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Deutsche Telekom AG v. Unasi Management Inc. [2005] GENDND 468 (16 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mast-Jägermeister AG v. GlazedDonuts

Case No. D2005-0034

1. The Parties

The Complainant is Mast-Jägermeister AG, Wolfenbüttel, Germany, represented by Gramm, Lins & Partner, GbR, Germany.

The Respondent is GlazedDonuts, San Jose, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <jägermeister.net> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2005. On January 13, 2005, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On January 13, 2005, Register.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. 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 the Respondent of the Complaint, and the proceedings commenced on January 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2005.

The Center appointed Arne Ringnes as the sole panelist in this matter on February 16, 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. Due to exceptional circumstances, the decision was rendered on March 7, 2005.

4. Factual Background

The Complainant is producer of the herbal liqueur “Jägermeister” which is distributed world wide in currently more than 60 countries.

Complainant is owner of registered trademarks JÄGERMEISTER world wide and has given the following overview of its trademark registrations:

Country	Registration No.	Priority	JÄGERMEISTER
Germany	474 481	December 07,  1934	Word
Germany	396 36 703	August 26,  1996	Word-/Design
Germany	399 13 941	March 10, 1999	Word-/Design
USA	857,604	May 16, 1967	Word
USA	2,165,258	November 13,  1996	Word-/Design
International Registered Trademark Registration designating: Egypt, Albania, Algeria, Armenia, Azerbaijan, Benelux, Bosnia-Herzegovina, Bulgaria, China, Denmark, Finland, France, Greece, United Kingdom of Great Britain and Northern Ireland, Ireland, Italy, Kazakhstan, Kyrgyzstan, Croatia, Cuba, Latvia, Liberia, Liechtenstein, Morocco, Macedonia, Monaco, Mongolia, Namibia, North Korea, Norway, Austria, Poland, Portugal, Romania, Russia, San Marino, Sweden, Switzerland, Serbia and Montenegro, Slovakia, Slovenia, Spain, Sudan Tajikistan, Czech Republic	663 995	August 26,  1996/November 20, 2001 (Namibia: June, 30, 2004)
Community Trademark	135202	April 01, 1996	Word
Community Trademark	2662443	April 26, 2002	Word-/Design
Australia	204,736	September 02, 1966	Word
Argentina	1.914.786	February 08,  2002	Word-/Design
Japan	1.749.484	December 15,  1984	Word
South Africa	76/4519	August 30,  1976	Word
Uruguay	296030	October 29,  1976	Word
Brasil	006820700	September 21, 1977	Word
Chile	501.612	December 16,  1976	Word
Estonia	14547	December 29, 1992	Word
Hong Kong SAR of China	4270/1991	July 26, 1989	Word
Canada	276,672	November 04, 1981	Word
Mexico	495120	February 07, 1995	Word
Namibia	7829/66	September 26, 1966	Word
Singapore	96/13052E	December 05, 1996	Word
Ukraine	13908	26.06.1995	Word-/Design

It is further informed that Complainant uses the denomination “Jägermeister” as part of its company name “Mast- Jägermeister AG”, the short form of which is “Jägermeister”. The company was registered originally as “W. Mast GmbH, Jägermeister-Spirituosenfabrik” on January 1, 1947. The company changed to Mast- Jägermeister AG which was registered in the register for companies in the city of Wolfenbüttel on June 11, 1987.

Complainant sent a warning letter to the Respondent on June 2, 2004, asking him to transfer the domain name to the Complainant. The Respondent answered with letter of June 14, 2004, via e-mail. In this letter, the Respondent states that as a fan of complainant’s beverage he intended to host a small benevolent fan site. Inter alia: “I am well aware of both your client’s product, the famous herbal liqueur named Jägermeister, and their stature in the world market. I am, in fact, quite a fan of your client’s beverage and had registered the Internet domain name <jägermeister.net> (tech. “XN—JGERMEISTER-L8A.NET”) in May of 2001, with hopes of hosting a small benevolent fan (enthusiast) site. Hence the Internet domain name was registered with the “net” top level domain (TLD). This was done in good faith without intent for commercial gain, denial of usage, to misleadingly divert customers, or to tarnish the trademark of your client.” He further promised to relinquish control of the domain name <jägermeister.net> if he was reimbursed with regard to the costs incurred in the registration of the domain name.

With e-mail of July 13, 2004, Complainant confirmed to be willing to compensate Respondent’s out of pocket expenses.

The Respondent replied on September 16, 2004, that he would provide information on his bank account and “set things in motion” to transfer the domain name. However, Respondent did not take any such steps.

