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Preisvergleich Internet Service AG v. Ralf Muckenhirn [2005] GENDND 1099 (9 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Preisvergleich Internet Service AG v. Ralf Muckenhirn

Case No. D2005-0121

1. The Parties

The Complainant is Preisvergleich Internet Service AG, Vienna, Austria, represented by Hahn & Wilmer Rechtsanwälte, Germany.

The Respondent is Ralf Muckenhirn, Freiburg, Germany.

2. The Domain Name and Registrar

The disputed domain name <geizhals.com> (the “Domain Name”) is registered with PSI-USA, Inc..

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2005. On February 3, 2005, the Center transmitted by email to PSI-USA, Inc. a request for registrar verification in connection with the domain name at issue. On February 7, 2005, 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. In response to two notifications by the Center that the Complaint was administratively deficient, the Complainant filed a first amendment to the Complaint on February 18, 2005 and a second one on March 9, 2005. The Center verified that the Complaint together with its amendments 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 March 24, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 13, 2005. The Response was filed with the Center on April 11, 2005.

The Center appointed Thomas Legler, Christian Gassauer-Fleissner and Gerd F. Kunze as panelists in this matter on May 12, 2005. The Panel finds that it was properly constituted. Each member of 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 April 27, 2005, the Center received a Supplemental Filing from Complainant and on May 12, 2005 from Respondent. In its Procedural Order dated May 24, 2005, the Panel decided to accept these two Supplemental Filings in accordance with paragraph 10(d) of the Rules. In addition and within the same Order, the Panel requested the Parties to address a short submission together with the relevant proof to the Center and the Panel, since it was of the opinion that certain evidence was still lacking notwithstanding the two Supplemental Filings. The decision due date was postponed to June 9, 2005.

The Respondent submitted its supplemental evidence as ordered by the Panel on May 31, 2005, and the Complainant on June 1^st, 2005.

4. Factual Background

The Complainant is a company domiciled in Vienna, Austria, who is providing price comparisons on a specific Internet website under the name “Geizhals”. Its website has been accessible via the domain names <geizhals.at> since June 9, 1999 and via <geizhals.net> since 2002.

The Complainant has filed the Austrian trademark No. 197 485 “GEIZHALS” on January 19, 2001. Pursuant to the copy from the Austrian Trademark Office, the registration period began on November 7, 2001. The trademark refers to classes 9, 35, 38, 41 and 42.

Moreover, the Complainant has obtained a CTM registration for the figurative mark “GEIZHALS – PREISVERGLEICH” on January 31, 2003, and has filed on January 12, 2005, an application for the wordmark “Geizhals”, both referring to classes 9, 35, 38, 41 and 42.

The domain name <geizhals.at> was originally registered by Mr. Marinos Yannikos. It constituted a contribution in kind into the Complainant’s company as of July 27, 2000. The transfer from Mr. Yannikos to Complainant was however registered only on November 12, 2004.

Registrant of record is Ralf Muckenhirn. It appears from the file that Mr. Ralf Muckenhirn is the manager of Verlag für Neue Medien Data Communications GmbH. Moreover, pursuant to the evidence produced by the Respondent, Verlag für Neue Medien Data Communications GmbH is an Internet service provider who registered the Domain Name for its client Geizkragen.de Internet-Projektgesellschaft mbH, Hiddenhausen, Germany, whose manager is Mr. Oliver Flaskämper. The Geizkragen.de Internet-Projektgesellschaft mbH has later been transferred into Geizkragen.de AG. The Domain Name was transferred back to Respondent in May 2005. In view of the foregoing, the present decision when referring to “the Respondent” includes the registrant’s client, i.e. Geizkragen.de Internet-Projektgesellschaft mbH and Geizkragen.de AG.

The Respondent runs a similar price comparison website on the Internet like the Complainant. Its website indicates that it is run by Mc Drouwd Ltd., Birmingham, United Kingdom, a wholly-owned subsidiary of Geizkragen.de AG and whose director is also Mr. Oliver Flaskämper.

