uni-konstanz.com

WIPO Arbitration and Mediation Center

The Complainant in this administrative proceeding is the University of Konstanz, Federal Republic of Germany (F.R.G.) ("Complainant"). The Complainant is a corporate body fully organized under the laws of the F.R.G.

Complainant's authorized representative is Mr. Jens Buecking, Attorney at law, Emmert Schurer Buecking law firm, Neckarstrasse 86, D-70190 Stuttgart, F.R.G.

Respondent in the Complaint of June 8, 2001, and August 25, 2001, was uni-konstanz.com/[email protected], Prala 8, Bolivia, ch 31235, BO ("First Respondent"), which according to WIPO's notification to the Complainant on June 16 and 25, 2001, abandoned the registration.

Pursuant to the Registrar's WHOIS database, the Registrant now is uni-konstanz.com/[email protected], 702 Ave Plaza, Leon, LE 32700, NI (Nicaragua) ("Respondent").

The domain name at issue is <uni-konstanz.com> ("Domain Name"), registered with Network Solutions, Inc. (NSI6-DOM), 505 Huntmar Park Drive, Herndon, VA 20170-5142, USA ("Registrar").

A Complaint, pursuant to the Uniform Domain Name Dispute Resolution Policy, approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on the same date ("Rules), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on June 5,2001, in hardcopy, and was received on August 8, 2001, by e-mail ("Complaint").

The Acknowledgement of Receipt of the Complaint was submitted to the Complainant by the WIPO Center on June 9, 2001. On the same day, a Request for Registrar Verification was transmitted to the Registrar. On June 13, 2001, the Registrar sent an e-mail to the WIPO Center saying that the disputed Domain Name was deleted for non-payment of fees on June 6, 2001.

On July 11, 2001, Complainant sent an e-mail to the assigned WIPO case manager stating that the Domain Name was free for a couple of hours only, has been occupied by another "snapper machine", and is now owned by the Respondent. A second Request for Registrar Verification was transmitted to the Registrar on July 24, 2001, and the new owner of the Domain Name as set forth in Complainant's e-mail was verified. On July 25, 2001, the assigned WIPO case manager asked the Complainant, by e-mail, to amend accordingly the original Complaint.

The Amended Complaint was sent to the WIPO on August 8, 2001, in hardcopy, and was received on August 1,2001, by e-mail ("Amended Complaint").

A Formal Requirements Compliance Checklist was completed on August 8, 2001, without recording any formal deficiencies.

A Notification of Complaint and Amended Complaint and Commencement of Administrative Proceeding ("Commencement Notification") was transmitted to the Respondent on August 9, 2001, setting a deadline of August 29, 2001, by which the Respondent could file a Response ("Response"). Due to a clerical error of the WIPO Center the courier did not deliver to the Respondent the official notification documents forwarded by the WIPO Center. That is why the WIPO Center issued a Re-Notification of Complaint and Amended Complaint and Commencement of Administrative Proceeding on August 22, 2001, expanding the deadline for the Response until September 11, 2001.

The Complaint and Amended Complaint were sent, according to paragraph 2 (a) (i) of the Rules, by courier, to the address of the Domain Name holder, as well as to the technical, administrative and billing contacts as shown in the Domain Name's registration data. In addition, the Complaint was sent by e-mail to the e-mail addresses mentioned as technical, administrative and billing contacts, as well as to [email protected] according to paragraph 2 (a) (ii) (A) and (B) of the Rules. The registration data do not include information on a fax number of the Respondent. Nor did the Respondent indicate any preferred notification address or fax number. Although it is on record that the courier package to Respondent was returned to shipper, the WIPO Center has employed reasonably available means calculated according to paragraph (2) (a) of the Rules. It is therefore discharged of the responsibility to achieve actual notice to Respondent.

On September 24, 2001, the WIPO Center notified the Complainant and the Respondent that the Respondent has failed to comply with the deadline for the submission of the Response. According to paragraph 5 (e) of the Rules, the Panel will, as a consequence, decide the dispute based upon the Complaint and Amended Complaint.

Complainant requested a single-member panel. Since Respondent failed to submit a Response, the WIPO Center invited the undersigned to serve as sole panelist in Case No. D2001-0744 ("Panelist"), and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence which was duly signed and returned to the WIPO Center on October 2, 2001.

The WIPO Center transmitted to the parties on October 4, 2001, a Notification of Appointment of Administrative Panel and Projected Decision Date as of October 18, 2001. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.

The following facts and statements appear from the Complaint and Amended Complaint which have not been contested by Respondent:

- The Complainant, known as "Universität Konstanz," or, in short, "Uni Konstanz," is the famous German University of the City of Konstanz. The University is internationally well-known and held in high repute. The University holds the national domain name <uni-konstanz.de>.

