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CAMPER, S.L. v. Detlev Kasten [2004] GENDND 559 (25 May 2004)

1. The Parties

The Complainant is CAMPER, S.L., Inca Baleares, Spain, represented by Abril Abogados, Spain.

The Respondent is Detlev Kasten, of Munchen, Germany, represented by Dietmar Hantke, Germany.

2. The Domain Name and Registrar

The disputed domain name <camper.net> (“the domain name”) is registered with PSI-USA Inc. (“the registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2004. On March 16, 2004, the Center transmitted by email to PSI-USA, Inc. a request for registrar verification in connection with the domain name at issue. On March 18, 2004, PSI-USA, Inc. 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 satisfies 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 April 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2004. The Response was received by the Center on April 22, 2004.

The Center appointed Christian-André Le Stanc as the Sole Panelist in this matter on May 11, 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, CAMPER S.L., is a well-known Spanish firm which manufactures and sells mainly footwear. For the purpose of its activity, Complainant registered several trademarks including the word “Camper.”

Notably, Complainant holds rights over the following trademarks:

• German trademark “CAMPER” n°2902860 filed on March 18, 1994, covering goods and services in classes 25 and 39;

• Community trademark “CAMPER” n°526095 filed on April 28, 1997, covering goods and services in classes 18, 25 and 39;

• International trademark “CAMPER” n°503103 filed on May 29, 1986, covering goods in class 18 and 25.

Complainant also registered several domain names, such as <camper.com> or <camper.fr> to promote and offer its goods and services.

Respondent registered the domain name <camper.net> on October 16, 1997.

Complainant contacted him on November 14 and 19, 2003, through its authorized representative in order to acquire the said domain name.

No response having been received, on November 25, 2003, Complainant informed Respondent of its prior rights over the name “Camper” and of its intent to try to settle the dispute amicably.

On December 1, 2003, Respondent’s counsel answered that he didn’t believe that the domain name at issue could interfere with Complainant’s rights for Respondent’s intent was not to sell shoes or leather items through his domain name but only to promote camping activities, adding that Complainant’s rights were only “picture-trademarks,” which excluded confusion.

Complainant answered, on December 2, 2003, that Respondent’s attitude was stalling for time and repeated its intention to acquire the domain name at issue.

On January 29, 2004, Respondent refused the proposal but indicated that he could supply only information or services through this name but not products.

Later, Respondent asked the Complainant to give him an answer in two other e-mails dated February 16, and March 8, 2004, vainly.

The attempts of settlement came to an end, as on March 15, 2004, Complainant filed the Complaint.

5. Parties’ Contentions

A. Complainant

• Complainant emphasizes its widespread notoriety, notably in Germany where Respondent is located, and claims rights over numerous German, community and international trademarks including the word “Camper,” along with rights over several domain names which also comprise the word “Camper.”

For the Complainant the domain name is identical or confusingly similar to its marks “Camper” and its marks including the word “Camper” and in view of the great prestige of the said marks, the registration of the contested domain name inevitably aimed at taking advantage of its reputation.

• Complainant also maintains that Respondent does not have any rights or legitimate interests in respect of the domain name, especially because he registered it without the authorization, knowledge or consent of Complainant.

Complainant tried to find out whether Respondent held trademark rights over the name “Camper” and did not find any. Its inquiries on the search engine “www.google.com” did not lead to any information that could establish that Respondent, himself or through his firm, were commonly known by the domain name.

At last, in the Complainant’s opinion, the fact that the domain name has been inactive since its registration in 1997, tends to confirm the absence of rights or legitimate interests of the Respondent.

• In addition, Complainant alleges that the domain name was registered and is being used in bad faith by the Respondent, for the following reasons:

Respondent works in a Company offering services related to the web and, neither Respondent, nor his Company, use the word “Camper.”

Respondent is an experienced Internet professional who, therefore, is aware of the rules governing the Internet domain names.

The website linked with the domain name is inactive.

The domain name <camper.net> prevents Complainant from registering it and may lead the consumers to believe that Complainant does not provide any information on the Internet.

In view of the reputation of the Complainant and of its prior rights, Respondent was clearly aware of the Complainant’s trademarks when he registered the domain name at issue.

Complainant already obtained, respectively from the National Arbitration Forum and from the Center, the transfer of the <camper.us> and <camper.info> domain names, registered by third parties.

B. Respondent

• Respondent alleges that “Camper” is a generic word which should not be protected and that there is no possibility of confusion between the opposing terms, notably because the prior rights claimed by the Complainant concern figurative trademarks.

• Respondent claims he has legitimate interests in respect of the domain name for the following reasons:

He is, at the moment, developing and testing his website and intends to offer his services to the public through the said website as soon as the development phase is over.

His use of the domain name is fair, though it concerns a limited circle of customers, as it does not aim at diverting consumers for commercial gain or tarnishing the marks at issue.

