ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution Policy

 


Complainant:

Deutsche Landwirtschafts-Gesellschaft e.V.

Respondent:

Berndus Jacobus Van Etten SR

Case Number:

AF- 0983

Contested Domain Name:

EUROTIER.COM

Panel Member:

Thomas P. Arden

 

1. Parties and Contested Domain Name

The complainant is Deutsche Landwirtschafts-Gesellschaft e.V., an organization located in Germany and allegedly doing business in connection with livestock and poultry production and management. The respondent is Berndus Jacobus Van Etten SR, a resident of British Columbia, Canada, who is allegedly in the business of designing web sites. The contested domain name is Eurotier.com.

2. Procedural history

The electronic version of the complaint was filed on-line through eResolutionís Website on August 16, 2001. The hard copy of the complaint and annexes were received on August 23, 2001. Payment was received on August 17, 2001.

Upon receiving all the required information, eResolutionís clerk confirmed the identity of the registrar for the contested domain name is Network Solutions Inc.; verified the registrarís Who Is database contains all the essential contact information for respondent; verified the contested domain name resolves to an active web page; and verified that the complaint was administratively compliant. The Clerkís Office at eResolution fulfilled all its responsibilities under Paragraph 2(a) of ICANN's Rules for Domain Name Dispute Resolution Policy in forwarding the complaint to the respondent, notifying the complainant, the concerned registrar and ICANN on August 24, 2001. The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent.

On September 17, 2001, respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on September 18, 2001.

On September 20, 2001, the Clerkís Office contacted Thomas P. Arden, and requested that he act as panelist in this case. On September 20, 2001, Thomas P. Arden agreed to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality. On September 20, 2001, the parties were notified that Mr. Arden had been appointed and that a decision was to be, save exceptional circumstances, handed down on October 4, 2001.

3. Factual Backgrounds

Complainant owns a registration of the mark EUROTIER issued by the Patent and Trade Mark Office of Germany on March 22, 1996, for a wide variety of goods, including livestock; fresh fruit and vegetables; plants; and agricultural, gardening and forestry products. (Registration No. 394 10 707) The registration also covers a variety of services, including transportation, travel activities, education, entertainment, food supply, medical supply, and legal advice. Complainant, however, contends only that the EUROTIER mark is the name of an international exhibition it organizes, which is held every two years. How long the mark has been used is not mentioned. Complainant alleges further that it owns the domain names eurotier.de, eurotier.org, and eurotier.net.  These names are used in connection with web sites that promote the EUROTIER exhibitions.

Respondent registered the domain name eurotier.com on November 13, 1998. Representatives of complainant contacted respondent requesting a transfer of the domain name beginning on March 28, 2000. In response, respondent stated in e-mail correspondence that he had registered the name for a cosmetic company client, conducted a trademark search but discovered no EUROTIER mark, and requested any suggestion on solving the matter. (No evidence concerning respondent's alleged client or the trademark search has been submitted.) Complainant then asked, via e-mail, what respondent wanted for the domain. After other e-mails between the parties, respondent stated that that his developing costs were $650, setup earnings for the future site were $1300, and the registration fee was $70 (totaling $2020). After complainant offered $500 for the domain name in response, respondent refused the offer and then later stated he was not willing to sell the name.

4. Parties' Contentions

Complainant relies on a number of claims to show that respondent has no legitimate interest in the eurotier.com domain name. Complainant stresses that respondent did not launch a web site connected with the name for three years. According to complainant, one of the several e-mail letters between the parties in which respondent detailed his costs constituted an implied offer to sell. Complainant further alleges that the name was registered on November 13, 1998, which coincides with the last date of complainantís 1998 EUROTIER exhibition held in Germany from November 11-13, 1998. In addition, 1998 was the year complainant's first web site was launched (www.eurotier.de), and complainant's marketing efforts were at their high point.

