WIPO-PANEL: verfassungschutz.org

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bundesrepublik Deutschland (Federal Republic of
Germany) v. RJG Engineering Inc.

Case No. D2001-1401

1. The Parties

Complainant is Bundesrepublik Deutschland (Federal Republic
of Germany), represented by the “Bundesminister des Inneren”
(Federal Minister of the Interior), in turn represented by
the President of the “Bundesverwaltungsamt”. Complainant’s
address is
Barbarastrasse 1, 50735 Köln (Cologne), Germany.
Complainant’s representative in this case is RA Johannes
Zindel, RAe Jones
Day Reavis & Pogue, Grueneburgweg 102, 60323 Frankfurt am
Main, Germany.

Respondent is RJG Engineering Inc, PO Box 6426, Lincoln, NE
68506, United States of America. Administrative Contact,
Technical
Contact and Zone Contact is Mr. Gerhard Lauck.

2. The Domain Name and Registrar

The domain names at issue are ,
,
and .

The Registrar is Signature Domains Inc., 4021 Laguna St,
Miami, Florida 33146, United States of America.

3. Procedural History

The World Intellectual Property Organization Arbitration and
Mediation Center (the Center) received a Complaint from
Complainant on
November 27, 2001. An Acknowledgement of Receipt of the
Complaint was issued on November 29, 2001.

Having verified that the Complaint complied with the formal
requirements, the Center issued, on December 7, 2001, a
Notification of
Complaint and Commencement of Administrative Proceeding that
was notified to the parties, the Registrar and ICANN. It was
communicated to Respondent by post/courier (with
enclosures), by fax (without enclosures) and by e-mail to
and to “postmaster” of the various
domain names at issue. The e-mails to
and to
could not be delivered. The fax transmission went through
and the
courier were delivered.

Having received no Response from Respondent, the Center
issued a Notification of Respondent Default on January 3,
2002, which
was communicated by e-mail to the parties.

Upon request, the Center received a Registrar Verification
on December 6, 2001. In that Verification, the Registrar
confirmed that

– a copy of the Complaint had been received by the Registrar

– Signature Domains Inc. is the Registrar of the domain
names at issue, and that Respondent is the current
Registrant of those
domain names

– the Uniform Domain Name Dispute Resolution Policy applies
to the domain names

– the current status of the domain names is: Registrar Lock

– English is the specific language of the registration
agreement as used by the Registrant for each domain name,
and

– the domain name Registrant in its Registration Agreement
has submitted to the jurisdiction at the location of the
principal office of
the Registrar for court adjudication of disputes concerning
or arising from the use of the domain names.

In respect of all the domain names at issue the Registrar
Verification indicated as Registrant “RJG Engineering, Inc,
PO Box 6426,
Lincoln, NE 68506, United States” As Administrative Contact,
Technical Contact and Zone Contact was in respect of all the
domain
names at issue indicated “Lauck, Gerhard” with the same
mailing address as for Respondent and with e-mail address
; telephone and telefax numbers also
indicated.

The Center invited Mr. Henry Olsson to serve as Sole
Panelist in the case and received, on January 10, 2002, Mr.
Olsson’s
Statement of Acceptance and Declaration of Impartiality and
Independence. The same day the Center appointed Mr. Olsson
as Sole
Panelist and issued a Notification of Appointment of
Administrative Panel and Projected Decision Date, which was
communicated to
the Parties. The Projected Decision Date was January 24,
2002.

The Sole Panelist considers that the Administrative Panel
was properly constituted and appointed in accordance with
the Rules and
the WIPO Supplemental Rules.

On the basis of the documents available relating to the
notifications to Respondent, the Panel concludes that the
Complaint has
been duly communicated to Respondent and that there is, from
this point of view, no obstacle to considering the case.

4. Factual Background

“Bundesinnenministerium” is the abbreviated German
expression for “Ministry of the Interior”. Similarly,
“Verfassungsschutz” is the
abbreviation for the “Office for the Defence of the
Constitution”. Both are public authorities of the Federal
Republic of Germany.

No particular information is available concerning
Respondent’s activities (in addition to what is submitted by
Complainant and
referred to below).

