26th Jul 2002
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
real SB-Warenhaus Holding GmbH v. Anutarapun Pugdechat
Case No. DBIZ2002-00017
The Complainant in this administrative proceeding is real SB-Warenhaus Holding GmbH, Korschenbroicher Str. 607, 41065 Moenchengladbach, Germany, represented by Eva Kessler, Schlueterstrasse 41, 40235 Duesseldorf, Germany.
The Respondent in this administrative proceeding is Anutarapun Pugdechat of 89/159 Prachanivate, 1 Chatujak, Bangkok 10900, Thailand, represented by Ari Goldberger Esq., ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003 United States of America.
2. The Domain Name and Registrar
The Domain Name in this dispute is <real.biz> (“the Domain Name”).
The Registrar is OnlineNIC, Inc., United States of America.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center (“the Center”), in electronic form on April 22, 2002, and a hard copy on April 25, 2002. On May 10, 2002, the Center asked the Complainant to amend the Complaint to comply with certain formal requirements. That amendment was delivered by e-mail on June 3, 2002. The Center has verified that the Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy (“the STOP Policy”), as well as the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (“the WIPO Supplemental STOP Rules”) relating thereto and that payment was properly made. The Administrative Panel (“the Panel”) is satisfied that this is the case.
On June 6, 2002, the Center notified the Respondent of the Complaint in the usual manner. On June 24, 2002, the Respondent’s attorney requested an extension of time of 20 days, owing to the exceptional number of STOP disputes in which he was involved. The Complainant’s representative, despite having taken 23 days to reply to the Center’s purely formal request for amendment of the Complaint, refused to agree to any extension of time. The Center granted an extension to July 6, 2002. A Response was received by the Center on July 5, 2002, in electronic form, and on July 9, 2002, as a hard copy.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence, and is due to deliver his Decision by July 30, 2002.
4. Factual Background
(1) The Domain Name was registered by the Respondent on March 27, 2002.
(2)The trade mark “REAL” in which the Complainant alleges it has rights has been registered in respect of a wide variety of consumer products. The Complaint identifies three German trade marks and two International registrations dating back as far as 1991.
(3) The Respondent is said to be an entrepreneur who resides in Bangkok.
5. Parties’ Contentions
(i) The Complainant’s trademark “real” is well known in Germany and throughout the world. There are numerous warehouses and supermarkets trading under the Complainant’s trademark.
(ii)There seems to be no connection between the Respondent’s business and the Domain Name. It is unlikely that Respondent has any legitimate interests in respect of the Domain Name. The Respondent has also applied for other domains, which the Complainant has trademark rights for, e.g. <active.biz>.
(iii)Circumstances indicate that the Respondent registered the Domain Name to either disrupt the business of a competitor or to attract commercial gain from the Complainant’s famous trademark. The Domain Name was registered in bad faith.
The Response exhibits an unsworn declaration by the Respondent, which states:
(i)I registered <real.biz> because “real” it is a shortened version of “real estate”. I registered real.biz to use for a real estate web site.
(ii)The <real.biz> web site will offer real estate news, information on buying and selling real estate, a real estate agent directory, and related products and services, such as movers and financing.
(iii)I have developed a preliminary web site at “http://18.104.22.168/dev/real/index.html”. A completed site will be hosted at the <real.biz> URL once this matter is resolved and the name is taken off hold.
(iv)I did not register <real.biz> to sell to Complainant, to prevent Complainant from reflecting its mark in a corresponding domain name, to disrupt Complainant’s business or to confuse consumers.
(v)I have not applied to register the domain name <active.biz>.
C. Complainant’s Further Submission
The Complainant has lodged a further submission, which the Panelist has decided to take into account. It states:
(i)Complainant does not agree to Respondent’s opinion that it has a legitimate interest in the Domain Name. Respondent makes no indication of a commercial interest in the Domain Name. Respondent does not even seem to use “real” as a name in commerce, except in the combination “real estate”, which is not similar to “real”. It is expressly denied that “real” is short for “real estate”.
(ii)The quoted web site is not in use yet and makes no reference to the Domain Name. As far as Complainant can judge from the preliminary web site “real estate”, Respondent links to news articles under “http://22.214.171.124/dev/real/news.html”, which have nothing to do with the business of an estate agency.
(iii)Respondent claims to be an entrepreneur residing in Bangkok, Thailand. Complainant could not find any information on the Respondent. Complainant searched for Respondent in various search machines on the internet and was not even able to find the Respondent in one of the biggest Thai search engines SIAMGURU. As there is and was no information available on the Respondent, the Complainant had to make assumptions about the Respondent’s intentions in registering the Domain Name. It still assumes that the Domain Name was registered in bad faith, as it is still not clear, why especially <real.biz> is of interest to the Respondent.
(iv)Apart from its registered company name, Complainant owns the domains “http://www.real.de” and “http://www.real.pl”.
6. Discussion and Findings
According to paragraph 4(a) of the STOP Policy, the Complainant must prove that:
(i) The Domain Name is identical 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 Domain Name has been registered or is being used in bad faith.
There is no doubt that the Domain Name is identical to the trade mark “REAL” in which the Complainant has rights, and that the Complainant has established (i).
While it may well be the case that the Complainant enjoys a considerable reputation and goodwill in the trade mark REAL in its area of business, the word “real” is prima facie non-distinctive, and there is no evidence before the Panelist to suggest that the word has acquired a secondary meaning such as to entitle the Complainant to claim exclusive rights outside its own area of business. Nor is there any evidence to suggest that the Respondent had any knowledge of the existence of the Complainant’s business. The Complaint is defective in not providing any evidence which demonstrates that the Respondent has no legitimate interests in the Domain Name and that he has been acting in bad faith.
The finding that the Complainant has failed to establish either of elements (ii) or (iii) above is sufficient for dismissing this Complaint.
However, the Panelist has been informed that there has been a further STOP Complaint lodged against the Domain Name. In such circumstances, paragraph 4(l) of the STOP Policy requires the Panelist to decide, in accordance with the criteria there set out, whether to allow any further challenges. Having decided that the Complainant has failed to establish its case, two options are open to the Panelist, as set out in paragraph 4(l)(ii)(2) and (3) of the STOP Policy.
“2. In the event that you [i.e. the Respondent] demonstrate that you have legitimate rights to the domain name, the Panel will dismiss the complaint, and decide that no subsequent challenges under this Policy against the domain name(s) that is/are the subject of the Panel’s decision shall be permitted.
3. In the event that you do not, or are unable to demonstrate legitimate rights to the domain name(s), and the Complainant is unable to demonstrate either (a) it has legitimate rights, or (b) the domain name(s) was/were registered in bad faith, the Panel will dismiss the complaint, and decide that subsequent challenges under this Policy against the domain name(s) that is/are subject of the Panel’s decision shall be permitted. Such challenges under this Policy, however, may not be brought by the same Complainant.”
While the Response cites decisions from 39 other domain name disputes, it contains no relevant factual evidence other than that recited in paragraph 5B above. Although the Respondent has expressed an intention to use the Domain Name, the Panelist is not satisfied that the Respondent has so clearly demonstrated that he has “legitimate rights” to the Domain Name. Accordingly it is appropriate to order that subsequent challenges to the Domain Name under the STOP Policy shall be permitted.
The Complaint is dismissed.
In accordance with STOP Policy paragraph 4(l)(ii)(3), the Complainant having failed in the Complaint and the Respondent having not proved to the satisfaction of the Panel that he has legitimate rights in respect of the Domain Name, the Panel orders that subsequent challenges to the Domain Name under the STOP Policy shall be permitted.
Dated: July 26, 2002