WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Buendnis 90 / Die Gruenen v. RJG Engineering Inc.
Case No. D2001-1111
1.
The Parties
The Complainant is Buendnis 90 / Die Gruenen, of Platz vor dem Neuen Tor 1, Berlin,
Germany, represented by Rechtsanwalt Johannes Zindel of Jones, Day, Reavis & Pogue
of Frankfurt, Germany.
The Respondent is RJG Engineering Inc., of PO-Box 6426, Lincoln, Nebraska, United
States of America, represented by Mr. Gerhard Lauck, President of the Respondent.
2.
The Domain Name and Registrar
The disputed domain name is <diegruenen.net>.
The Registrar is Signature Domains, Inc., of Miami, Florida, United States of America.
3.
Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute
Resolution Policy (“the Policy”) adopted by the Internet Corporation for Assigned
Names and Numbers (“ICANN”) on August 26, 1999, the Rules for Uniform Domain
Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (“the
Rules”) and the Supplemental Rules for Uniform Domain Name Dispute Resolution
Policy (“the Supplemental Rules”) of the WIPO Arbitration and Mediation Center (“the
Center”).
The Complaint was received by the Center by email on September 10, 2001, and in
hard copy on October 3, 2001. The Complaint was acknowledged on
September 13, 2001. On September 17, 2001, registration details were sought from the
Registrar. On September 21, 2001, the Registrar confirmed that the disputed domain
name is registered in the name of the Respondent at the address mentioned above and
that the Policy applies to the disputed domain name. On September 24, 2001, the
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Center issued a Complaint Deficiency Notification relating to payment of the required
fees and lodgment of the required copies of the Complaint.
These deficiencies were remedied by Complainant and on October 3, 2001, the Center
satisfied itself that the Complaint complied with all formal requirements (including
payment of the prescribed fee) and that day formally dispatched copies of the
Complaint by post/courier (with enclosures) to the Respondent at the address as
recorded with the Registrar and by facsimile and email (without attachments). The
Center included with that material a letter dated October 3, 2001, containing
notification of the commencement of this administrative proceeding, with copies (of the
Complaint without attachments) to the Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was October 23, 2001. On
October 5, 2001, the Center received a single page facsimile message from the
Respondent dated October 4, 2001, and on October 8, 2001, the Center asked whether
Respondent intended to make any further submission. On October 25, 2001, nothing
further having been received from the Respondent, the Center notified the parties of the
Respondent’s default. On October 30, 2001, the Center received a facsimile dated
October 29, 2001, from Respondent confirming that its letter of October 4, 2001, was
its Response.
On October 31, 2001, the Center received an unsolicited reply from Complainant’s
counsel to Respondent’s letter of October 4, 2001. That reply does not raise evidence
not reasonably available to Complainant at the time of its initial submission, nor
arguments by Respondent that Complainant could not reasonably have anticipated. For
the reasons given in Goldline International, Inc. v. Gold Line (WIPO Case No.
D2000-1151), this Panel does not admit the reply and has had no regard to it.
The Complainant elected to have the case decided by a single-member Administrative
Panel (“the Panel”) and on November 1, 2001, the Center notified the parties of the
appointment of Alan L. Limbury as panelist, Mr. Limbury having submitted a
Statement of Acceptance and Declaration of Impartiality and Independence. That day
the Center transmitted the case file to the Panel and notified the parties of the projected
decision date of November 15, 2001.
The Panel is satisfied that the Complaint was filed in accordance with the requirements
of the Rules and Supplemental Rules; payment was properly made; the Panel agrees
with the Center’s assessment concerning the Complaint’s compliance with the formal
requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules
to employ reasonably available means calculated to achieve actual notice to the
Respondent of the Complaint; the informal Response was filed within the time
specified in the Rules and the Panel was properly constituted.
The language of the proceedings was English.
4.
Factual Background
"Die Gruenen" is the name of a political party in Germany, founded in January 1980.
This party is a member of the current government of Chancellor Gerhard Schroeder.
According to the Registrar, the disputed domain name was registered with it on
August 3, 2001.
