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Bilfinger Berger AG v. Bilfinguer, S.A. [2005] GENDND 176 (10 February 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bilfinger Berger AG v. Bilfinguer, S.A.

Case No. D2004-1002

1. The Parties

Complainant is Bilfinger Berger AG, Mannheim, of Germany, represented by Ullrich & Naumann, Germany.

Respondent is Bilfinguer, S.A, San Sebastian de los Reyes, Madrid of Spain, represented by Lerroux & Fernández-Pacheco, Spain.

2. The Domain Name and Registrar

The disputed domain name <bilfinguer.com> is registered with eNom on December 18, 2002.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2004. On November 29, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On November 29, 2004, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. Complainant filed an amendment to the Complaint on November 30, 2004. 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 Respondent of the Complaint, and the proceedings commenced on December 3, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2004. The Response was filed with the Center on December 22, 2004.

The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on January 7, 2005. 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.

By fax of January 7, 2005, the Center forwarded to the Panelist the supplemental filing by Complainant. The Panel issued Interim Administrative Panel Order to accept this supplemental filing, allowing for a Supplemental Response by Respondent. The Supplemental Response was filed with the Center on the due date of February 1, 2005.

4. Factual Background

The following facts are established, based on the evidence provided or on uncontested submissions of one of the parties.

The company of Complainant is an internationally active construction company with an average turnover of €5,586,000,000 in 2003.

Complainant is the proprietor of the following trademark rights:

- German trademark BILFINGER (word mark), registration number 3010734.3, dated February 5, 2001;

- German trademark BILFINGER BERGER (word mark), registration number 30144914, dated July 26, 2001;

- German trademark BILFINGER + BERGER (logo), registration number 99228, dated April 2, 1979;

- Community trademark BILFINGER BERGER (word mark), registration number 2314482, dated July 25, 2001;

- International trademark BILFINGER + BERGER (logo), registration number 540127, dated July 8, 1989, for the countries Austria, Benelux, Spain, France, Italy, Liechtenstein, Portugal and Germany;

- German trademark B (logo), registration number 943666, dated November 28, 1975;

- Community trademark B (logo), registration number 666933, dated October 30, 1997.

Respondent was established in January 1999, and registered the domain name <bilfinguer.com> on December 18, 2002.

5. Parties’ Contentions

A. Complainant

Complainant states that the domain name <bilfinguer.com> is identical or confusingly similar to its trademarks. The distinctive part of the domain name of Respondent is “bilfinguer”, which is visually nearly identical to the German trademark registration BILFINGER (registration number 3010734), dated February 5, 2001. The word Bilfinguer is further confusingly similar to Community trademark 2314482 (word mark BILFINGER BERGER), dated July 25, 2001. Complainant further states that all its other trademarks, which contain a figurative element, are pronounced as Bilfinger Berger. According to Complainant, only these words and not the graphical elements are remembered by the consumer. The conclusion of Complainant is therefore that “bilfinguer” is nearly identical to the German word mark and confusingly similar to all other trademarks.

Complainant points out that the average consumer usually abbreviates trademarks consisting of more than one word to the first word. Moreover, Complainant states, the first word of a combined trademark will be remembered more easily and intensely than the second part of such trademarks. Complainant is therefore of the opinion that a high risk of confusion between the domain name and trademarks of Complainant exists.

Complainant states that Respondent has no rights or legitimate interests in respect of the domain name <bilfinguer.com>. Respondent did not acquire trademark or service mark rights to the word Bilfinguer. Under the disputed domain name, Respondent offers building and construction services and services related to various construction projects. These services are identical to the services that are covered by the trademarks of Complainant. According to Complainant, as a consequence its trademarks are tarnished and the consumer is misled and diverted to Respondent’s website.

Complainant further points out that Respondent not only uses the domain name <bilfinguer.com> but also uses on its website a sign that is identical to the trademark B (logo) of Complainant (German reg. mo. 943666 of November 28, 1975, and international registration 540127, dated July 8, 1989). According to Complainant it is therefore obvious that Respondent tries to mislead the consumers by creating a similarity between Respondent and Complainant.

B. Respondent

According to Respondent none of the three conditions under the Policy (Paragraphs 4 (a) (i), (ii), (iii)) are fulfilled.

The only trademark registration of Complainant that shows similarity with the domain name under dispute is the German trademark BILFINGER (word mark), which was filed on February 5, 2001, two years after the establishment and registration in the Madrid Trade Registry of Respondent’s company Bilfinguer S.A. in Spain (February 17, 1999).

The distinctive part of the domain name <bilfinguer.com> is Bilfinguer, whereas the distinctive part of the other trademarks of Complainant is “Bilfinger Berger”. According to Respondent this means that the domain name and trademarks are not confusingly similar. In relation to these other trademarks on which Complainant relies, Respondent points out that several were filed more than two years after the establishment of its company.

