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Dorotheum GmbH & Co KG v. Norbert Gartner [2005] GENDND 1312 (12 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dorotheum GmbH & Co KG v. Norbert Gartner

Case No. D2005-0408

1. The Parties

Complainant is Dorotheum GmbH & Co KG (the “Complainant”), Vienna, Austria, represented by Meinhard Ciresa, Vienna, Austria.

Respondent is Norbert Gartner (the “Respondent”), Greinach, Germany.

2. The Domain Name and Registrar

The disputed domain name <dorotheum.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”) by e-mail on April 18, 2005, and the hard copy file was received on May 9, 2005. On April 18, 2005, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On April 19, 2005, the Registrar transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, technical, and zone contact. Consequently, 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 Respondent of the Complaint, and the proceedings commenced on May 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for a Response was set to May 31, 2005.

As Respondent did not submit a Response, the Center notified the Respondent’s default on June 26, 2005, and appointed Bernhard F. Meyer-Hauser as the Sole Panelist in this matter on June 28, 2005. The Panel 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 June 27, 2005, and found that it was properly constituted. The Parties were notified accordingly on June 28, 2005.

4. Factual Background

The following facts appear from the Complaint and its annexes:

Complainant, founded in 1707, is a company established under the laws of Austria with its principal place of business in Vienna, Austria. As the oldest of the major auction houses and the largest in German-speaking Europe, it hosts approximately 600 auctions a year.

Complainant, moreover, is the holder of the Austrian trademark DOROTHEUM (AT 100.454 / AM 1521/82), registered in Austria on August 27, 1982, and the International trademark DOROTHEUM (IR 554533), registered on February 7, 1990. To market its services on the World Wide Web, Complainant also operates, inter alia, websites under the domain names <dorotheum.at>, >dorotheum.de>, and <dorotheum.com>.

Respondent does business in a field similar to that of Complainant. He operates websites under the domain names <antikfuehrer.de> and <antik-2000.com>, selling ancient and classic goods under – it appears from the said websites – a wholesale-concept.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Name is identical to its aforementioned trademarks, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name was registered and is being used in bad faith. Hence, Complainant requests the Domain Name be transferred to Complainant.

Additional contentions, if relevant to the dispute’s decision, are included in the following discussions and findings.

B. Respondent

Respondent was duly notified of the administrative proceedings as stipulated under paragraph 2(a) of the Rules, but failed to submit a response of any kind. Complainant’s contentions are thus deemed unchallenged (See, e.g., Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

6. Discussions and Findings

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

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

(ii) That 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

Complainant contends that the Domain Name registered by Respondent is identical to its Austrian and international trademark DOROTHEUM. As the Domain Name is <dorotheum.net>, the only distinguishing element remains the generic top-level domain “.net”.

UDRP case law has established in a long series of precedents that, in determining identity or confusing similarity under the Policy, any generic top-level domain is excluded from consideration (See, e.g., Ruby’s Diner, Inc. v. Joseph W. Popow, WIPO Case No. D2001-0868). The Domain Name is therefore identical to Complainant’s trademark DOROTHEUM.

Thus, Complainant has met the burden of proof as established by paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, inter alia, by showing any of the following elements:

(i) Before any notice of the dispute, Respondent’s 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 and services; or

(ii) Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant asserts that Respondent is not a licensee nor has he otherwise received permission to use Complainant’s trademarks.

Respondent, furthermore, has not provided the Panel with information that would suggest his use, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services, nor has Respondent shown that he was commonly known under the Domain Name. In fact, with regard to a possible legitimate non-commercial or fair use of the Domain Name, there are strong indications quite to the contrary - as shall be shown in detail under “C” - that Respondent has indeed intended to use the Domain Name to take advantage of the Complainant’s trademark recognition and well-known business name to increase visits by potential buyers of his products to his own websites.

As Respondent has no rights or legitimate interests in the Domain Name and has not been able to exculpate himself in accordance with paragraph 4(c) of the Policy, the requirements of paragraph 4(a)(ii) of the Policy are established.

C. Registered and Used in Bad Faith

Paragraph 4(b) states the following four non-exclusive circumstances which, if found present by the Panel, are deemed to provide evidence of bad faith on the part of the Respondent in registering and using the Domain Name:

(i) Circumstances indicating that Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark, or to a competitor of Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or its location.

It appears that the website operated under the Domain Name never had any content of its own but led, via a link, to Respondent’s online shop for antique and classic furniture at <antikfuehrer.de>. Respondent, through his activities as a seller of classic and antique furniture, must have been aware of Complainant’s trademark DOROTHEUM – which is well known in the relevant trade – when registering the Domain Name. Therefore, it can be concluded beyond a reasonable doubt, as set forth under Paragraph 4(b)(iv) of the Policy, that by registering and operating a website under the Domain Name, Respondent attempted to attract Internet users to his own website, in particular “www.antikfuehrer.de”, by creating a likelihood of confusion with Complainant’s trademarks as the source of his own website and goods offered.

Furthermore, the Panel, during a visit to the website operated under the Domain Name on June 30, 2005, discovered that there was but a blank, inactive website to be found at present. An inactive holding of a domain name with a blank webpage also demonstrates bad faith use of a domain name under the Policy, as established over the years by UDRP case law (See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

As an operator of websites offering classic and antique furniture, Respondent is a competitor of Complainant, an auction house for classic and antique goods, inter alia. Therefore, Respondent’s registration and use, or inactive holding for that matter, also amounts to an act of disrupting the business of a competitor and thus to bad faith registration and use of the Domain Name as set forth under Paragraph 4(b)(iii) of the Policy.

In light of the above considerations, it is established that the Domain Name was registered and is used in bad faith. Consequently, the requirements of paragraph 4(a)(iii) of the Policy have been met as well.

7. Decision

In consideration of the foregoing, the Panel holds that the Domain Name is identical to two registered trademarks of Complainant, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name has been registered and is used in bad faith.

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders the domain name <dorotheum.net> be transferred to Complainant.

Bernhard F. Meyer-Hauser
Sole Panelist

Dated: July 12, 2005