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5.
Parties’ Contentions
A.
Complainant
DIE GRUENEN is a registered trademark of Complainant and protected for publishing
all kinds of print products, namely brochures, stickers, information materials, posters
and books.
The disputed domain name has been registered and is being used in bad faith. The
disputed domain name has been offered for sale (Complaint Ex. 4). Furthermore the
disputed domain name is being used intentionally for creating confusion with
Complainant's trademark.
Respondent has no rights to register or use the domain name.
Complainant requests the Panel to direct that <diegruenen.net> be cancelled.
B.
The Respondent
DIEGRUENEN is a registered trade name for Respondent in the State of Nebraska.
It is not a registered trademark of Complainant in the United States of America. Even
if Complainant has a right to that name in Germany, it does not have an exclusive right
to it in the USA.
Complainant’s name is “Buendnis 90 / Die Gruenen”, not simply “diegruenen”.
“Diegruenen” means, literally, "the Greens". "Greens" is a common term in Europe for
anybody supporting environmental issues. It is not limited to members of one political
party in one country. For example: could be "Communist Party USA" be given
exclusive rights to the domain name "thereds" even without a US trademark?
There is already a website with the domain name <diegruenen.com> that does not
appear to have any connection to Complainant. I am unaware of any action against that
website. Our own website at the disputed domain name promotes Internet ecology and
free speech. It does not mention Complainant at all or pretend to have any connection
to it.
As a free speech activist and former political prisoner of the German government
currently co-ruled by Complainant, I suspect this action is politically motivated. The
German government claims jurisdiction over American websites on the basis they are
"accessible" in Germany. It has threatened even mainstream US publishers such as
Amazon, Barnes & Noble etc.!
6.
Discussion and Findings
Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis
of the statements and documents submitted and in accordance with the Policy, the
Rules and any rules and principles of law that it deems applicable. This has been a
difficult case because the submissions of both parties are sparse, to say the least, as is
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the evidence that has been provided.
To qualify for cancellation or transfer, a Complainant must prove each element of
paragraph 4(a) of the Policy, namely:
(i)
the disputed domain name is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights; and
(ii)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(iii) the disputed domain name has been registered and is being used in bad
faith.
To obtain relief under the Policy it is not necessary to establish that Complainant has
trademark rights in the country in which the domain name is registered or in which the
registrant resides.
Identity or confusing similarity
Essential or virtual identity is sufficient for the purposes of the Policy: see The Stanley
Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No.
D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v.
S&S Enterprises Ltd. (WIPO Case No. D2000-0802); Nokia Corporation v.
Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102) and Blue Sky Software
Corp. v. Digital Sierra Inc. (WIPO Case No. D2000-0165).
Page 2 of Ex. 4 to the Complaint is a copy of a record of the German Patent Office
depicting the trademark DIE GRUENEN, Registered No. 1126592 dated 22.08.88. The
Panel accepts that Complainant is the proprietor of the registered trademark DIE
GRUENEN in Germany.
The Panel finds the disputed domain name is identical to Complainant’s registered
trademark DIE GRUENEN.
The Complainant has established this element.
Illegitimacy
The Panel infers that the Complainant has not authorized Respondent to use its
trademark nor to register the disputed domain name. Respondent’s name is RJG
Engineering Inc. There is no evidence Respondent is known by the disputed domain
name.
These circumstances are sufficient to constitute a prima facie showing by Complainant
of absence of rights or legitimate interest in the disputed domain name on the part of
Respondent. The evidentiary burden therefore shifts to Respondent to show by
concrete evidence that it does have rights or legitimate interests in that name: Do The
Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited.
Respondent has not substantiated its asserted registration of DIE GRUENEN as a trade
name in Nebraska. In any event, all the circumstances would need to be considered
before a conclusion could be drawn that any such registration should be taken into
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account in finding Respondent has a legitimate interest in the disputed domain name.
There is no evidence as to the timing or the circumstances of that asserted registration.
