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Julius Sämann Ltd. v. Dirk Sauer [2004] GENDND 469 (13 April 2004)

1. The Parties

The Complainant is Julius Sämann Ltd., a company with its address in Zug, Switzerland, represented by Hartmann Müller Partners, in Zürich, Switzerland. (hereinafter the "Complainant").

The Respondent is Dirk Sauer, an organization with an address in Idstein, Germany (hereinafter the "Respondent").

2. The Domain Names and Registrar

The domain names at issue are <wunderbaum.info> and <wunderbaum.org>. The domain names are registered with Tucows Inc., of Toronto, Ontario, Canada (hereinafter the "Registrar"). The domain names were registered on October 30, 2003.

3. Procedural History

This action was brought in accordance with the Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Rules"), and the WIPO Supplemental Rules for Uniform Dispute Domain Name Resolution Policy, in effect as of December 1, 1999, (the "Supplemental Rules").

The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") in hardcopy on February 26, 2004, and by e-mail on March 2, 2004. The Center acknowledged the receipt of the Complaint on February 27, 2004. The same day, February 27, 2004, the Center sought registration details from the Registrar and the Registrar confirmed that the Respondent is the registrant, the Policy applies to the domain names and that the status of each of the disputed domain names is "active."

On March 2, 2004, the Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules, including payment of the prescribed fee. The Panel agrees with the Center`s assessment concerning the Complaint's compliance with the formal requirements. The Complaint was properly notified in accordance with Paragraph 2(a) of the Rules.

In accordance with Rules, Paragraph 4(c), the formal date of commencement of the administrative proceeding was March 3, 2004.

In accordance with the Rules, Paragraph 5(a), the due date for Response was March 23, 2004. On March 22, 2004, the Respondent timely filed a Response by e-mail and on March 26, 2004, in hardcopy. The Center acknowledged the receipt of the Response on March 22, 2004. The Panel has determined that the Response does not comply with some formal requirements of minor importance as contained in Paragraph 5 of the Rules. However, given the minor significance of this non-compliance, the Panel does not see a reason to attach specific consequence thereto and accepts the Response with regard to the contentions contained therein.

The Center appointed Hub J. Harmeling as Sole Panelist in this matter on March 30, 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.

No further submissions were received after the appointment of the Sole Panelist.

4. Factual Background

Complainant is part of the "Sämann Group" which, among other activities, produces air fresheners in the shape of a fir tree since 1952. The Group sells the products in many places over the world, including all European countries. Complainant is one of the Group companies designated to hold the Group's trademarks.

Complainant has registered various trademarks for its goods. Many of these trademarks include the word "Wunder-baum" as an important part of the mark and all trademarks are registered for deodorizer and similar products. The Panel notes, however, that no proof of a valid word mark registration "Wunder-baum" has been supplied.

The Complainant has exclusive wholesalers in many countries. In Germany the only licensed wholesaler is Böhm GmbH in Schweinfurt, Germany. The domain name wunder- baum.de is registered and used by Complainant's official and licensed wholesaler Böhm GmbH.

The Respondent is an importer, exporter and wholesaler of deodorizer of 3 different brands: JEES, AROMATE and WUNDERBAUM. The Respondent has no contractual binding with the three manufacturers. The Respondent registered the domain names <wunderbaum.org> and <wunderbaum.info>, as well as <jees.de> and <aromate.de>, to sell the products under the respective brand names.

On the website under the disputed domain names Complainant's products are offered for sale. Furthermore, Respondent mentions on his website that the logo with the tree as well as "Wunder-baum" are registered trademarks of the Complainant: "Baumzeichen und WUNDER-BAUM® sind eingetragene Schutzmarken von Julius Sämann Ltd. © 2002 by Julius Sämann Ltd." On the website under the disputed domain names, there are links to one of Respondent's other websites, "www.sc. jees.de". On this website Respondent offers for sale products of JEES s.r.o. (Czech Republic), which is a direct competitor of Complainant. The website "www.jees.de" is more elaborate and contains more information than the websites "www.wunderbaum.org" and "www.wunderbaum.info."

