Spielwarenmesse eG of Nürnberg, Germany,  has lost its bid to grab the domain name spielwarenmesse.com which is ToyFair in German in a UDRP away from Frank Schilling’s Name Administration which was represented as always by John Berryhill.

Here are the relevant fact and findings by the three member panel:

The Complainant, Spielwarenmesse eG, is a German cooperative which has been organising a trade fair for the toy industry on an annual basis since 1950.

On March 31, 2006, the Complainant filed the German trademark application No. 306213990 for SPIELWARENMESSE, for goods and services in classes 16, 35 and 41.  However, the German Patent and Trademark Office rejected the application on the ground of lack of distinctive character.  In addition, it was of the opinion that the mark was a descriptive indication to be kept available for general use.

On September 28, 2011, the Complainant filed again a German trademark application for SPIELWARENMESSE this time designating exclusively “organization of trade fairs in the field of toys” in class 35.  That application No. 30 2011 053 981 was again rejected by the German Patent and Trademark Office.  However, the German Federal Patent Court annulled that decision by order dated September 12, 2012.  Consequently, that trademark was finally registered on January 7, 2013.

On May 23, 2013, the Respondent filed a petition for cancellation of said trademark registration No. 30 2011 053 981 SPIELWARENMESSE with the German Patent and Trademark Office.

The Complainant also owns the Chinese trademark registrations No. 8187940 and No. 8187939 for SPIELWARENMESSE designating respectively classes 35 and 38 and filed on April 28, 2011.

The Complainant is the owner of a large number of domain names featuring the word “Spielwarenmesse”, including <spielwarenmesse.be>, <spielwarenmesse.cn>, <spielwarenmesse.co.uk>, <spielwarenmesse.co.za>, <spielwarenmesse.de>, <spielwarenmesse.eu>, <spielwarenmesse.com.mx>, <spielwarenmesse.in>, <spielwarenmesse.jp>, <spielwarenmesse-eg.com>.

 “Little is known about the Respondent, Name Administration Inc. (BVI).  It appears to be a company having significant domain name assets.  The Respondent describes itself as being a leading company in the field of search advertising through its large portfolio of common words and phrases.”

 “The Respondent has been the owner of the Domain Name <spielwarenmesse.com> since January 2002.  “

The Complainant has shown by various exhibits that its toy trade fair is one of the most important ones in this field.  

The Panel is therefore convinced that its fair has reached certain fame.

However, this is not (necessarily) the case for the use of the term “Spielwarenmesse” as to uniquely identify the respective fair of the Complainant.

 As the Complainant points out in various sections of its Complaint, its fair is promoted in Germany and abroad under the name “Spielwarenmesse International Toy Fair Nuremberg”.

 The Panel can therefore not conclude on the evidence that the Complainant has made intensive use of the designation “Spielwarenmesse” for the purposes of its toy trade fair.  

That conclusion would not be reversed even by recognizing rights under the first element of the UDRP to the Complainant’s cooperative name as this name appears to be used as its legal and corporate designation only and not for commercial and promotional purposes of the toy trade fair

As the Respondent has shown, its company engages in search advertising through its large portfolio of common words and phrases.  

This has been confirmed in at least two other administrative proceedings under the UDRP concerning the Respondent and quoted by the latter in its Response (DataServ, L.L.C. v. Name Administration Inc. (BVI), WIPO Case No. D2012-1538;  Visa Europe Limited v. Name Administration Inc. (BVI), WIPO Case No. D2010-1531).  

Although the Respondent as a professional domain name registrant may have had some opportunistic awareness of a certain value of the selected Domain Name, the Complainant has not shown that the Respondent was aware of the existence of the Complainant at the time (2002) it acquired the Domain Name and that it would have targeted at any point of time the Complainant’s toy fair in Nuremberg.

Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning.

The Panel has some doubts whether this criterion is fulfilled.  The Respondent uses the Domain Name in connection with subjects relating to toys, not to toy fairs or toy-industry-trade shows around the world.  It could therefore be argued that the Respondent is not using the term “Spielwarenmesse” in its genuine sense for the provision of pay-per-click links related to toy trade fairs;  indeed, it appears that the Respondent’s website is concerned solely with links related to the commercial sale of retail toy items.

However, as the Respondent is using the Domain Name at least in relation to toys and considering the other above-mentioned criteria as well as the absence of other specific evidence in this respect, the Panel finds that the Complainant has, on the balance, not shown that the Respondent lacks rights or legitimate interests in the Domain Name in the sense of the second criterion of the Policy.

C. Registered and Used in Bad Faith

For the sake of completeness, the Panel wishes to address also the third criterion under the Policy.

It is not impossible that a domain name which was registered before the registration of the relevant mark may nevertheless have been selected in bad faith.  One of the best-known cases is MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598, the “Madrid case”, wherein the respondent registered a number of domain names connected with the city of Madrid’s bid for the 2012 Olympic games.  The complainant did not have trademark rights in the relevant terms at the time of registration of the domain names, but since the respondent only selected those domain names with the knowledge of the complainant’s impending rights, the registrations were determined to have been undertaken in bad faith.  UDRP cases in this line include situations in which the relevant respondents registered domain names in light of impending commercial mergers, or where the respondent was otherwise known to have knowledge of the complainant’s mark.

In the present case however, there is no evidence showing that the Respondent had such knowledge of impending rights.  Quite to the contrary as the Complainant’s fair is not apparently promoted in Germany and abroad under the name “Spielwarenmesse” but under the term “Spielwarenmesse International Toy Fair Nuremberg”.

In 2002, when the Respondent acquired the Domain Name, no trademark for “Spielwarenmesse” was registered.  

In addition, when the Complainant contacted the Respondent in 2008, the Respondent after a due trademark search became aware that the Complainant’s trademark had been refused by the German Patent and Trademark Office.  

The Respondent had therefore no reason to believe that neither its registration in 2002 nor its use in 2008 would constitute a violation of the Complainant’s trademark rights.  

It was only by decision of September 12, 2012 that the German Federal Patent Court admitted the second registration of the mark SPIELWARENMESSE (after having reversed the previous second refusal by the German Patent and Trademark Office), this time for the restricted use in class 35 for “the organisation of commercial specialist fairs in connection with toys” (free translation).  Based on that decision, the respective trademark was registered on January 7, 2013.  Under these circumstances, it would not be appropriate to assume an attitude of bad faith registration of the Respondent.

In relation to the above mentioned decision, the Panel noted that the German Federal Patent Court only granted protection to the mark SPIELWARENMESSE as it considered it as having acquired distinctiveness in Germany and only in relation to specialists in the field of trade and manufacture of toys (p. 7 and 8 of the decision filed by the Complainant).  

It is also worth mentioning that the Court held that the designation “Spielwarenmesse” is a descriptive term and as such basically to be kept free.

The Panel therefore concludes that even in 2013, the trademark at stake was only distinctive in Germany and in relation to specialists in the field and could not be considered as sufficiently well-known abroad or outside the circle of the mentioned specialists, i.e. for the average Internet user.

As to the Complainant’s hint to the Respondent’s offer to sell the Domain Name, the Panel recalls that offering to sell a domain name which a respondent has a free and clear right to own is not objectionable.  As shown above, there are no other criteria which would lead to the assumption that the Respondent would not have been in possession of such a right.

Finally, the Panel notes that it finds it troubling that the Complainant has waited for almost a decade to file a complaint against the Respondent.  Without assessing whether this constitutes a case of laches, the Panel finds that this fact adds to the above mentioned circumstances, i.e. to conclude that no bad faith has been shown for the Respondent’s acts in relation to registration and use of the Domain Name.””