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Diknah, S.L. v. WebQuest.com Inc. [2005] GENDND 618 (25 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Krauth Medical KG (GmbH & Co.) v. Mr. Bob Krauth

1. The Parties

The Complainant is Krauth Medical KG (GmbH & Co.), Hamburg, Germany represented by Kahb Kruhl Arends Hofert Bergemann, Germany.

The Respondent is Mr. Bob Krauth, Yakima, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain name <krauth.com> hereinafter referred to as “the Domain Name”, is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2005. On April 11, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On April 14, 2005, Network Solutions, LLC 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 April 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2005. The Response was filed with the Center on May 3, 2005.

The Center appointed Charles Gielen as the sole panelist in this matter on May 10, 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.

Since the Respondent claims that his personal name is Krauth, the Panel issued administrative panel order No. 1 on June 13, 2005, seeking for further information on Respondent's identity and requesting the Respondent to submit to the Center proof of his identity. The Center received on the same date from the Respondent copies of his driver’s license, his physician license, his DEA (Drug Enforcement) License and his Ham radio license. On the basis of this evidence the Panel concluded that the Respondent bears the surname Krauth.

4. Factual Background

The Complainant owns a German trademark registration No. 1136660 dated March 22, 1989, of the trademark AD.KRAUTH for all kind of medical products and furthermore uses the word KRAUTH for its business. The Respondent’s personal name is KRAUTH, which was registered on December 1, 1997, as the Domain Name.

5. Parties’ Contentions

A. Complainant

According to the Complainant the Domain Name used by the Respondent is confusingly similar to the German trademark 1136660 “AD.KRAUTH” as it uses the identical letters in the same order, except for the prefix “AD”. Furthermore, the Domain Name used by the Respondent is identical with the distinguishing mark “KRAUTH” for which the Complainant enjoys protection under § 5 Abs. 2 of the German Trademark Act as it uses the identical letters in the same order.

The Complainant’s business was founded in 1894 and has since then continuously expanded its business beyond its seat in Hamburg as to now entertain worldwide trade relationships in respect of medical and healthcare products. Not only is the business of the Complainant well established and well-known throughout the whole of Europe and the US, but the Complainant has also been acting as an important distributor for US products to the German and European markets for a long time now. This is also supported by the fact that the CEO of the Complainant has become boardmember of Orthofix International N.V. In addition, for years now, the Complainant has entertained a fully developed website, both in German and in English, under the domain name <krauth.de> in order to reach its international customers.

Furthermore, the Complainant alleges that the Respondent has no rights or legitimate interests because he did neither use the Domain Name in connection with a bona fide offering of goods or services nor is he making a legitimate non-commercial or fair use of the domain name. The website consists of arbitrarily composed content of no specific value or interest simply used in order to block the Domain Name and to pretend non-commercial fair use.

According to the Complainant, there is an attempt for commercial gain by misleadingly diverting customers of the Complainant in search of the Complainant’s products to the website of Windworks Sailing Center Inc. In addition, the Respondent is intentionally tarnishing the trademark of the Complainant for use in the United States and worldwide.

Finally, the Complainant asserts that the Domain Name was registered and is being used in bad faith. In this context, the Complainant states that the Respondent has acquired the Domain Name for the purpose of later selling, renting or otherwise transferring the Domain Name registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs. Furthermore, the Respondent engages in a highly intelligent and sophisticated pattern of cybersquatting trying to either (i) prevent the Complainant from using the Domain Name in dispute in the course of its business for reasons beyond the knowledge of the Complainant without having his own legitimate interest in respect of the domain or (ii) drive up the price for the Domain Name beyond reasonable and fair value for his own financial gain. It is likely that the Respondent entertains some kind of commission agreement with Windworks Sailing Center Inc. in respect of customers directed to them via the domain in dispute. The Respondent knows well that customers of the Complainant in the United States commonly have a strong financial background and are likely to be interested in upper-class hobbies like yachting and sailing. It is therefore easy to divert them to the website of Windworks Sailing Center Inc. when in search for the Complainant’s products and/or services.