Respondent, as an individual and as part of his company, has been and is commonly known by the domain name <camper.net>.

• Respondent finally contests having acted in bad faith and points out that:

He did not register the domain name for the purpose of selling, renting or transferring it to the alleged owner of the trademarks and that he never sold any domain name.

He did not register it in order to prevent Complainant from registering it, for the purpose of disrupting its business, as he is not a competitor of the Complainant.

He did not plan to attract Internet users to his website by creating confusion with Complainant’s trademark.

At last, for the Respondent the <camper.info> and <camper.us> cases are not relevant as the Respondent was in default in the first one and as it is alleged, for the second one, that National Arbitration Forum rules are different.

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, in order to prevail, the Complainant must prove that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has established its rights over the marks “CAMPER,” and over the other marks including the said term, registered in several countries and notably in Germany before October 16, 1997, when the domain name was registered.

Even if the Panel is not entitled to appreciate the validity of registered trademarks, it will be stressed upon the fact that if the word “camper” could be considered as generic or descriptive in connection with camping devices or activities, it is not the generic or usual designation of shoes or leather items.

Besides, the fact that some of Complainant’s trademarks do include graphic elements does not matter because the terms at issue in the present dispute must only be compared by their words (see Banco Espanol de Credito v. Miguel Duarte Perry Vidal Taveira, WIPO Case No. D2000-0018, March 18, 2000) and because the trademark “camper” is well known in Europe.

Disregarding the “net” generic part of the domain name, the domain name is identical or at least confusingly similar to the “CAMPER” trademarks formerly registered by the Complainant.

Hence, Complainant has met its burden regarding the first element required by Paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Proving that Respondent has no right or legitimate interest in respect of the domain name amounts to proving a negative fact, which is almost impossible.

One way for the Complainant to produce evidence is to verify, on the available databases, if Respondent holds rights over the name he registered as a domain name or if he is known by the domain name as a person or in his activity.

Complainant did so, but could not find any information connecting the Respondent to the name “Camper.”

Consequently, Complainant having shown a prima facie evidence, the burden of proof should be shifted on the shoulders of the Respondent, as results from consolidated case law, in view of the large number of decisions that have ruled this way, such as for instance: Sony Kabushiki Kaisha v. Sony.net, WIPO Case No. D2000-1074, November 20, 2000; Asia Pacific Breweries Limited v. Chris Kwan, WIPO Case No. D2003-0920, January 20, 2004).

Now, Respondent asserts that he has been using the domain name for a long time in testing and developing his website before “opening” it to the public.

The Response does not establish, before any notice to the Respondent of the dispute, his use, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. It is no longer established that Respondent, as an individual or else, would have been commonly known by the domain name or would have made a legitimate non commercial or fair use of the domain name.

In view of the non-exhaustive circumstances described in Paragraph 4(c) of the Policy, the Panel considers that no evidence is shown of the Respondent rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The alleged decisions concerning other “camper” domain names do not constitute, in the opinion of the Panel, relevant elements for the present case as circumstances were different.

The Complainant is required to show evidence of the registration and use of the domain name in bad faith.

Concerning the registration of the domain name, Complainant blames Respondent for the fact that, at the time of the registration, he was certainly aware of the Complainant’s prior rights and registered that domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name. Nevertheless, the Panel finds that evidence of Respondent’s bad faith does not result from the sole reputation of the Complainant’s trademarks. As far as “camper” could satisfy the requirement of distinctiveness in connection with shoes and similar items, the word “camper” appears to be necessary to refer to “campers” or camping activity and it is not proved that the Respondent has registered that name for another purpose.

In addition, passive holding of a domain name does not, by itself, even on a long range, constitute evidence of use in bad faith. There must be additional circumstances as, for instance, the efforts made by the Respondent to conceal his true identity to the Complainant (see Telstra Corporation limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, February 18, 2000) or the fact that the domain name comprises a name which can only sensibly refer to the Complainant (see Sony Kabushiki Kaisha v. Sony.net mentioned above ).

Finally, it can be noted that Respondent’s behaviour in the course of the negotiations could be seen to confirm the absence of bad faith as it reveals his intent to find an amicable settlement allowing both parties to use their respective names without interfering with each other. It is not demonstrated that Respondent wanted to make money to the detriment of Complainant by selling the domain name at issue or to disrupt the business of a competitor.

More generally, it will be pointed out that the Policy does not really deal with trademark infringement on the Internet but rather with bad faith cybersquatting, see Edward Van Halen v. Deborah Morgan, WIPO Case No. D2000-1313, December 20, 2000.

In conclusion, the Panel does not find that the <camper.net> domain name has been registered and used in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Christian-André Le Stanc
Sole Panelist

Dated: May 25, 2004