Respondent states that Complainant did not provide evidence of its use of any of these trademarks. Respondent also points out that the supporting documents have been filed in the German language whereas the language of the proceedings is English.

According to Respondent, the statement of Complainant that the average consumer usually abbreviates trademarks consisting of more than one word should not be taken into consideration. Respondent supports this statement by pointing at a decision of the Community Trademark Office in the matter Tibby Wegner/Tibi. In that case, the Community Trademark Office decided that due to the different lengths of the marks, they have a different rhythm. Therefore, the marks are phonetically dissimilar.

Respondent states that Complainant did not prove that it is a world-wide known construction company with 50.000 employees that is commonly known as Bilfinger.

Respondent further states that it has rights or legitimate interests in respect of the domain name.

Respondent uses a domain name which matches the company name Bilfinguer S.A. This company was registered in the Madrid Trade Registry on February 17, 1999, and is commonly known by this company name. Respondent submitted pages of its website which provide details of its company and which include reference to the works developed by the Company. According to Respondent, this means that Respondent has a genuine interest in the domain name. Respondent also makes a legitimate use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, as Complainant does not act in Spain, its marks are not in use in Spain, Complainant has not built any building in Spain whereas all works shown by Respondent on the website are built in Spain.

Respondent is further of the opinion that its domain name is not registered and used in bad faith.

Respondent states that first of all Complainant did not submit proof regarding the fact that it is a well-known mark and company in Europe. Secondly, Respondent was not -as suggested by Complainant- contacted by Complainant before registering the domain name. Therefore, it was not warned before registering the domain name. Furthermore, Respondent is of the opinion that it did not register or use the domain name in an attempt to attract for commercial gain internet users to its website by creating a likelihood of confusion with Complainant’s mark because the only mark named BILFINGER was filed two years after the establishment and registration of Respondent’s company. Also, according to Respondent, it took positive action to provide in its webpage sufficient information to exclude any kind of sponsorship by or affiliation with Complainant (i.e. the name of the corporation and of the owner, the location, et cetera). Moreover, Complainant does not develop any construction activity in Spain and Respondent does not have any activities outside Spain. No evidence exists that Respondent seeks to divert for commercial gain customers from Complainant to its webpage. Furthermore, Complainant did not support its assertion that Respondent’s intention was to trade off Complainant’s reputation to attract Internet users to its website.

Respondent is further of the opinion that the mere choice of the letter B cannot be deemed enough to prove bad faith. Respondent’s web page has no advertisements, banners or links to other websites which could confirm Respondent’s intent to profit from BILFINGER BERGER. The domain name was not registered in order to prevent Complainant from reflecting the mark in a corresponding domain name as Complainant’s trademark rights do not protect the domain name BILFINGUER, but a two word mark BILFINGER BERGER. Although both companies provide services in the field of construction, they are not competitors, as they act in different countries and in different constructions areas.

Respondent is further of the opinion that the Complaint was filed in bad faith. Therefore, the Panel is requested to give its opinion about reverse domain name hijacking. The reason for this request is that Complainant filed the complaints regarding the domain name <bilfinguer.com> despite the fact that Respondent duly informed Complainant that both signs, Bilfinguer and Bilfinger Berger, are different, that the domain name is the same as Respondent’s company name, that the trademark BILFINGER BERGER is not used in Spain and that Respondent’s field of activities does not create a likelihood of confusion.

C. Supplemental filing of Complainant

Complainant states that it made a supplemental filing because it did not expect that Respondent would argue against facts which are well-known in the market and, therefore, to Respondent.

In response to Respondent’s statement that the trademarks of Complainant are not used in Spain, Complainant submitted a contract dated October 2, 2004, concerning a project in Torre del Mar, Spain.

Complainant states that the German trademark 30107347 and the Community trademark 2314482 have been registered for less than five years. Therefore, they are valid, even if they have not been used. This means that it is irrelevant whether or not the trademarks are correctly used.

According to Complainant, Respondent has no legitimate interests or rights in respect of the domain name <bilfinguer.com> or the company name Bilfinguer. The intention of Respondent is, according to Complainant, clearly shown in its own Internet page <bilfinguer.com> where not only the name is confusingly similar, but also the figurative element B.

In order to show that Complainant is known as “Bilfinger” all over the world, Complainant submitted several press articles, newspaper stories and other material.

Complainant further submitted a past UDRP decision (Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827) regarding the domain name <bilfinger.com>, where the Panel decided that the domain name was confusingly similar to the trademark (logo) BILFINGER + BERGER.

D. Supplemental Response

Respondent objects to Complainant’s Supplemental Response and is of the opinion that the Panel should have stated the reasons for accepting it.