The Respondent has been holding the domain name <geizkragen.de> since September 22, 1998 and has been using it since September 27, 1998. The Respondent produced evidence according to which it acquired from a third party the domain name <geizhals.de> on August 27, 2002. The disputed domain name <geizhals.com> has been acquired from the same third party.

Respondent’s domain names <geizhals.de> and <geizhals.com> are pointing to the website <geizkragen.de>.

The Respondent has submitted evidence that Geizkragen.de Internet-Projektgesellschaft mbH filed on April 22, 1999, a trademark application for “GEIZKRAGEN” which has been registered as No. 399 23 176 by the German Trademark Office on September 27, 1999.

Furthermore, Geizkragen.de Internet-Projektgesellschaft mbH filed on November 3, 2000, the trademark GEIZHALS with the German Trademark Office. The application has been validated as No. 300 81 219 on January 16, 2001, and refers to classes 9, 16, 35, 38 and 42.

According to the “Duden” which is the leading encyclopedia for the German language, the terms “Geizhals” and “Geizkragen” are synonyms meaning a stingy or mean person.

5. Parties’ Contentions

A. Complainant

The Complainant bases its Complaint on its Austrian trademark “GEIZHALS” which was filed on January 19, 2001. It asserts that the Domain Name is identical with that trademark.

In support of paragraph 4(a)(ii) of the Policy, the Complainant submits that the Respondent has neither a trademark or service mark rights concerning the name “Geizhals” nor has he acquired any rights due to the use of the name “Geizhals” for business purposes.

The Complainant sustains that the Domain Name should be considered as having been registered and being used in bad faith because there is no evidence that the Respondent ever wanted to use this Domain Name for a private or business purpose and since there is no content provided.

Furthermore, the Complainant indicates that it is a well-known company in the German-speaking area and the number one provider for price comparisons in the German speaking-Internet.

When the Complainant first contacted the Respondent, the latter announced that he would like to sell the Domain Name to a competitor of the Complainant. The Complainant argues that this would constitute a violation of paragraph 4(b) of the Policy.

The Complainant also sees a typical case of violation of paragraph 3 of the German UWG (Unfair Competition Act) undermining the fact that this would be a case of acting in bad faith. The Complainant sustaint that the Internet user expects to find the Complainant’s content under the domain <geizhals.com>. If the Respondent attempts to draw the attention of the user to its own page by using Complainant’s well-known name “Geizhals”, this would constitute a clear case of misuse under the UWG.

Furthermore, the Respondent aims to lead to a confusion since it would use the term “Geizhals” as domain name and as part of its metatags.

The Complainant further contends that it is well-known in Germany under the trademark GEIZHALS and is always referred to under this name, whereas the Respondent is always referred to as “Geizkragen”. The Complainant indicates that a search for the word “Geizhals” in <google.de> for the whole web would show the page of the Complainant <geizhals.at> as the number one search result.

The Complainant finally stresses that, whereas the Respondent only holds national German rights for the trademark “GEIZHALS”, the Complainant is also thee owner of a European Union registration (since January 31, 2003). The Complainant started its business under the Domain Name <geizhals.at> in 1999, i.e. before the registration of the trademark “GEIZHALS” by the Respondent in November 2000. The Complainant also shows that before 2002 the Respondent was not the owner of the domain names <geizhals.de> or <geizhals.com>.

Finally, the Complainant notes that during the present administrative proceeding, the Respondent unduly transferred the Domain Name to Geizkragen.de AG.

B. Respondent

As evidenced by a newspaper article dated February 20/21, 1999, Respondent’s Oliver Flaskämper started its Internet price comparison business in September 1998 with its company Internet-Projektgesellschaft mbH. As a customer and partner of Verlag für Neue Medien Data Communications GmbH, he originally registered the Domain Name in the name of the latter acting as an Internet service provider. On March 30, 2005, Verlag für Neue Medien Data Communications GmbH changed the registrant to Geizkragen.de AG. Indeed, Geizkragen.de AG in Hiddenhausen (Germany) is the successor company of Internet-Projektgesellschaft mbH, holder of the trademarks mentioned under paragraph 4, above.