In accordance with Paragraph 3(b)(xiii) of the Rules,
Complainant agrees to submit, only with respect to any
challenge that may be
made by Respondent to a decision by the Administrative Panel
to transfer the domain name that is the subject of the
Complaint, to
the jurisdiction of the courts at Miami, Florida, United
States.

5. Applicable Rules

A. Complainant

First, Complainant states that the Federal Republic of
Germany has not registered its marks/names but has common
law service
mark rights to the notions “bundesinnenministerium” and
“verfassungsschutz.” Those are well known in Germany to
designate what
is in English “The Ministry of the Interior” and “Office for
the Defence of the Constitution.” Both authorities render
services, such as
providing public information, under those names. According
to Complainant, those abbreviations therefore meet the
standards of
Article 4, Paragraph 2, of the German Trademark Act from
which provision follows that rights in trademarks and
service marks may
be established not only by registration but also by active
use in public. Consequently, the notions
“Bundesinnenministerium” and
“Verfassungsschutz” enjoy trademark protection in the
Federal Republic of Germany. In, for example, WIPO Case
D2001-0470 was
made clear that a mark does not need to be registered in
order to come within the scope of paragraph 1 of the Policy.

Complainant contends that the disputed domain names are
obviously identical to those service marks.

Furthermore, Complainant contends that Respondent has no
rights or legitimate interests in respect of the disputed
domain names
and does not conduct any bona fide business or makes any
other legitimate non-commercial use of the disputed domain
names. In
fact, according to Complainant, Respondent directs, through
hyperlinks, Internet traffic to a website of a US Nazi Group
operated by
Mr. Gerhard Lauck who is the President of Respondent.
Respondent has registered the domain name
.
Complainant has submitted copies of the contents of the
website operated under that domain name. Due to action by
Complainant
the provider of the domain name has
“shut the doorway.” The disputed domain name
does not, according to
Complainant, seem to be in use.

Complainant contends that Respondent has registered, and is
using, the disputed domain names in order to deceive
Internet users
and mislead Internet traffic to the above-mentioned
home-page the contents of which is illegal under German law.
According to
Complainant, Respondent indicates on his website that the
disputed domain names will probably only be working for a
short time
and has, on another website given instructions on how to
save blocked addresses. According to a printout submitted by
Complainant: this other webpage is www.diegruenen.net; and
the Panel notes that another WIPO Panel issued a decision –
against
the same Respondent as in the present case – in the relation
to the domain name < diegruenen.net>.

On the basis of these contentions, Complainant requests that
the Administrative Panel issue a decision that the disputed
domain
names be transferred to Complainant.

B. Respondent

Respondent who has, as indicated above, been duly
communicated the Complaint, has not submitted any Response
and is in
Default.

6. Discussions and Findings

Paragraph 15 of the Rules prescribes that the Panel shall
decide a Complaint on the basis of the statements made and
documents
submitted and in accordance with the Policy, the Rules and
any principles of law that it deems applicable.

In the case of Default by a Party, Paragraph 14 of the Rules
prescribes that if a Party, in the absence of exceptional
circumstances,
does not comply with a provision of, or a requirement under,
these rules, the Panel shall draw such inferences therefrom
as it
considers appropriate. In this case Respondent has not
submitted any Response and has consequently not, despite the
opportunity
given, contested any of the contentions by Complainant. The
Panel will therefore have to operate and consider the case
on the basis
of the factual circumstances contained in the Complaint and
the documents available to support those contentions.

From the Registrar Verification it follows that the Policy
is applicable to this case. Consequently, Respondent is
required to submit
to a mandatory administrative proceeding as now initiated in
respect of the domain names at issue.

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

– that the domain names registered by Respondent are
identical or confusingly similar to a trademark or a service
mark in which
Complainant has rights

– that Respondent has no rights or legitimate interests in
the domain names, and

– that the domain names have been registered and are being
used in bad faith.

In the following parts of this decision the Panel discusses
each of those elements.

Identity or Confusing Similarity

Complainant has, according to Paragraph 4a(i) of the Policy,
to prove that the domain names at issue are identical or
confusingly
similar to a trademark or a service mark in which
Complainant has rights.