Respondent claims that the name DIE GRUENEN [“The Greens”] is not distinctive of
members of a political party in one country. However, descriptive words are capable of
registration as trademarks when they have become distinctive through use and
Complainant has shown the name has become distinctive of it in Germany.
Respondent asserts that it uses the disputed domain name for a website promoting
Internet ecology and free speech. Respondent asserts that the site does not mention
Complainant at all or pretend to have any connection to it. However, there is no
evidence of the content of that site at the time of this dispute arising.
It may not be appropriate for this Panel independently to visit the site so as to examine
Respondent’s assertions: see Rule 15(a) and Benefitslink.com, Inc. v. Mike Haynes
(National Arbitration Forum Case No. FA0007000095164:
"It is not the role of the Panel to conduct an independent investigation outside the
materials submitted in the record".
Leaving aside legal research, including research into decisions under the Policy, which
the Panel is clearly authorized to conduct, it could be argued that a reference in the
materials submitted in the record to a website incorporates the content of the website
into those materials, so that the Panel may visit that website without violating rule 15
(a). Be that as it may, a practical reason in this case why the Panel should refrain from
independent investigation of Respondent's website is that the Panel would have no way
of knowing whether, as often happens, changes have been made to the site since the
commencement of the proceeding.
Respondent has not demonstrated by concrete evidence that it has rights or legitimate
interests in the disputed domain name.
Complainant has established this element.
Bad faith registration and use
Complainant relies on Ex. 4 to the Complaint as providing evidence that Respondent
has offered the disputed domain name for sale. There are 2 pages in that Exhibit. The
first appears to be page 7 of 10 pages from the site <http://www.nazi-laucknsdapao.com>. It is entitled “How YOU can use the Internet as a Propaganda
Weapon!” and contains material in both German and English suggesting that European
webmasters can reduce the risk of political repression by moving their websites to the
USA. There is no offer to sell the disputed domain name on the page. The second page
of Ex. 4 is the previously mentioned copy of part of the records of the German Patent
Office. It provides no evidence of any offer on the part of Respondent to sell the
disputed domain name.
Complainant has failed to establish circumstances of bad faith within paragraph 4 (b)
(i) of the Policy. Paragraph 4 (b) is not exhaustive however, and it is open to the Panel
to make a finding of bad faith registration and use based upon other demonstrated
circumstances.
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In SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport (NAF case FA94956) a
finding of bad faith was made where the respondent “knew or should have known” of
the registration and use of the trade mark prior to registering the domain name.
Likewise Marriott International, Inc. v. John Marriot (NAF case FA94737); Canada
Inc. v. Sandro Ursino (eResolution case AF-0211) and Centeon L.L.C./Aventis Behring
L.L.C. v. Ebiotech.com (NAF case FA95037).
Here Respondent, an American company located in Nebraska, chose the German
language for its domain name. As a self-described “free speech activist and former
political prisoner of the German government currently co-ruled by Complainant”,
Respondent’s President and representative must have been sufficiently aware of politics
in Germany to have known of Complainant and its mark DIE GRUENEN before
Respondent registered the disputed domain name. The Panel so finds.
The Panel also finds that, knowing of Complainant and its mark, Respondent has
created the likelihood, by using the German language for its domain name, that German
Internauts would be attracted to the site because the disputed domain name conveys an
association with Complainant. This justifies a finding of bad faith registration.
As to use, assuming, as Respondent asserts, that the site <www.diegruenen.net>
promotes Internet ecology and free speech and does not mention Complainant, the
Panel finds such Internauts are likely to believe that the views expressed on the site are
those of Complainant or have Complainant’s approval.
Thus on the limited material available it appears to the Panel that both the site and the
disputed domain name falsely represent to Internauts, particularly German Internauts,
that there is a connection with Complainant. In so doing, Respondent is using the
disputed domain name in bad faith.
The Panel finds that the Respondent has acted in bad faith both in registration and use
of the disputed domain name.
The Complainant has established this element.
7.
Decision
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the
domain name <diegruenen.net> be cancelled.
Alan L. Limbury
Panelist
Dated: November 14, 2001
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