions, evidenced by a number of documents, including the registration certificate for the service mark registration KRONE HIT RADIO, are not contested by the Respondent.

B. Respondent

The domain name <kronehit.com> was registered on August 10, 2001, and the domain name <kronehit.net> was registered on June 30, 2003. While according to evidence submitted by the Complainant the registrations were transferred several times, the Respondent explains that the changes were the result of changes of the Registrar used by the Respondent.

For the assessment of this case it does not matter whether several natural and/or legal persons, all interconnected, were over the time holders of the respective domain names, as the Complainant submits and evidences with a number of documents, or whether the submission of the Respondent is correct that the domain names always belonged to the same holder, since the Respondent argues that all the persons involved in the registration and administration of the domain names were related to itself. In conclusion, the Panel can take it as a fact that the persons that before and during these proceedings acted in connection with the domain names <kronehit.com> and <kronehit.net> always acted on behalf of the Respondent. This is particularly true for the entities or individuals: A. Amfort, Amfort domain services, Tacer, Arno Ahornegger, Jaqueline Cameron, Alpine Wolf and Richard S. Wolf. For this reason, it does not matter whether one or the other of these persons are fictitious, as the Complainant alleges, or that the Respondent submitted no evidence whatsoever for the existence and relationship between the Respondent and the different legal and natural persons mentioned by it.

5. Parties’ Contentions

A. Complainant

The Complainant submits that, through an email dated July 21, 2003, a representative of Respondent, Jaqueline Cameron, made an offer on behalf of the owner of the domain <kronehit.com> to the general manager of Donauwelle Radio Privat Niederösterreich GmbH, a company of the Krone Group, which the Complainant also belongs to), for the sale of the domain names <kronehit.com> and <kronehit.net> for Euro 19.500. She claimed that this amount would be used to finance two years of studies at the Vienna University for an Austrian adult.

The Complainant furthermore submits that, after that offer had been refused, Jaqueline Cameron, this time in fluent German language, on September 10, 2004 made three – identical – offers for the sale of the domain names <kronehit.com> and <kronehit.net> for a minimum price of Euro 5000 (the names to be sold to the person offering the best price), to the following entities: Krone Multimedia GmbH & Co KG, the company of the Krone group that at this time was the registered owner of the mark KRONE HIT RADIO; Radio Antenne Steiermark, a competitive private radio company; NEWS Verlag, a company that is the editor of several weekly magazines and is also a competitor of the Krone group which is editing the daily newspaper “Kronenzeitung”.

These submissions are evidenced by copies of the respective emails and are not contested by the Respondent.

The Complainant furthermore submits that (1) the domain names <kronehit.com> and <kronehit.net> are identical or confusingly similar to a service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain names; (3) the domain names were registered and are being used in bad faith.

B. Respondent

The Respondent submits that the domain names <kronehit.com> and <kronehit.net>, as well as a trademark KRONE HIT are intended to be used in the United States in the food and beverage market. In view of the different markets and the different manner of writing of the logo of its trademark KRONE HIT it believes that there is no confusing similarity. It furthermore submits that, while in 2001 it was originally intended to market a beverage under the trademark KRONE HIT, the project had been put on hold for commercial reasons. After establishing a business relationship with another company in the field, it was determined to freeze the initial product project plans and to sell the domains to the highest bidder worldwide. The offer for sale of the summer 2003 was to finance, with the realized amount, the tuition fees of a student. Since there was no interest in the domains, it was decided to keep the domain names for communication purposes until the frozen product projects were reinstalled in December 2003.

The Respondent furthermore submits that the domain names <kronehit.com> and <kronehit.net> are not confusingly similar to a mark in which the Complainant has rights, that it has rights and interests in the domain names and that they were not registered and are not used in bad faith.

6. Discussion and findings

A. Identical or Confusingly Similar

The domain names <kronehit.com> and <kronehit.net> are not identical to the mark KRONE HIT RADIO of the Complainant. However they are identical with KRONE HIT, the distinctive part of that mark. The fact that in the domain name the two parts “krone” and “hit” are written together while in the trademark they are written separately does not exclude identity, since domain names cannot be written with a space between two words. The difference in writing therefore stems from the rules and technical necessities of the domain name registration system (see Fiat Auto S.p.A v. Italienska bil, WIPO Case No. BIZ2001-00030, with respect to the domain name <alfaromeo.biz>).

The parts. “.com” and “.net” of the domain names cannot be taken into consideration when judging similarity. Also the descriptive part “radio” does not exclude similarity between the domain names and the mark “KRONE HIT RADIO”. The Respondent submits that the domain names <kronehit.com> and <kronehit.net> are intended to be used in the food and beverage market in the United States.