The domain names at issue are ,

and
.

The first question is whether the notions
“bundesinnenministerium” and “verfassungsschutz” enjoy
protection as service marks under
German trademark law.

Provisions on the protection of trademarks in the Federal
Republic of Germany are contained in the Law on the
Protection of
Trademarks and Other Signs (Trademark Law) of October 25,
1994. That Law in English translation is published, as last
amended by
a Law of July 16, 1998) in WIPO’s collection Intellectual
Property Laws and Treaties, of April 1999.

The notion of a trademark for the purposes of the Law is
defined in Article 3. item 1 of the Law where it is
prescribed: “Any signs,
particularly words, including personal names, designs,
letters, numerals, sound marks, three-dimensional
configurations, including
the shape of goods or their wrapping as well as other
packaging, including colors or combinations of colors, which
are capable of
distinguishing the goods or services of one undertaking from
those of another undertaking, may be protected as
trademarks”

It should be mentioned that the definition of a trademark in
German law obviously corresponds with the definition of the
same
concept included in Article 2 of the European Directive of
21 December 1988 to approximate the laws of the Member
States relating
to trademarks (89/104/EEC), which, however, only deals with
registered trademarks.

Article 4 of the German Trademark Law contains provisions on
the coming into existence of trademark protection. That
Article
prescribes: “Trademark protection shall accrue

1. by registration of a sign as a trademark in the Register
kept by the Patent Office

2. through the use of a sign in the course of trade insofar
as the sign has acquired a secondary meaning as a trademark
within the
affected trade circles; or

3. by notoriety as a trademark within the meaning of Article
6bis of the Paris Convention for the Protection of
Industrial Property
(Paris Convention)”.

According to the above-mentioned Article 3 of the German
Trademark Act a trademark can consist of “any signs,
particularly
words…..” that have a distinctive character. The Panel
concludes that in fact both the word
“bundesinnenministerium” and the word
“verfassungsschutz” are signs which have a distinctive
character and may per se be signs that could constitute a
trademark.

The Panel furthermore concludes that nothing prevents a
public authority from being the holder of a trademark right
as such an
authority would be covered by the word “undertaking” as a
designation for those who can be holders of trademark rights
provided that
it is engaged in activities such as offering of goods or
services.

The Panel also concludes that the notions
“Bundesinneministerium” and “Verfassungsschutz” are well
known in the Federal
Republic of Germany as representing the Ministry and the
Office in question and that the notions indicate a clear
connection with the
activities of those two bodies.

The main question in this case is rather whether the two
notions can be said to be used “in the course of trade” as
required for
protection without registration under Article 4, item 2 of
the German Trademark Law. In this respect Complainant offers
little
information, but refers mainly to the rendering of services
such as providing public information under the names
“Bundesinnenministerium” and “Verfassungsschutz” The Panel
has, however, to assume that the services offered by the
Ministry in
question correspond to those offered by similar Ministries
in other countries. On the other hand the activities of the
“Verfassungsschutz” are more unclear. The Panel therefore
has to base its considerations mainly, but not exclusively,
on whether
the issuing and dissemination of publications and other
public information under the notions in question is
sufficient to conclude
those are being used “in the course of trade.” In this
respect the Panel finds that these activities are a form of
trade directed towards
the German people and that the notions, because they are, as
found by the Panel, well known in Germany have come to be
associated with the services offered by the Ministry of the
Interior and the Office for the Defence of the Constitution.
Consequently,
the Panel considers that the notions at issue have been used
as signs in the course of trade and have thus acquired a
secondary
meaning as trademarks/service marks in the minds of the
German population, i.e. the “affected trade circles.”

On the basis of this conclusion the Panel finds it to be
established, for the purposes of this dispute, that the
notions
“bundesinnenministerium” and “verfassungsschutz” enjoy
trademark protection under Article 4, item 2 of the German
Trademark
Law.

The Panel agrees with the Complainant to the effect that a
trademark or a service mark need not to be registered in
order for the
Policy to apply.