- The Complainant was informed that the Respondent had registered <uni-konstanz.com> in July 2001.

Complainant contends that:

- the Domain Name is identical to the name by which the complainant is known internationally and in which the Complainant has statutory rights in Germany; and

- the Respondent has no rights or legitimate interests in respect of the Domain Name; and

- the Domain Name was registered and is being used in bad faith, and

- the Domain Name should be transferred to the Complainant.

Additional respective contentions of the Complainant may be contained in the following discussion and findings.

As mentioned above, Respondent has been notified in accordance with paragraph 2 (a) of the Rules, but failed to submit a Response in accordance with the requirements under the Policy.

Paragraph 4 (a) of the Policy directs that the Complainant must prove each of the following:

"(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and used in bad faith."

According to paragraph 4 (a)(i) of the Policy, the Complainant must prove a confusing similarity of the Domain Name to a trademark or service mark. It is the clear language of the present UDRP Policy that this administrative proceeding does apply to disputes involving such trademarks or service marks only. They represent the lowest internationally accepted standards in decisions concerning domain name disputes. Holders of rights on identifiers other than trademarks or service marks are referred to the courts. (See The Recognition of Rights and the Use of Names in the Internet Domain Name System, Report of the Second WIPO Internet Domain Name Process, September 3, 2001, http://wipo2.wipo.int, at 138, in the following "Final Report", at 21 et seq. and 138).

Accordingly, in WIPO Case D2000-0025, SGS Société générale de surveillance S.A. v. Inspectorate <sgs.net> and <sgsgroup.net>, in which the complainant alleged that the disputed domain name was identical to the tradename of a subsidiary of the complainant, the panel stated: "The Panel considers that the Policy and Rules refer only to identity or similarity to trademarks and service marks in which complainant has rights. No reference is made in the Policy and Rules to tradenames in which a complainant has rights. ... So, the Panel is not allowed to examine these [the complainant's] contentions in order to determine whether the requirement set out in paragraph 4 a (1) of the Policy has been met, ..." In WIPO Case D2000-0638Manchester Airport PLC v. Club Limited <manchesterairport.com>, the complainant based its claim on unregistered rights in the name "Manchester Airport" with the basic argument that the complainant has a significant reputation throughout the UK and worldwide. The three-member Administrative Panel held that the existence of a trademark or service mark is a necessary prerequisite and the complainant failed to prove such trademark or service mark.

The Panelist could therefore at the moment only decide in favor of the Complainant if there was satisfactory proof of a trademark or service mark held by the Complainant. The Complaint does not specify the Complainant's "statutory rights in Germany" on "Universität Konstanz" which could equal trademark protection, and therefore fails to comply with the first prong of the Policy's paragraph 4 (a) test. Since the prongs of this test need to be cumulatively proven, there is no need to discuss Respondent's legitimate interests in respect of the Domain Name and/or Respondent's good or bad faith.

While the Panel is aware of the decisions that were taken in the University of Stuttgart cases, which, incidentally, preceded the issuance of the Second WIPO Report, the Panel notes that most comparable decisions were based on the existence of proven trademark rights.

The Panelist agrees that the narrow scope of the Policy can be very unsatisfactory if a person registers a domain name, using an identifier in which that person has no genuine interest, at the same time preventing others from making a valid use. And yet, the Panelist does not feel competent to expand the scope of the administrative proceeding to identifiers other than trademarks and service marks which are explicitly mentioned in the present Policy. The question, whether and how to protect such identifiers from "cybersquatting," is addressed by the Second WIPO Internet Domain Name Process initiated by WIPO at the request of the Member States of WIPO. In its Final Report cited above submitted to the Assemblies of Member States of WIPO at their meeting from September 24 to October 3, 2001, WIPO examines the question of how to deal with such cases involving, especially, international nonproprietary names (INNs) for pharmaceutical substances, names and acronyms of international intergovernmental organizations, personal names, geographical identifiers, and trade names (for an overview see Final Report). It is now up to the international community whether measures are to be taken in this regard.

In view of the circumstances and facts discussed above, the Panelist decides that the Complainant did not prove to be the owner of a trademark or service mark. As a consequence, the Panelist concludes according to paragraph 15 (e) of the Rules that the dispute is not within the scope of paragraph 4 (a) of the Policy in force.

This holding does not in any way prejudice proceedings commenced before the courts according to paragraph 4 (k) of the Policy.

Bernhard F. Meyer-Hauser
Sole Panelist

Dated: October 18, 2001