On January 23, 2004, the representatives of the Complainant notified the Respondent that the Complainant considered the Respondent's use of the disputed domain names an infringement of its trademark rights and had requested Respondent to transfer the domain names in question against restitution of his out-of-pocket expenses.

In a letter of February 11, 2004, the Respondent answered and stated that he understands the strong interest of the Complainant in these domain names. Respondent indicated that he could imagine selling the domain names for an appropriate amount.

On February 12, 2004, the representatives of the Complainant once again asked the Respondent to transfer the domain names before February 28, 2004, against restitution of his out-of-pocket expenses.

5. Parties' Contentions

A. Complainant

The Complainant brings forward the following arguments in relation to the disputed domain names:

The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant is of the opinion that the two disputed domain names registered by Respondent are identical with his trademark with the only exception, that Respondent has deleted the hyphen from the word wunder-baum.

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

The Complainant asserts that the Respondent has no rights or legitimate interest in respect of the domain names, because the domain names were registered "without any authorization or consent from Complainant whatsoever."

The Complainant claims that Respondent is not commonly known by the disputed domain names.

The Complainant asserts that the Respondent is not making a legitimate non-commercial or fair use of the domain names; the links placed by the Respondent to other websites for competing products were made on purpose "for commercial gain by misleadingly divert consumers and to tarnish the Complainant's trademarks at issue."

The Complainant further asserts that the Respondent's use of the domain names is not in connection with a bona fide offering of goods for the following reasons: first, the products offered by the Respondent on the websites under the disputed domain names are protected by Complainant's trademark. Secondly, other products of the same sort, which are being manufactured by a direct competitor of the Complainant, are (indirectly) being offered by the Respondent on the websites under the disputed domain names. Thirdly, the Respondent is not an authorized wholesaler or licensed to use Complainant's trademark.

The domain names were registered and are being used in bad faith

In relation with the above mentioned fact that the Respondent did not react to the last letter of the Complainant and the fact that the websites of the disputed domain names contain links to another website of the Respondent, i.e. "www.Jees.de", the Complainant puts forward the following arguments:

The Complainant alleges that the Respondent registered the disputed domain names for the purpose of selling these to holder of the trademark for considerate amount of money and that "the use of these domain names to promote the goods of Complainant is only in disguise of this primary purpose."

The Complainant asserts that "Respondent's domain names are currently used to intentionally direct Internet users to the products of Complainant's direct competitors for commercial gain. Moreover, even if Respondent were not currently using the disputed domain names, in light of the well known character of Complainant's marks and absence of Respondent's authorization to use those marks, the only plausible explanation for Respondent's registration of the disputed domain names would be to use them in bad faith to divert Internet users for commercial gain."

The Complainant claims that the Respondent registered the domain names for the purpose of disrupting the business of Complainant.

The Complainant further asserts that "by using the domain names, Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent's website (including the linked site "www.jees.de"), by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website and the jees-products respectively."

The Complainant asks that the domain names be transferred to it.

B. Respondent

The Respondent has submitted a formal response to the Complaint by sending a letter on March 22, 2004, putting forward the following arguments:

Reason to choose the domain names <wunderbaum.info> and <wunderbaum.org>

The Respondent claims he created the websites under the disputed domain names and the domain names <jees.de> and <aromate.de>, just to sell products identical to the respective brand names.

In the opinion of the Respondent it is considered appropriate to register domain names, which are identical to the brand name of the products he is selling.

Legitimate interest in respect of the domain names <wunderbaum.info> and <wunderbaum.org>

The Respondent asserts that he is an independent sales organization and has no contractual relationship with any of the manufacturers. He states that he has no special preference for one of the products that he is selling.

The Respondent alleges that the domain names <wunderbaum.org>and <wunderbaum.info> have been registered to sell the Wunderbaum products.

The domain names <wunderbaum.info>' and info' and <wunderbaum.org> are used in good faith

The Respondent further asserts that he registered the domain names for needs of his customers and to support Julius Sämann Ltd by promoting the Wunderbaum products.