Respondent states that because a mark is subject to cancellation if it is not genuinely used in the market, it is relevant to discuss this issue. It is important to establish, according to Respondent, that international trademark no. 540127  which was filed on July 8, 1989, designating Spain  is not used in Spain.

Respondent notes that Complainant has a company in Spain named Bilfinger y Berger Espana S.A. In the last annual declaration dated April 30, 2004, of this company, according to Respondent the following is mentioned: “In May 1995, the administrators decided to temporarily interrupt the company activities, attending the management of the execution of the legal assets enclosed within the present annual accounts”.

Respondent points out that Bilfinger Berger AG and Bilfinger y Berger Espana S.A. are not included within the Spanish registry for the classification of companies whereas any company that wishes to obtain a public contract must be included in that registry. Bilfinger Berger is not included in the registry regarding civil works, highways, bridges, railworks and building works. This leads Respondent to the conclusion that the mark has not been used in Spain. The submittance of a building contract for Spain by Complainant does not alter this conclusion. First of all, the contract is not translated in English. Furthermore, no proof of the procedure to obtain the contract is submitted, no proof of use of the mark (but merely of the company name) is submitted and no proof is submitted which shows how the company has been contracted.

Respondent further points out that its company name was registered within the Madrid Trade Registry on February 17, 1999, and was admitted by the Madrid trade registry despite the fact that a registered company named Bilfinger y Berger Espana S.A. existed at that time.

Also, the copies of publications that are submitted by Complainant, which show that the company is known as Bilfinger, do not refer to Spain, nor are there any Spanish publications included.

6. Discussion and Findings

A. Procedural Matters

Complainant has made a supplemental filing on January 5, 2005, in reply to the Response. The Panel has issued on January 18, 2005, an Interim Administrative Panel Order, allowing the Reply and inviting Respondent to submit a Supplemental Response. Respondent has submitted a Supplemental Response on February 1, 2005, but has argued that the Panel in its Order should have stated the reasons for allowing the Reply.

It should be pointed out that the Rules do not provide for the unsolicited submission of supplemental filings by either party. However, neither do the Rules forbid such supplemental filings. It is up to the Panel to decide whether or not to accept such filings, in accordance with its task, set out in paragraph 10(a) of the Rules, to conduct the administrative proceeding in such a manner as it considers appropriate.

In issuing the Interim Administrative Panel Order, the Panel has considered that the Reply submitted by Complainant may help to clarify factual issues which are relevant to the decision. In order to maintain the balance between both parties, Respondent was allowed to (and did in fact) submit the Supplemental Response. In doing so, the Panel has considered that the UDRP serves to solve conflicts over domain names, not to refer cases to other fora. For these reasons, the Panel has allowed Complainant’s supplemental filing, in line with decisions by other Panelists. (See e.g Al Ghurair Group LLC v. Ghurair Group, WIPO Case No. D2004-0532; Victor Chandler Limited and International Sports Marketing Limited v. Thierry Leray, WIPO Case No. D2002-0624; Voigtländer GmbH v. John Voigtlander, WIPO Case No. D2003-0095).

B. Language

As Respondent rightly points out, the language of the proceedings is English. Therefore, the Panel will disregard all documents submitted in any other language which are not accompanied by an English translation.

C. Identical or Confusingly Similar

The disputed domain name is <bilfinguer.com>. Complainant has a trademark registration to the word mark “BILFINGER”. The Panel is of the opinion that the domain name <bilfinguer.com> is confusingly similar to the word mark BILFINGER.

D. Rights or Legitimate Interests

In these proceedings, Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the UDRP provides that Respondent may provide evidence of circumstances that demonstrate his rights or legitimate interests to the domain name which may include (but are not limited to):

(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 or services; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if he has not acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial 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.

Panelists have recognized that it is difficult to provide evidence of negativa, such as the absence of a right or legitimate interest. For that reason, it has been considered sufficient for Complainant to provide such evidence by, inter alia, stating that Respondent has not received a license or consent to register the domain name, and showing that Respondent has not or only very recently used the domain name (in relation to (i) above), that no information is available on Respondent’s business (in relation to (ii) above) or that Respondent has used the domain name for other than non-commercial purposes (in relation to (iii) above).

(i) Use in connection with bona fide offering of goods or services

The Panel derives from the documentation submitted that Complainant has not given Respondent consent for the registration of the domain name. Furthermore, Respondent does not have a trademark right to the mark BILFINGUER.

In this respect, Respondent states that its company name was registered with the Madrid Trade Registry on February 17, 1999, and that it has been doing business under that name since January 25, 1999. These facts have not been contested by Complainant in its Supplemental Response. The Panel derives from this that Respondent relies on Paragraph 4(c)(i) of the Policy, i.e. that he has used, prior to the notice of the dispute, a name corresponding to the domain name in connection with a bona fide offering of services.