Referring to statistics of <alexa.com>, the Respondent contests that <geizhals.at> was or is the market leader in the German-speaking area.

The Respondent indicates that a search in the phone book for Hiddenhausen (Germany) for “Geizkragen” would lead to “Geizkragen.de AG”, whereas the phone book of Vienna (Austria) does not show any results for “Geizhals” or “Geizkragen”. The Google search for the combination of “Geizhals” and “Geizkragen” would lead to “Preisvergleich <geizkragen.de>” on the first page out of 21,300 pages. Morevoer, whereas there are no results for “Geizhals” in the Austrian company name database, the same search leads in the German company name database to the “Geizkragen.de AG”.

The Respondent further points out that the word “Geizhals” and the word “Geizkragen” have exactly the same meaning in the German language. Accordingly, the company name of “Geizkragen.de AG” would directly be related to the Domain Name, whereas the company name of the Complainant “Preisvergleich Internetservice AG” would not be so related. In this context, the Respondent points out that permanent confusions between <geizkragen.de> and <geizhals.de> were finally the reason for buying the Domain Name <geizhals.de> and the disputed Domain Name from a third party on August 27, 2002, and for registering the German trademark GEIZHALS on November 3, 2000.

In addition, the Respondent indicates that it uses the Domain Name with the internationally used TLD “.com” in order to cover the European and worldwide market. The Complainant would already have the domain name <geizhals.net> for its international use and would not need any other international TLD.

Furthermore, the Respondent has spent money and time for the international development of its services under the Domain Name <geizhals.com>. It would not make sense to take this Domain Name away from a successful company and to prevent it from future success.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following elements to obtain a remedy:

- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no rights or legitimate interests in respect of the domain name and

- that the domain name has been registered and is being used in bad faith.

These three elements are considered below.

However, before addressing these elements, the Panel wishes to comment on who are the parties to the present administrative proceedings.

The Complainant is Preisvergleich Internet Service AG for the account of which the Austrian wordmark “GEIZHALS” and the CTM registration and application have been filed. The domain name <geizhals.at>, however, was originally registered by Mr. Marinos Yannikos. The Complainant has demonstrated that this domain name constituted a contribution in kind into the Complainant’s company as of July 27, 2000. Although the Complainant does not explain why the transfer from Mr. Yannikos to Complainant was only registered on November 12, 2004, there is no doubt for the Panel that the Complainant is now the holder of the domain name <geizhals.at> and may refer to possible rights with respect to this domain name in the present proceedings.

The Respondent is Ralf Muckenhirn, manager of Verlag für Neue Medien Data Communications GmbH. The Panel notes that the Respondent has transferred the Domain Name on March 30, 2005, i.e. during the present administrative proceeding, to Geizkragen.de AG. Such a transfer is in contradiction to paragraph 8(a) of the Policy which provides that the Domain Name may not be transferred to another holder during a pending administrative proceeding brought pursuant to paragraph 4 of the Policy or for a period of fifteen business days after such proceeding is concluded. In case of violation of this rule, paragraph 8 only provides for a cancellation of such transfer.

The Respondent explains this transfer by the fact that he wanted to reflect before this Panel the real situation regarding the actual holder of the rights in the Domain Name. The Panel has little reason to believe that this was not the real motive of that transfer. It coincides with the evidence put forward by the Respondent with regard to the various actors involved in the registration process. It appears that Mr. Ralf Muckenhirn is the manager of Verlag für Neue Medien Data Communications GmbH. Pursuant to the evidence produced by the Respondent, Verlag für Neue Medien Data Communications GmbH was the Internet service provider who registered the Domain Name for its customer Geizkragen.de Internet-Projektgesellschaft mbH, Hiddenhausen, Germany, whose manager is Mr. Oliver Flaskämper. The Geizkragen.de Internet-Projektgesellschaft mbH has later been transferred into Geizkragen.de AG whose manager is still Mr. Flaskämper. Domain name registrations by Internet service providers for the account of their customers happen sometimes. This Panel therefore accepts that the Respondent registered the Domain Name as representative of Geizkragen.de AG, the successor company of Internet-Projektgesellschaft mbH. Moreover, the Panel holds that the transfer of the Domain Name during these proceedings was unnecessary but without adverse consequence as it only reflected the fact that the Respondent held the Domain Name in representation of Geizkragen.de AG in its function of an Internet service provider. This is supported by the recent transfer back to the Respondent.