B. Respondent

The Respondent agrees that the Domain Name is similar, if not identical to the trademarks registered and used by the Complainant, but asserts that he has rights and legitimate interests in respect of the Domain Name as it is his surname under which he has been commonly known. He makes a legitimate, non-commercial use of the Domain Name and he has no intent to misleadingly divert customers or to tarnish the trademark of the Complainant for commercial gain. Furthermore, he denies the fact that the Domain Name has been registered or is being used in bad faith. In no way did he communicate with anyone on selling the Domain Name in which he is not interested. He is running a family website showing, amongst others, family pictures as well as information regarding his hobbies, such as sailing, in which context he has a link to a charter sailing company, Windworks Sailing, with which he has no business relation. Finally, he says that there has not been any pattern of conduct of cybersquatting, no attempts to disrupt the business of the Complainant or to create confusion or to divert customers. In addition, he is willing to place a link to the Complainant’s website on his own website. He requests the Panel to find there is reverse domain name hijacking.

6. Discussion and Findings

A. Identical or Confusingly Similar

There is no doubt that the Domain Name is similar to the trademark AD.KRAUTH and identical to the distinguishing sign KRAUTH to which the Complainant has common law rights in Germany. The Respondent agrees to this.

B. Rights or Legitimate Interests

The Respondent is entirely correct in his assertion that he has rights and legitimate interests in respect to the Domain Name. As evident from the case file, it is his family name and he is known by that name in the sense of paragraph 4(c)(ii) of the Policy. Furthermore the Respondent operating a family website, makes a non-commercial use of the Domain Name without any intent to divert customers or to tarnish the trademarks. The fact that the family photos are “hardly cognizable” and that the website design is “inchoate and rudimentarily designed” is suggestive of something but certainly not of lack of legitimate interest. The link to Windworks Sailing, explained by the Respondent as part of his sailing hobby, is of no relevance in this context. So, the Respondent has shown rights and legitimate interests regarding the Domain Name and the Complainant did not bring forward any evidence to the contrary.

C. Registered and Used in Bad Faith

The assertions of the Complainant with respect to bad faith are without any factual or legal basis. The Complaint mentions all the grounds set forth in paragraph 4(b) of the Policy but does not give any even beginning of evidence that supports the allegation of bad faith. The simple fact that the Respondent is a medical doctor with the name Krauth does in no way prove, as the Complainant asserts in paragraph 26 of the Complaint, that the Respondent has acquired the Domain Name for the purpose of later selling, renting or otherwise transferring it for valuable consideration. This, according to the Complainant became evident because the Respondent did not reply to an offer. Such an offer has not been made in writing or at least the Panel did not find a copy of it in the file. The Respondent replied by saying that he did not receive such an offer and that he simply is not interested in selling the Domain Name. He did not make any offer himself. In conclusion, there is no evidence that the Domain Name was registered “primarily” (as paragraph 4(b)(i) of the Policy requires) for the purpose of selling, etc.

Furthermore, it is stated without any factual support by the Complainant that the Respondent is engaged in a “highly intelligent and sophisticated pattern of cybersquatting”. The reference to other Panel decisions in this respect is misplaced. The allegations about the link to the sailing charter company (which has nothing to do with the business of the Complainant) are of no relevance. The Respondent apparently likes sailing in the Seattle area and without the sailing company knowing of it, the Respondent placed a link to the sailing company on his website.

D. Reverse Domain Name Hijacking

The Panel considers this to be a case in which the Complainant, by filing the Complaint and upon the evidence presented, lacked any good faith basis for filing it. It seems to be an attempt to reversely hijack the Domain Name. The Complainant knew that the Respondent’s surname is Krauth. The Complainant also knew that the site is a family website with family picture albums and an explanation of the Respondent’s hobbies amongst which is sailing. The Complainant does not have any evidence of the Respondent wanting to sell the Domain Name, let alone that this name was registered primarily for the purpose of gaining more than out of pocket expenses. The allegations of a business relation with a sailing charter company (unrelated in any way to the type of business of Complainant) were without any factual ground. The Complainant therefore knew that the Complaint lacked any merit.

7. Decision

For all the foregoing reasons, the Complaint is denied and the Panel declares that the Complaint was filed as an attempt of reverse domain name hijacking.

Charles Gielen
Sole Panelist

Dated: June 20, 2005