August Storck KG v. Tony Mohamed

[Indexed as: August Stork KG v. Mohamed]
[Indexed as:]

WIPO Arbitration and Mediation Center
Administrative Panel Decision

Case No. D2000-0196
Commenced: 22 March 2000
Judgment: 3 May 2000

Presiding Panelist: Bernhard F. Meyer-Hauser

Domain name – Domain name dispute resolution policy – Trademark – Identical – Legitimate interest – Bad faith registration – Bad faith use

Complainant was owner of numerous trademark registrations worldwide for the mark WERTHER’S ORIGINAL.  Respondent registered the domain name, Complainant contends that Respondent had no legitimate interests in the domain name and registered it in bad faith.

Held, Name Transferred to Complainant

It is clear that the domain name WERTHERSORIGINAL.COM is identical to the trademark registered and used by Complainant in the worldwide distribution and sales of one of its most popular candies, WERTHERS ORIGINALS. It is also clear that Respondent has no valid or legitimate interest in the domain name and thus registered and used the domain name in bad faith.

Since no evidence exists to show that Respondent had any rights or legitimate interests in the name Werthers Original or intended a legitimate use and since Respondent had registered another domain name similar to the trademark of a well known investment company, Respondent has demonstrated bad faith registration and use of the domain name.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Meyer-Hauser, Panelist: -

1. The Parties
The complainant is August Storck KG, a German company, having its principal place of business in Berlin, Germany. The respondent is Tony Mohamed, an individual resident in Ontario, Canada.

2. The Domain Name(s) and Registrar(s)
The domain name at issue is <>, which domain name is registered with Network Solutions, Inc.

3. Procedural History
On March 22, 2000, a complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the “WIPO Center). 

A request for Registrar Verification was transmitted to Network Solutions on March 24, 2000. It was confirmed by email on March 28, 2000 that the domain name at issue is registered with Network Solutions and that Respondent was the current registrant of the name. 

A Notification of Complaint and Commencement of Administrative Proceeding was transmitted by the WIPO Center to Respondent on March 29, 2000. April 17, 2000 was the deadline set to file a response to the complaint.

No response was received from Respondent. Consequently, on April 20, 2000 the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date of May 3, 2000.

4. Factual Background
Complainant contends that it has been engaged in the manufacture, distribution and sale of candy for over 80 years. Further, Complainant states that it is one of the leading distributors of packaged hard candy throughout the world and that the trademark WERTHER’S ORIGINAL which is used to identify a particular, immensely popular, line of candy has been registered in many countries throughout the world and has been continuously used since 1978.

Evidence showed that Complainant’s trademark has been registered in Canada since 1994. 

It is further stated by Complainant that: (1) its goods are distributed and sold worldwide through food and drug mass merchandisers including popular supermarket and grocery chains such as K-Mart, Walmart, and Walgreen’s in the United States; (2) WERTHER’S ORIGINAL candy has been extensively advertised and promoted in local, network and cable television commercials, nationally circulated trade publications, newspapers, point-of-sale materials, and displayed the candy worldwide in trade shows. Consequently, it is emphasized by Complainant that at a result of its extensive and substantial advertisement and sales, it has acquired valuable goodwill in its mark and the mark has become favourably known on the international stage.

5. Parties’ Contentions
A. Complainant
Complainant contends that Respondent has registered a domain name which is identical to trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith. 

Complaint is particularly concerned that Respondent has not used or made demonstrable preparations to use the domain name, that Respondent as it appears is not commonly known by the disputed domain name and has not acquired any trade or service mark right in the domain name at issue, and that Respondent is failing to make a legitimate, non-commercial or fair use of said domain name.

It is further contended by Complainant that Respondent has registered the domain name as a means of preventing Complainant from using its mark in a corresponding domain name or with intentions of selling, renting or otherwise transferring the domain name to Complainant or a competitor of Complainant for valuable consideration in excess of the costs incurred by Respondent. Complainant contends that Respondent’s registration of multiple domain names corresponding to the famous trademarks of numerous others is further damaging evidence of Respondent’s bad faith registration and use of the domain name <>.

B. Respondent
Respondent failed to contest the allegations of Complainant.

6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a complainant must prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to the trademark or service mark in which complainant has rights; and
(2) that the respondent has no legitimate interest in respect of the domain name; and
(3) the domain name has been registered and used in bad faith.
It is clear that the domain name, except for the fact that domain names cannot include spaces or apostrophes, is identical to Complainant’s registered trademark, WERTHER’S ORIGINAL. Respondent has failed to provide evidence of legitimate rights or interests in respect of the domain name. Evidence exists which proves the contrary. 
Although it was contended by Complainant that Respondent has registered numerous other domain names which correspond to various trademarks, the Panelist is not satisfied that these domain names are truly related to registered trademarks due to there general nature.
However, passive holding of a domain name may be sufficient to constitute bad faith use where certain conditions exist. In the present case, numerous conditions are relevant in this respect: Complainant’s trademark is known worldwide and has a strong reputation; Respondent has failed to provide evidence of any good faith use of the domain name; Respondent has registered one other domain name which is strikingly similar to the corporate name of a well known investment company; it was admitted by Respondent in an email that he would never use the domain name at issue; in this same email Respondent declared that he was undecided as to whether he would transfer the disputed domain name to Complainant. It is decided by the Panelist, that the sum of the above conditions results in Respondent’s passive holding of the domain name to constitute bad faith use.

7. Decision
For all the foregoing reasons, the Panelist decides that the domain name registered by Respondent is identical to the trademark in which Complainant has rights, and that Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent’s domain name has been registered and used in bad faith. Accordingly, pursuant to Paragraph 4 of the Policy, the Panelist requires that the registration of the domain name <> be transferred to Complainant.

Domain Name Transferred