A. Identical or Confusingly Similar

The Domain Name is identical to the Complainant’s registered Austrian wordmark GEIZHALS. This assessment is independent from the issue whether the Respondent also has trademark rights or may claim prior rights over Complainant’s wordmark. The Panel will address this issue under the second element.

Consequently, the Complainant has proven the first requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The question which arises in front of this Panel is whether the Respondent is using the Domain Name for a bona fide offering of goods or services or whether he has been commonly known by the Domain Name (paragraph 4(c)(i) and (ii) of the Policy).

The Respondent, by using the Domain Name (which points to its Geizkragen website) for a price comparison service – comparable to that of the Complainant – is without doubt making a bona fide offering of services in the sense of the Policy conferring him legitimate rights. The fact that the Respondent is using the Domain Name to direct the user to its website “www.geizkragen.de” is understandable in view of the fact that “Geizhals” and “Geizkragen” are synonyms in the German language.

Since the Complaint is referring to identical and similar domain names and trademarks as those of the Complainant, one could argue that Respondent’s offering is not bona fide. The Panel will therefore also look at the case from the perspective of priority rights.

It follows from the evidence submitted by the Parties that the Complainant has been using the tradename “GEIZHALS” in connection with its domain name <geizhals.at> since June 1999. Its Austrian wordmark GEIZHALS has been filed on January 19, 2001.

The Respondent has been using the tradename “Geizkragen” and the domain name <geizkragen.de> since September 1998. It acquired the domain name <geizhals.de> and the disputed domain name <geizhals.com> in August 2002. Since January 16, 2001, the Respondent has been the holder of the German wordmark GEIZHALS whereas it filed already on April 22, 1999, the German wordmark “GEIZKRAGEN”.

It appears, therefore, that the Respondent holds a German trademark registration for the word “GEIZHALS” which is prior to Complainant’s Austrian registration for the same name. The Respondent is also holder of the domain name <geizhals.de> since 2002.

As pointed out above, the Panel finds it acceptable that the Respondent has shown an interest in securing its rights also on the term “Geizhals”, since “Geizhals” and “Geizkragen” are synonyms in the German language.

This result is also acceptable from the point of view of trademark law. Indeed, at the outset, both Parties had registered trademarks restricted to their country of origin. In 2003, the Complainant filed a CTM application, at a time when the Respondent had already trademark rights based on its German registration. Hence, we are in presence of a coexistence of trademark rights. Under these circumstances, the Panel is of the opinion that it is justified to apply the principle “first come, first served”.

C. Registered and Used in Bad Faith

There is no evidence showing that the Respondent registered the Domain Name in bad faith when acquiring it in 2002 from a third party. As pointed out above, the Respondent had a valuable reason to acquire the Domain Name in view of the synonymous meaning of the two generic terms at stake and the fact that he was at that time already in possession of the German trademark GEIZHALS.

It further follows from the foregoing and the evidence submitted by the Parties that there is no indication for a use of the Domain Name in bad faith by the Respondent in the sense of paragraph 4(b) of the Policy.

The only question which remains unanswered is whether the Respondent registered the German trademark GEIZHALS in the year 2000 in bad faith, i.e. as a starting point of various acts purporting to unfairly block Complainant’s competing business. However, it is out of the scope of the Policy and this Panel’s cognition to rule on unfair competition. Therefore, the Complainant would have to file an ordinary civil lawsuit if it feels that the case should be further investigated in this regard.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Thomas Legler
Presiding Panelist

Christian Gassauer
Panelist

Dated: June 9, 2005