The Complainant submits that its trademark KRONE HIT RADIO is one of the best-known trademarks in Austria and is also advertised in the Internet at its website “www.kronehit.net” (i.e. writing “kronehit” in one word and without using the descriptive term “radio” in the Internet address). In its Response, the Respondent submits that KRONE HIT RADIO has a listeners’ market share of 2 % in Austria only. While these submissions are contradictory, neither party has offered evidence and the Panel, differentiating between the degree of knowledge of the Complainant’s trademark and the percentage of actual listeners of the program KRONE HIT RADIO, is satisfied that many Austrian citizens know of this program and the mark KRONE HIT RADIO. Taking into account that in domain name conflicts it is important to examine whether there exists a likelihood of confusion in the Internet, the Panel is satisfied that the Respondent’s domain names are confusingly similar to the mark KRONE HIT RADIO in which the Complainant has rights. An Internet user, being aware that the Complainant’s radio program KRONE HIT RADIO has an Internet presence but not knowing by heart the correct domain address, may try to type the distinctive element “krone hit” of the Complainant’s mark combined with the most common “.com” gTLD or the also very common “.net” gTLD instead of the “.at” cctld. Also an Internet user who is not aware of the Internet presence of the KRONE HIT RADIO program but tries to find such presence, may try the “.com” domain or the “.net” domain. In both cases the Internet user will be linked instead to websites of the Respondent. Clear confusion would have resulted since both domain names were linked to websites that had nothing to do with the Complainant (for details see below 6C).

Now the domain name <kronehit.com> leads to a website (“www.kronehit.alpinewolf.com”) of the Respondent, where KRONE HIT products are advertised. However, the Respondent has never marketed any product under a trademark corresponding to the domain name <kronehit.com>, such as KRONE HIT products now mentioned on this website. At present, the products cannot be purchased. Therefore, the Respondent cannot argue that its domain names would be used for different goods in different markets, since until now there exists no clientele in the United States that would search for KRONE HIT products of the Respondent in the Internet. The great majority if not all Internet users that are typing the domain names <kronehit.com> or <kronehit.net> will therefore expect to arrive at a website of the Complainant, or of the Krone Group of companies to which the Complainant belongs. These Internet users were clearly misled (the domain <kronehit.net> is not active, since it expired on June 30, 2004). Consequently, the domain names <kronehit.com> and <kronehit.net> are confusingly similar to the mark KRONE HIT RADIO of the Complainant within the understanding of the UDRP.

B. Rights or Legitimate Interests

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

The Respondent claims that it intends to use the trademark KRONE HIT in the United States for a beverage product. However, it cannot claim rights in such trademark which would have to be based on registration or at least on use in commerce in the United States. The fact that the Respondent on its website uses the sign “TM” together with the presentation of the trademark KRONE HIT and claims protection in certain classes of goods of the US classification of goods and services has no legal effect and cannot be substituted for use of the mark. It confirms at the same time that the Respondent has not registered that mark, since otherwise it would use the sign ®.

The Respondent acts or acted in the past using different names, such as “Amfort”, “Tacer” and “Alpine Wolf”. Additionally, the domain name <kronehit.com> was during a certain period of time registered in the name of Arno Ahornegger and both domain names were during a certain period of time registered in the name of Jaqueline R. Cameron. However, all these names are totally different from the domain names <kronehit.com> and <kronehit.net>.

Consequently no right or legitimate interest can be based on rights in a trademark or in a name the Respondent may have.

Furthermore, none of the circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given in the Response. The Respondent has never used the domain names in connection with a bona fide offering of goods or services, and it has not demonstrated any preparations for such use (it has even confirmed in its Response that no such preparations were made until now). No doubt, the Respondent is not known at all under the domain names <kronehit.com> and <kronehit.net> since it never became active under these names. The domain names always provided links to Respondent’s other sites. It is to be noted that advertising for KRONE HIT nutritional products is now provided on that website, where it is explained that production was interrupted because of Hurricane Ivan but that production would soon start again. This advertising clearly gives the wrong impression that KRONE HIT nutritional beverages or other products of the Respondent had been on the market in the past. In the Panel’s view, such behavior of the Respondent does not increase its credibility. In that context, it is also noteworthy that on the Respondent’s home page at “www.alpinewolf.com” no reference to KRONE HIT products can be found. The Panel normally is not expected to surf the Internet on its own behalf for information not provided in the submissions of the parties. However, the Respondent asked the Panel, throught its email to the Center of October 18, 2004, to download its Response from the “www.kronehit.com” main page, which the Panel did since the Respondent failed to send its Response by email to the Center.

In its Response, the Respondent tries to explain that the domain name <kronehit.com> had been registered in 2001 in view of an intended cooperative project between Alpine Wolf and a US beverage distributor that had the word “crown” in its name. Since there had been numerous trademark registrations containing the word “crown” and also since the word was not available for a gtld registration, it had been decided to use the German word “Krone”. Respondent further asserts that since that word as such was not available for registration as a domain name, it was decided to combine it with a short addendum that was free in order to “hit” on the beverage market. So, finally the “invented” combination <kronehit.com> was retained.

