Bretzel Ditsch GmbH from Mainz, Germany, represented by Horak Attorneys, Germany was found guilty of Reverse Domain Name Hijacking on the domain name Ditsch.com which was registered on June 28, 1998.
To the best of our knowledge this is the first RDNH finding of 2016 (although the decision was entered on December 24th but just published by WIPO today)
At some point the Bretzel Ditsch was offered the domain name for EUR 10,000 but they declined and started this UDRP.
The original decision was written in German and we used Google translate.
Here are the highlights of the one panel decision of Brigitte Joppich:
“”The complainant is the owner of several brands for the character “Ditsch” for baked goods, including Community trade mark No. 005361721 Ditsch, with priority on 20/09/2006 protection for goods and services in classes 30, 32 and 35 and on July 08, 2010, claimed has been registered, a Community trade mark no. 003090644 Ditsch which has claimed priority of 11 March 2004 protection in class 30 and registered on 04.11.2004, and the German trade mark No. 1168042 Ditsch that in with priority from 17 March 1990 protection Class 30 claims (hereinafter referred to as the DITSCH brands) and was registered on 16 November 1990 levels.
The Respondent has registered the domain name on June 28, 1998 and those used between 1999 and 2005 proven in connection with his business activities in the field of financial services.
In addition, the domain name will demonstrably served, among other things in connection with e-services for the business operations of the respondent as well as from family members.
Both the URL ditsch.com as well as the email address “[..] @ ditsch.com” can be found on the current letterhead and the company stamp of the respondent.
The presentation to the complainant is already inadequate to provide the necessary prima facie evidence, as the appellant at any point with the naming rights of the respondent to the name “Ditsch” and it usually following their own rights under paragraph 4 (c) in this case (ii) of the Directive dealing. Moreover, the complainant also conceals the fact that the Respondent used the domain name prior to 2005 in connection with his business, and thus may rights under paragraph 4 (c) (i) of the Directive has acquired. A knowledge of this fact can be subordinated to the complainant, since it prints from the callable under “www.archive.org” Website Archive submits with regard to the non-use of the domain name, in which, as the printouts submitted as Annex 5 by the Respondent show the use of the domain name has been documented before of 2005.
With regard to the alleged bad faith conduct of the respondent already supports the argument by the appellant is not the adoption of a bad faith registration.
The respondent does not claim to what extent and in which geographic area, the DITSCH brands were used at the time of registration of the domain name in 1998. It is against this background already questionable whether the Respondent the DITSCH brands at the time of registration of the domain name could ever know. Since the Respondent beyond itself is namesakes, the allegation that the domain name was registered in bad faith in knowledge and in terms of DITSCH brands appears more than questionable.
Moreover, the appellant has not demonstrated that the Respondent is accused of bad faith behavior.
It concerns with the Respondent is not a competitor of the complainant and the domain name has not been used in the infringing manner, but, among other things, in connection with e-services for the business operations of the respondent. This means that no non-use is (so-called. “Passive holding”), where that could be considered under strict conditions as bad faith use. Finally, the Respondent has not, as alleged by the complainant improperly offered, the domain name for EUR 10,000 for sale. Rather, such an offer was made on behalf of the appellant and not accepted by the Respondent.
In addition, the Panel comes to the decision that the complaint was submitted abusive and this is a case of so-called. “Reverse Domain Name Hijacking” (RDNH) and thus to an abuse of process. After paragraph 15 (e) of the Rules of Procedure, a case of RDNH is given when the complaint was brought in bad faith is.
It is recognized by the case law of the UDRP complaint panels that alone does not automatically result in the defeat of a complainant’s an affirmation of RDNH. Rather, it must be, for example, demonstrated that the complainants were the rights of the respondent or known that apparently given no bad faith. RDNH was in the past, inter alia, affirmed in cases where an applicant knew at the time the complaint was lodged or had to know that he can not prove at least one condition of the applicability of paragraph 4 (a) of the Directive or the Respondent has attempted the Panel misdirect by his lecture.
In the present case, the appellant represented by counsel,
– The simply not discussed her famous name rights of the respondent in the complaint, claiming that the Respondent can have no rights to the domain name,
– Denied that the Respondent has used the domain name in the past in connection with his business’s website,
– Denied that the Respondent uses the domain name in connection with e-services, of which the complainant no later than upon receipt of the letter of the Respondent of 19 December 2014 (Appendix 13 to the statement of defense) had positive knowledge, and
– With regard to the sale negotiations verifiably submitted incorrectly.