Home | Databases | WorldLII | Search | Feedback Generic Top Level Domain Name (gTLD) Decisions

Wüstenrot Holding AG v. Maximus Holding, Inc. [2005] GENDND 1979 (1 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wüstenrot Holding AG v. Maximus Holding, Inc.

Case No. D2005-0942

1. The Parties

The Complainant is Wüstenrot Holding AG, Ludwigsburg, Germany, represented by Maiwald Patentanwalts GmbH, Germany.

The Respondent is Maximus Holding, Inc., Port Vila, South Pacific, Vanuatu.

2. The Domain Name and Registrar

The disputed domain name <wüstenrot.com>, respectively <xn--wstenrot-65a.com>, is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2005. On September 2, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On September 5, 2005, OnlineNic, Inc. d/b/a China-Channel.com 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 a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 13, 2005. 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 September 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2005.

The Center appointed Theda König Horowicz as the sole panelist in this matter on October 13, 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.

4. Factual Background

The Complainant is the major shareholder of Wüstenrot & Würtembergische AG, Company active in the area of financial services.

The Complainant is the owner of several German and international registrations for the trademark “WÜSTENROT”, for services such as insurance and financial affairs. Through one of its affiliated Companies, the Complainant has also registered domain names containing the name “WÜSTENROT” (for example <wüstenrot.de>), domain names which are linked to websites promoting the services of the WÜSTENROT Group.

The Respondent has registered the domain name <xn--wstenrot-65a.com> which is read by the Internet software navigation system as <wüstenrot.com> in August 2003. The domain name is not linked to an active website.

On May 3, 2005, the Complainant sent a warning letter to the Respondent via email and telefax to request the transfer of the domain name in dispute. No response was given to the said letter.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that :

- The domain name in dispute is identical to the Complainant’s company name and to its trademarks.

- The Respondent has no rights or legitimate interests in respect of the domain name and has never used the domain name in question since its registration in August 2003.

- The domain name in dispute has been registered in bad faith, the Complainant’s trademarks having a strong reputation and being widely known. The domain name is also used in bad faith as it is not connected to an active website and it is being passively held. Furthermore, the Respondent has, in breach of the registration agreement, taken active steps to conceal its true identity for the domain name in dispute.

B. Respondent

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

6. Discussion and Findings

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

(i) 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

(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 Respondent’s domain name <wüstenrot.com> includes in its entirety the Complainant’s registered Company name and trademark “WÜSTENROT”. The Respondent’s domain name is thus identical to the Complainant’s trademark.

The Complaint therefore meets the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has described why the Respondent would not have rights or legitimate interests in respect of the domain name at issue. The Respondent has not taken the opportunity given to him under these proceedings to explain his reasons for registering <wüstenrot.com>. The Panel finds that the arguments invoked by the Complainant to deny the Respondent any rights or legitimate interests in respect of the domain name <wüstenrot.com> are sufficient.

Accordingly, the Complainant succeeds in establishing the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy contains a non-exhaustive list of circumstances constituting evidence of the registration and use of a domain name in bad faith.

The Panel finds it credible that the domain name at issue has been registered in bad faith. Indeed, the trademark “WÜSTENROT” is original and distinctive and the Panel therefore assumes that it must have been known by the Respondent when he registered <wüstenrot.com>.

Furthermore, the Complainant has proven that the Respondent is using a false identity by operating under a name that is not a registered business name and that the Respondent is using false contact details : the telephone number mentioned in the “Whois” data for the domain name at issue does not exist and the identical telefax number is also incorrect.

In addition, the domain name at issue is not used by the Respondent and there is no indication that it has ever been used since its registration more than two years ago, in 2003.

Finally, the Respondent has not answered the warning letter which was sent to him by the Complainant and has never provided a justification for the registration and passive holding of the domain name in dispute.

For these reasons and absent a response by the Respondent, the Panel considers that the Complaint meets the requirements of paragraph 4(a)(iii) 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 name, <wüstenrot.com> (respectively <xn--wstenrot-65a.com>) be transferred to the Complainant.

Theda König Horowicz
Sole Panelist

Dated: November 1, 2005