Complainant, however, states that Respondent has tarnished its trademarks and misled consumers by using a logo on its website which is similar to several of Complainant’s trademarks, while operating that website for the same services as those of Complainant, under a domain name which is confusingly similar to its BILFINGER trademark. Apparently Complainant therefore argues that Respondent’s offering of services is not bona fide.

It is indeed striking that Respondent uses Complainant’s logo (a stylized B in an uncommon typeface) as background on its website. Complainant has trademark rights to this logo, which has been registered in Germany since November 28, 1975 (reg. no. DE 943666) and as a CTM since October 30, 1997 (reg. no. 666933). Furthermore, the stylized B forms a distinctive part of Complainant’s international combined word mark/logo registration no. 540127, dated July 8, 1989, and Germany no. 992281, dated April 2, 1979. Respondent has not given an explanation for its use of (the distinctive part of) Complainant’s trademarks on its website (and therefore for its services), and has not contested Complainant's trademark rights, other than stating that Complainant has not used these trademarks in Spain for more than five years, arguing that the trademarks may for that reason be cancelled. If Respondent thereby seeks to argue that it would be free to use the stylized B logo, since the trademark rights in Spain would have lapsed, the Panel points out that such rights apparently have not been cancelled and that - even if such rights were cancelled - Respondent's use of that trademark in its website under “www.bilfinguer.com” may infringe Complainant’s trademark rights in other countries. As Respondent uses the stylized B logo in a website which is accessible from anywhere in the world, using a domain name which is almost identical to Complainant’s trademark, it is likely that customers are led to believe that Respondent forms part of the group of Complainant.

In view of the above facts, taken together, the Panel concludes that the use of the name Bilfinguer in relation to the website cannot be considered to constitute use in connection with a bona fide offering of services.

(ii) Commonly known by the domain name

Respondent states that it is commonly known by its company name, apparently in reliance on Paragraph 4(c)(ii) of the UDRP. According to Respondent, its company name Bilfinguer S.A. was registered in the Madrid Trade Registry on February 17, 1999, prior to Complainant’s registration of the BILFINGER trademark. However, Respondent has not provided any evidence thereof in the English language.

Even if one assumes that the company name Bilfinguer S.A. was registered at a trade registry in Spain in 1999, as stated by Respondent, this in itself does not provide a right or legitimate interest to register and use a corresponding .com domain name. As has been set out in other decisions under the UDRP, evidence of the registration of a company is in itself not enough to demonstrate that the Respondent has been commonly known by that name, let alone by the domain name (Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672).

The pages of its website that Respondent has submitted as evidence are undated and contain information in Spanish on several projects which purportedly have been undertaken by Respondent. Leaving aside the fact that no translation in English has been provided by Respondent, it is unclear to the Panel when these projects have taken place and to what extent these involved use of the domain name. Therefore, these documents do not constitute evidence that Respondent has been commonly known by its domain name.

(iii) Legitimate non-commercial or fair use

Respondent submits that it is making a legitimate non-commercial or fair use of the domain name without intent to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (See Paragraph 4 sub c(iii) UDRP).

The Panel notes that in its Response, Respondent states that its website “clearly states the company’s details (full name, location and business activity)” as well as “reference to the works developed by the company”. Therefore, the website apparently advertises the company’s activities and achievements, inviting interested visitors to contact the company for further information. This certainly does not constitute non-commercial use of the domain name. In addition, in view of the use on Respondent’s website of Complainant’s stylized B trademark, apparently without consent, the use of the domain name for this website cannot be considered fair.

The Panel concludes that Respondent has not succeeded in rebutting Complainant’s allegations and evidence and that, therefore, Complainant has proven that Respondent does not have an own right or legitimate interest in the domain name.

E. Registered and Used in Bad Faith

Respondent has not contested that it was aware of (i) the existence and reputation of both the company name and trade marks of Complainant and (ii) the fact that the public usually abbreviates Complainant’s name to BILFINGER, when it registered the domain name <bilfinguer.com>.

This in itself is not sufficient for bad faith. However, taken together with the fact, set out above, that Respondent uses Complainant’s trademark logo “B” on its website without consent leads the Panel to conclude that Respondent has registered and is using the domain name <bilfinguer.com> to create confusion with Complainant’s trade mark(s) and to intentionally attempt to attract for commercial gain internet users to its website where the impression is created that Bilfinguer S.A is affiliated to Complainant (Paragraph 4(b)(iv) UDRP).

Therefore, the Panel concludes that Respondent has registered and uses the domain name <bilfinguer.com> in bad faith.

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 name, <bilfinguer.com> be cancelled.

Wolter Wefers Bettink
Sole Panelist

Dated: February 10, 2005