Complainant accuses respondent of registering ".com" names copied from existing names with foreign country top-level domains, such as ".de," for the purpose of selling the ".com" name once the owners of existing names become interested in securing the ".com" name. Complainant states respondent followed this strategy when it detailed his "developing costs" but could not prove the amount of the costs. Complainant also points out that respondent had previously been ordered to transfer a domain name in an earlier case, Gassan Diamonds B.V. v. Van Etten Bernardus Jacobus, Case Nos. AF-0149a ; AF-0149b, which shows he is not "a blameless one."

Respondent claims he is in the business of setting up and maintaining web sites and that he registers domain names as a legitimate part of this business. Respondent states that he had never heard of the EUROTIER mark prior to being contacted by complainant and that he has stated to complainant that he cannot sell the name. Respondent further states that he has never offered any services online in connection with the domain name and will be opening his web site after the Euro becomes ďa legal tender.Ē Respondent argues that the EUROTIER mark is not protected under the laws of countries in North America and that the words "Euro" and "Tier" are common, descriptive words.

5. Discussions and Findings

Article 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") states that the complainant must prove each of the following:

  1. That the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

  2. That the respondent has no rights or legitimate interests in the domain name; and

  3. That the domain name has been registered and is being used in bad faith by respondent.

Concerning the first element, complainant has satisfied its burden of showing rights in a mark and that the mark and domain name at issue are identical. Respondent's argument that the mark consists of common words is unavailing; many protected marks consist of dictionary words.  Respondent's argument that the mark is only registered in Germany also is not well taken, as the rights shown by the registration in Germany are sufficient under the Policy to prove rights in a trademark or service mark. Deutsche Welle Anstalt des offentlichen Rechts v. DiamondWare Ltd., Case No. D 2000-1202, 57 U.S.P.Q.2d 1787.

The evidence and arguments in this case on the second issue of illegitimacy also are relevant to the third issue of bad faith. Complainant submitted as evidence for both elements only a selected few of the e-mail letters exchanged between the parties. Beyond this, complainant only relies on inferences concerning the timing of the registration of the domain name, respondent's inactivity with respect to the name, and respondent's involvement in a similar UDRP proceeding. As for respondent, his claim that he registered the name on behalf of certain clients is not supported by evidence of a contractual relationship or otherwise. However, it is also not contradicted by any evidence or reasonable inferences based on the facts. Although the facts present difficult and close issues on the second and third elements, the panelist finds that complainant's burden has not been satisfied.

Complainant's contention that the $2020 itemization of costs shows bad faith and lack of legitimate rights is not persuasive. This figure was relayed to complainant in response to complainant's own request and is not such a large sum to show on its face that it did not reasonably relate to reimbursement for web site development. As to the earlier proceeding involving respondent, the panelist in that case specifically rejected a similar claim that respondent's registration of a number of domain names relating to Dutch newspapers proved his bad faith. Moreover, complainant did not submit evidence here of the alleged practices that could form the basis for accepting complainant's theory that respondent registers domain names originating as top-level domains in European registries in order to profit from their later sale. As to the inactivity of any web site, that fact alone is not sufficient to show illegitimacy or bad faith.  See Loblaws, Inc., v. Barbosa, Case No. AF-0163.

Finally, respondent's contention that he never had heard of the mark EUROTIER until complainant contacted him is not contradicted by direct or circumstantial evidence. Without evidence providing a reason to believe respondent specifically targeted complainant's mark, complainant has failed to prove its theory on illegitimacy and bad faith. For example, complainant has provided no evidence showing the mark is well known, such as proof of long use and extensive advertising and promotion. Complainant similarly has not shown how successful its EUROTIER exhibitions have been. The record only mentions that complainant's exhibition is held every two years in Germany. In sum, the lack of direct or circumstantial evidence casting doubt on the legitimacy of respondent's allegation that he had no knowledge of the use or registration of the EUROTIER mark leaves the premise of complainant's arguments on legitimacy and bad faith unproven.

The panelist therefore holds that complainantís complaint should be rejected due to a failure to establish the second and third requirements of the Policy.

6. Conclusion

For the above reasons, the panelist rejects the complaint. As a consequence, the registration of the name shall remain in the name of respondent.

7. Signature

 

(s) Thomas P. Arden

Chicago, Illinois, U.S.A.

October 4, 2001

Presiding Panelist