SUNDAY, 17 FEBRUARY 2008
The WIPO arbitration panel has ruled that the domain name "4711.org" had been registered and used in bad faith and ordered that the domain be transferred to its legitimate owner Mäurer + Wirtz GmbH & Co. KG, Germany, the proprietor of numerous trade mark registrations for the mark "4711".
The complainant, Mäurer + Wirtz GmbH & Co. KG, is is a German company registered with the commercial register of Aachen, Germany, which has been active in the market of perfumes and perfumeries for more than 150 years and is well known in Germany. In January 2007 the complainant acquired the “4711” business from Mülhens GmbH & Co KG and as a part of this deal the seller transferred the full title and interest over numerous trade marks to the complainant. This included more than thousand trade mark registrations for the mark “4711” globally. The domain "4711.org" was first registered on December 27, 2003, and subsequently acquired by Respondent, Lajos Kiss, Delux Befektetes, Hungary, on July 15, 2007.
Assen Alexiev, acting as sole panelist ruled that the domain "4711.org" had been registered and used in bad faith:
"In the present proceeding, Respondent did not itself register the Domain Name, rather, it is only a transferee. That is the reason why the doctrine of “extension” can be invoked here, that is, that the term “registration” extends beyond the original act of registration and covers subsequent acquisitions of the Domain Name. Thus, Policy, paragraph 4(b)(i) specifically refers to circumstances in which Respondent has registered or has acquired a domain name, and there are prior Panel decisions in which it has been held more generally that “registration” extends to subsequent acts of acquisition. BWR Resources Ltd v. Waitomo Adventures Ltd., WIPO Case No. D2000-0861, Motorola, Inc. v. NewGate Internet, Inc. WIPO Case No. D2000-0079, and Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406. Therefore, the acquisition by a party of a domain name amounts to a new registration, and is evaluated for the purposes of the Policy by application of the same criteria. Complainant’s trade mark “4711” and the Eau de Cologne produced under this trademark is widely popular among consumers. Respondent acquired the Domain Name, having no rights or legitimate interests in it, and only days after its previous registrant received the cease and desist letter by Complainant. These facts support a finding, uncontroverted by any evidence in the case file, that Respondent had knowledge of Complainant’s trade mark and associated goodwill, as well as of Complainant’s claims in relation to the Domain Name at the time of its acquisition... In the light of this finding, and taking into account the commercial nature of the website linked to the Domain Name and the lack of any relation of this content to Complainant ... the Panel finds that Respondent acquired the Domain Name in knowledge of Complainant and with the intent to secure it from the claims of Complainant. Taking into account the content of the website linked to the Domain Name and the usual practices in the Internet such links to be provided against payment, the Panel finds that Respondent’s other purpose in acquiring and using the Domain Name was to attract, for commercial gain, Internet users to this website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website and the products on this website. This constitutes bad-faith registration and use of the disputed Domain Name under Policy, paragraph 4(b)(iv). Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xingdong, WIPO Case No. D2003-0408."
Case reference: Mäurer + Wirtz GmbH & Co. KG v. Lajos Kiss, Delux Befektetes
Case No. D2007-1696 of 8 February 2008