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Ahead Software AG. v. Leduc Jean [2004] GENDND 674 (29 June 2004)

1. The Parties

The Complainant is Ahead Software AG., Karlsbad, Germany, represented by Christian Melloh, Germany.

The Respondent is Leduc Jean, Beirut, Lebanon.

2. The Domain Names and Registrar

The disputed domain names <nero-neu.com> and <nero-software.com> are registered with NameScout Corp., Bridgetown, Barbados.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2004. On May 3, 2004, the Center transmitted by email to NameScout Corp. a request for registrar verification in connection with the domain names at issue. On May 3, 2004, NameScout Corp. 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.

NameScout Corp. also informed that the Respondent had submitted to the jurisdiction of the courts of his domicile and the Province of Ontario, Canada. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 6, 2004, confirming that the Complainant consents to the jurisdiction of the courts at the location of the domain name holder’s address. 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 May 12, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2004.

The Center appointed P-E Petter Rindforth as the Sole Panelist in this matter on June 15, 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.

The Projected Decision Date was June 29, 2004. The Administrative Panel shall issue its Decision based on the Complaint, the Amendment, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.

4. Factual Background

The Complainant is a company organized and existing under the laws of Germany and its business is to develop and sell compact disc (CD) recording software.

The Complainant’s premier mark is NERO, which is registered as a Community Trademark, as well as in the USA and Japan (copies of Certificates of Registration attached as Annex C of the Complaint). The date of registration for Community Trademark No 001388560 NERO is January 22, 2001.

In July 2003, the Complainant released the new CD + DVD creation software version NERO 6, which was introduced at the Computex conference in Taiwan in 2003 and at the CeBIT conference in Germany in March 2004.

Since the introduction of NERO 6, the Complainant has produced and distributed over sixty thousand (60,000) brochures and press releases displaying the NERO mark. The NERO software is also promoted at the Complainant’s website, located at “www.nero.com” (samples of product sheets and printouts from the website are provided as Annex D – E of the Complaint).

The Respondent registered <nero-neu.com> on March 17, 2004, and <nero-software.com> on March 22, 2004, (Annex A of the Complaint). No specific information is provided about the Respondent’s business activities (apart from what is mentioned below under 5A).

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed Domain Names are identical and confusingly similar to the Complainant’s registered trademark NERO and that the Respondent is using the Domain Names to sell unlicensed copies of NERO 6, resulting in the likelihood of confusion between the Respondent’s Domain Names and the Complainant’s domain name.

The Complainant further states that the Respondent’s website is constructed in a similar design and layout as the Complainant’s website at “www.nero.com.” According to the Complainant, the deceptive Domain Names and deceptive website design have created actual customer confusion. Complainant has received complaints about Respondent’s unauthorized, unsolicited bulk emails advertising the disputed Domain Names and Respondent’s counterfeit website. The Complainant has even been threatened with legal proceedings related to Respondent’s unsolicited bulk email advertising of his website.

The Respondent has no rights or legitimate interests in the Domain Names, as he has no priority rights in the name, nor is he affiliated with Complainant or otherwise authorized to use the Complainant’s trademark.

The Complainant argues that it is obvious from the Respondent’s sales activities on and through the disputed Domain Names that he knew of the Complainant’s use of the registered trademark NERO prior to the registration of the Domain Names. By using the Domain Names and sending unauthorized, unsolicited bulk email (SPAM) to Internet users (samples of such email attached as Annex F of the Complaint), the Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent’s website or other on-line location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Complainant requests, in accordance with Paragraph 4(i) of the Policy, that the Administrative Panel issue a decision that the Domain Names be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant claims to have registered trademark rights for the word NERO in the European Union (Community Trademark), USA and Japan. Copies of three Certificates of Registrations are provided, however the Japanese document is not translated into English, the language of this proceeding, and the certificate from the United States Patent and Trademark Office indicates a company called Disc Direct Computer Handelsgesellschaft M.B.H. as the proprietor. As at least the Community Trademark registration is in the name of the Complainant, this Panel concludes that the Complainant holds registered trademark rights in NERO and at least from January 22, 2001, the date of registration for the said Community Trademark.

The relevant parts of the disputed Domain Names are “nero-neu” and “nero-software.” The parts “neu” (“new” in German) and “software” are purely generic words with no distinctiveness (see Nokia Corporation v. Nokiagirls.com, WIPO Case No. D2000-0102). “New” refers to the trademark NERO indicating that this is a new product under the said mark, and “software” describes the kind of products sold under the trademark NERO.

Accordingly, the Panel finds that both Domain Names are confusingly similar to Complainant’s trademark NERO.

B. Rights or Legitimate Interests

The Respondent is not an authorized agent or licensee of the Complainant’s products or services and has no other permission to apply for any domain name incorporating the trademark NERO.

By not submitting a response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Names.

The Panel therefore concludes that the Respondent has no rights or legitimate interests in the Domain Names.

C. Registered and Used in Bad Faith

The Complainant is a company organized and existing under the laws of Germany, whereas the Respondent is domiciled in Lebanon.

The Complainant has not claimed to have any trademark rights for NERO in Lebanon. The sales and promotion activities (60,000 brochures, participation at Computex in Taiwan and CeBIT in Germany, information at Complainant’s website) are not enough to prove that NERO is a well known trademark also in Lebanon.

There are, however, a number of circumstances strongly indicating that the Respondent was aware of the existence of the Complainant’s trademark at the time of registration of the Domain Names:

(i) the addition of the generic German word “neu” in <nero-neu.com> indicates that this Domain Name was created especially with the German market in mind;

(ii) the addition of the generic term “software” in <nero-software.com> indicates that this Domain Name was created with the software products under the Complainant’s trademark NERO in mind;

(iii) both Domain Names were registered in March 2004, the same month as the Respondent introduced the “new” NERO 6 at the international CeBIT conference in Germany.

As mentioned above, the Complainant states that the Respondent’s website is constructed in a similar design and layout as the Complainant’s website at “www.nero.com,” thus creating actual customer confusion. Complainant has however not provided any printouts from the websites and the Panel can therefore not make a decision on this particular matter.

The Complainant further states that it has been threatened with legal proceedings related to Respondent’s unsolicited bulk email advertising of his website, but provided no evidence to prove this statement.

It is, however, obvious from the unsolicited bulk email samples (Annex F of the Complaint), that the disputed Domain Names have been connected to marketing activities for NERO 6, directed to the German market. The Respondent’s name is not mentioned in these emails, instead the senders addresses are constructed in a way that is particular for so-called SPAM, with different names and with the use of different free email services. All samples of emails provided refer to the disputed Domain Names and the connected websites as the right place to order the software of NERO 6 for a discount of 70%.

In the absence of any other explanations from the Respondent, it is likely that the Respondent is behind these marketing activities, either directly or indirectly – by endorsing or sponsoring the recommendations to order products under the Complainant’s trademark directly from the websites related to the Domain Names.

Such activities indicate that the Domain Names are registered primarily for the purpose of disrupting the business of the Complainant, and also indicates that the Respondent has intentionally attempted to attract – for commercial gain – Internet users to the websites connected to the Domain Names.

Given the above circumstances, the Panel concludes that the Respondent registered and used the Domain Names in bad faith.

The Panel finds that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.

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 <nero-neu.com> and <nero-software.com>, be transferred to the Complainant Ahead Software AG.

P-E Petter Rindforth
Sole Panelist

Dated: June 29, 2004