The domain names at issue contain the trademarks/service
marks with the addition of the notions “com.” “org.” or
“net.” These are,
in the view of the Panel, insignificant distinctions that do
not remove the likelihood of confusion.

These considerations lead the Panel to the conclusion that
there exists a confusing similarity between the domain names
at issue
and Complainant’s protected trademarks/service marks.

The Panel reaches the above conclusion on the record of the
present case. It has, however, taken note of previous WIPO
decisions
that directly or indirectly address the issues discussed
above. Considering their circumstances, the Panel has in
particular taken
note of the decisions in favour of complainants reached in
the following cases: Government of Canada v. David Bedford
a.k.a.
DomainBaron.com (WIPO case no. D2001-0470),
Skattedirektoratet v. Eivind Nag (WIPO case no. D2000-1314),
and The State of
the Netherlands v. Goldnames Inc. (WIPO case no.
D2001-0520).

Rights or Legitimate Interests

In this respect Complainant has, according to Paragraph
4a(ii) of the Policy, to prove that Respondent has no rights
or legitimate
interests in the domain names at issue.

To support its contentions in this respect, Complainant has
invoked a number of circumstances, supported by documentary
evidence, principally that Respondent, taking advantage of
the public knowledge of the notions “bundesinnenministerium”
has
redirected Internet traffic to the website operated by Mr.
Lauck who is also the President of Respondent.

Despite the opportunity given, Respondent has not contested
or commented upon the contentions by Complainant.

On the basis of these circumstances the Panel is satisfied
that the evidence submitted by Complainant sufficiently
supports its
contention that Respondent has no rights or legitimate
interests in the domain names at issue.

Without entering into a discussion whether and how a
different record might have justified different findings,
the Panel notes that the
facts before it clearly indicate that the domain names at
issue are used to include information that could be argued
to serve a
purpose of “free speech”; indeed, again, no argument to this
effect has been advanced by the Respondent.

Registration and Use in Bad Faith

In this respect, Complainant has, according to Paragraph
4a(iii) of the Policy, to prove that the domain names have
been registered
and are being used in bad faith. Paragraph 4.b then sets out
the circumstances which in particular but without limitation
shall, if
found by the Panel to be present, be considered as evidence
of registration and use of a domain name in bade faith.

Complainant has contended that Respondent has registered the
domain names at issue with the intent to deceive Internet
users and
mislead Internet communications intended for Complainant to
a home-page with criminal contents under German law.
Complainant
has also contended – and supported its contentions in this
respect by written evidence as referred to above – that
Respondent on its
website states that the disputed domain names will probably
only be working for a short time and on another website
gives
instructions on how to save blocked addresses. In this
respect the Panel notes at on the website “NSDAP/AO”
contains a notice
which in German reads: “Wichtiger Hinweis. Wer diese Website
durch eine “alternative url” wie z.B

oder erreicht hat, soll
sicherheitshalber unsere “wirkliche” URL-Adresse notieren:
notieren! Wir wissen aus
Erfahrung, dass eine derartive “alternative url” vielleicht
nur sehr
kurtzfristig funktioniert.- Siehe alternative url.” In
English the last sentence reads: “Alternative url” addresses
sometimes suddenly
cease to function. Se alternative url.” The Website in
question contains mainly information on and advertisements
for various kinds of
Nazi activities.

As is the case in respect of the other contentions by
Complainant, Respondent has not, despite the opportunity
given, contested or
commented upon the contentions by Complainant

On the basis of these circumstances the Panel is satisfied
that the evidence submitted by Complainant sufficiently
supports its
contention that Respondent has in fact registered the domain
names at issue, and is using them, in bad faith.

Conclusions

On the basis of the foregoing, the Administrative Panel
concludes that it has been established that the domain names
at issue are
confusingly similar to the trademarks/service marks in which
Complainant has rights, that Respondent has no rights or
legitimate
interests in the domain names at issue and that those domain
names have been registered and are being used in bad faith.

7. Decision

In accordance with Complainant’s request and with reference
to Paragraph 4.i of the Policy, the Panel requires that the
domain
names ,
,
and
be transferred to Complainant.

Henry Olsson Sole Panelist

Dated: January 23, 2002