The Respondent does not explain why at that time it did not also apply for registration of a trademark KRONE HIT at the USPTO, nor does it explain why, despite the fact that the beverage project was put on hold, it registered on June 30, 2003 the domain name <kronehit.net>. The latter registration is clear evidence for the Panel that the Respondent in reality had no legitimate interest in the two domain names, because, on July 21, 2003, only three weeks after the registration of the second domain name, it offered both domain names for sale to a company that belongs to the same group of companies as the Complainant, for an amount of Euro 19.500.

The following considerations confirm that the Respondent has no legitimate interests in the domain names<kronehit.com> and <kronehit.net>. A US company would not try to market a product under the word “krone” if an association of the consumer with the term “crown” is intended, since that German word would not be understood by US consumers. On the contrary, as asserted by Complainant, it is much more likely that Mr. Arno Ahornegger, who held a senior position at Respondent, who was born in Austria and was still enrolled early 2004 as a student in a Seminar at the Vienna University, had the idea to register the domain names because of his knowledge of the radio program of the Complainant and its related companies. Even if the market share of the KRONE HIT RADIO program is relatively low (particularly as compared to the public radio stations), the Panel does not believe that Respondent simply invented the domain names <kronehit.com> and <kronehit.net> for its own use in the USA.

Interestingly, the Respondent, in its belated response, does not contest Complainant’s assertion that Mr. Ahornegger knew about the Radio Program KRONE HIT RADIO when the domain name <kronehit.com> was registered. The Response in this relation is carefully worded: “The domain owner assures that at the time of registration ALPINE WOLF INC was not aware of any private or legal entity which could have had a sustainable interest or intellectual property right to KRONEHIT.COM in the United States or elsewhere within the respondents markets.” (emphasis by the Panel).

Finally, the Respondent itself has not alleged making or intending to make a legitimate non-commercial use of the domain names.

The Panel is therefore satisfied that the Respondent has no right or legitimate interests in the domain names <kronehit.com> and <kronehit.net>.

C. Registered and Used in Bad Faith

For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. As an example, the Policy section 4(b)(i) mentions registration of the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of a mark or to a competitor of that Complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name. A generally applied test is therefore whether a Respondent has attempted to sell the domain name(s) for a sum in excess of the Respondent’s out of pocket expenses in registering the domain name. This Panel is satisfied that this test is fulfilled, since the Respondent has repeatedly tried to sell the domain names <kronehit.com> and <kronehit.net> to the Complainant or its competitors, as has been described in detail in part 5 A of the decision. This is not contested by the Respondent, who even expressly refers to its intention to sell the domain names in 2002 and again in summer of 2003.

In view of the circumstances, namely that on the one hand it is unlikely that the domain name <kronehit.com> was invented for use in the US-market, that on the other hand Mr. Ahornegger is of Austrian origin, and finally that the domain name <kronehit.net> was registered three weeks only before the two domain names where offered for sale to the Complainant and some of its competitors, the Panel is satisfied that the Respondent was aware of the radio program KRONE HIT RADIO when he registered the domain names.

All other considerations submitted by the Complainant to prove Respondent’s bad faith, and Respondent’s arguments to refute its bad faith, need not be considered in view of these clear facts. Respondent’s submission contains statements only but no evidence at all for its arguments.

The fact that the Respondent did not renew the domain name <kronehit.net> when it expired on June 30, 2004, and now argues that its dit not to intend to sell but to use the domain name <kronehit.com> for a beverage product to be sold under the trademark KRONE HIT, does not change this assessment. The fact that after the filing of the Complaint the Respondent ceased using the domain name in the manner that is described by Complainant may be seen as further evidence of bad faith.

In that context, the Panel has taken into consideration as an additional element of bad faith the fact that until recently the domain name <kronehit.com> was linked to a website “http://fedeggs.tacer.com” which provided a kind of political humor, while the domain name <kronehit.net> provided sponsored hyper-links to other websites which relate to investment and how to make money. Even in his first email communication to the Center of September 1, 2004, Mr. Arno Ahornegger, on behalf of the Respondent, stated: “the domain name had been and is currently used for commercial communications and email purposes”. As said before the present advertising for KRONE HIT food products on the website “www.kronehit.com” is suspicious under the circumstances.

The Panelist is therefore satisfied that the Respondent has registered and is using the domain names <kronehit.com> and <kronehit.net> 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 names <kronehit.com> and <kronehit.net> be transferred to the Complainant.

Dr. Gerd F. Kunze
Sole Panelist

Date: October 27, 2004