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name is identical or confusingly similar to Complainant’s trademark JÄGERMEISTER.

In this respect Complainant refers to its trademark registrations, as set out in Para 4 above. Further Complainant has provided evidence to substantiate that the herbal liquor “Jägermeister” is one of the most successful spirits in the world and has a strong brand recognition.

With respect to the condition that the Respondent has no rights or legitimate interests in respect of the domain name, Complainant points out that holding the Internet domain name <jägermeister.net> in order to host the fan site is not a legitimate reason.

Complainant further contends that the domain name was registered and is being used in bad faith. In this respect Compliant submits that Respondent was well aware of Jägermeister as a famous liquor. Complainant refers to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, in which it was held that under certain circumstances inactivity by the Respondent may imply bad faith use under the Rules. Complainant submits that it amounts to bad faith that Respondent has not transferred the domain name despite his promise to do so in correspondence with Complainant. The Complainant has further argued that as the word “Jägermeister” is outstanding and unique and does not have any descriptive meaning, and that any use by the Respondent would mislead the public. Also, Respondent’s registration of the domain name <jägermeister.net> interferes with the Complainant’s use of its trademark in the sense that the Complainant is unable to register the domain name in its name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, Respondent has in his letter of June 14, 2004, held that the domain name “…is not yet “active” as internet domain names using extended characters of US-ASCII, ISO-8859-*, Unicode, or any other encoding schemes are not yet universally recognized by Domain Name System (DNS) servers, in this case specifically with regards to the character “ä”.”

6. Discussion and Findings

A. Identical or Confusingly Similar

Under the Rules Paragraph 4(a)(i), Complainant shall prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has right.

Complainant has submitted copies of a number of trademark registrations in several countries for the word mark Jägermeister. The domain name in dispute – <jägermeister.net> – is identical to Complainant’s trademark. Thus the condition under the Rules Paragraph 4(a)(i) is fulfilled.

B. Rights or Legitimate Interests

Under the Rules Paragraph 4(a)(ii), Complainant shall prove that Respondent has no rights or legitimate interests in respect of the domain name.

In its letter of June 14, 2004, Respondent states that he is well aware of Compliant’s products “the famous herbal liquor named Jägermeister, and their stature in the world marked”. The Respondent has also claimed that he was planning to set up a fan site. However, there is no evidence for “demonstrable preparations” to use the domain name as a fan site, and a mere allegation of intention to use the domain name in this way cannot on its own create a valid defence against an UDRP complaint, see e.g. Freddy Adu v. Frank Fushille WIPO Case No. D2004-0682: “Panelists in disputes under the Policy have consistently found that noncommercial fan sites qualified as legitimate use. In this proceeding, though, there is no fan site. There is no evidence of Respondent’s use of the Disputed Domain Name for this or indeed any other purpose, or of “demonstrable preparations” to do so. Respondent’s factual assertions, if true, demonstrate only that he intended to use the Disputed Domain Name for a fan site. Intentions are not “demonstrable preparations” to use a domain name. Under Paragraph 4(a)(ii), once Complainant has established his prima face case, “concrete evidence”, not intentions, is necessary to overcome that presentation”.

Thus, the Panel concludes that second condition of the Rules is proved by the Complainant.

C. Registered and Used in Bad Faith

As the third condition under the Rules, Complainant shall prove that the domain name was registered and is being used in bad faith, cfr. the Rules Paragraph 4(a)(iii).

Firstly, the Panel points out that none of the circumstances mentioned in the Rules Paragraphs 4(b)(i)-(iii) are applicable in this matter. Hence, the Respondent has not requested Complainant to pay in excess of his out of pocket costs. Further, there is no evidence that Respondent has engaged in a pattern of preventing an owner of a trademark from reflecting the mark in a corresponding domain name. Furthermore, there is no evidence showing that that domain name is registered primarily for the purpose of disrupting the business of a competitor.

The fourth circumstance under Paragraph 4(b)(iv) is that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant’s mark.

As mentioned above, Respondent has claimed that he was planning to set up a fan site. Even if it is to be assumed that such fan site, if ever to be established, would be non-commercial, a mere allegation of future intention to use the domain name in this way cannot create a valid defence against the Policy, see above. The fact that the Respondent has registered a domain name which is similar to a very well known trademark internationally, and even not fulfilled his promise to transfer the domain name, shows bad faith on the part of the Respondent.

Based on the above, Paragraph 4(b)(iv) of the Policy is met.

The Panel concludes that the Complainant has shown that the Respondent has registered and used the domain name 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 <jägermeister.net> be transferred to the Complainant.

Arne Ringnes
Sole Panelist

Dated: March 23, 2005