The Respondent claims never to have sold a domain name before and that it is in his interest to keep the disputed domain names for the purpose of selling the Wunderbaum products.

The Respondent further states that he is "an air freshener trader, not a domain name trader and that he has invested time and money in setting up these websites and just wants compensation, in the case of being forced to sell the domains."

6. Discussion and Findings

In order to obtain the relief requested under the Policy, Complainant must prove in the Administrative proceeding that each of the three elements of Paragraph 4(a) are present:

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

(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 in bad faith.

A. Identical or Confusingly Similar

Although there is no evidence of Complainant's rights to any word mark "Wunderbaum" or "Wunder-baum," the Panel finds that the Complainant has sufficiently demonstrated his trademark rights in the word "wunder-baum," which is an important part of Complainant's device marks. Respondent confirms that the disputed domain names actually serve to direct customers to the products carrying Complainant's trademarks. The Panel finds that the disputed domain names are confusingly similar to the Complainant's registered trademark(s), notwithstanding the omission of the hyphen from the domain names.

B. Rights or Legitimate Interests

Complainant contends that, given that Respondent is not an authorized reseller of Complainant's products and that Respondent sells also competitors' products, the Respondent does not have rights or a legitimate interest in the disputed domain names.

The Respondent has put forward the defense that he does have a legitimate interest in the domain names because he registered the domain names <wunderbaum.org> and <wunderbaum.info> to simply sell wunderbaum products and the fact that he is indifferent to selling either Wunderbaum, Jees or Aromate products.

One of the circumstances constituting rights or legitimate interest in the domain name, mentioned in Paragraph 4(c) of the Policy, is:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or service;

As to the facts, the Panel finds, first of all, that:

- the circumstance that the website under the disputed domain names includes links to the jees.de website, which elaborately offers products competing with Complainant's products; and

- the circumstance that the Respondent apparently offers Complainant's trademarked goods outside Complainant's exclusive distribution network- do not indicate a legitimate interest on the side the Respondent.

Moreover, the Panel acknowledges that there may be a legitimate interest for (lawful) wholesalers/reseller of trademarked products to use those trademarks to bring to the public's attention their commercialization of such products, but finds that this interest does not justify the use of third party trademarks in a way that may create the impression that there is a commercial connection between the holder of the domain name and the holder of the trademark, and in particular that the reseller's business is affiliated to the holder of the trademark's distribution network or that there is a special relationship between the two (cf. also AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290).

In this case the Panel finds that the Respondent may create the impression that there is a commercial connection or a special relationship between the Respondent and the Complainant. The Respondent's domain names are (almost) identical to Complainant's trademark. The Respondent has done nothing to avoid this impression. On the contrary, the Respondent mentions on the websites under the disputed domain names that the logo with the tree as well as "Wunder-baum" are registered trademarks of the Complainant: "Baumzeichen under WUNDER-BAUM® sind eingetragene Schutzmarken von Julius Sämann Ltd. © 2002 by Julius Sämann Ltd.," which is liable to lead consumers to think that there is a connection between the Complainant and the Respondent.

Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent has registered and is using the disputed domain names to promote the sale of Wunderbaum products and non-Wunderbaum products by trying to attract Internet users to his websites. By registering and using the domain names for this purpose, the Respondent tries to benefit from the reputation of the Wunderbaum mark, thereby creating a likelihood of confusion with the trademark "Wunder-baum" particularly as to source, affiliation, and/or endorsement of the website.

A consequence of the use of the domain names by the Respondent is that Internet users, visiting "www.wunderbaum.org" and "www.wunderbaum.info," (indirectly) get access to information about products of competitor's of the Complainant.

Under the circumstances of this case and in the absence of a legitimate interest to use disputed domain names, the Panel finds that the Complainant has sufficiently established a case of bad faith registration and use of the disputed domain names.

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, <wunderbaum.info> and <wunderbaum.org> be transferred to the Complainant.