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					                WIPO Arbitration and Mediation Center


            real SB-Warenhaus Holding GmbH v. Anutarapun Pugdechat

                                Case No. DBIZ2002-00017

1.   The Parties

     The Complainant in this administrative proceeding is real SB-Warenhaus Holding
     GmbH, Korschenbroicher Str. 607, 41065 Moenchengladbach, Germany, represented
     by Eva Kessler, Schlueterstrasse 41, 40235 Duesseldorf, Germany.

     The Respondent in this administrative proceeding is Anutarapun Pugdechat of 89/159
     Prachanivate, 1 Chatujak, Bangkok 10900, Thailand, represented by
     Ari Goldberger Esq., Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003
     United States of America.

2.   The Domain Name and Registrar

     The Domain Name in this dispute is <> ("the Domain Name").

     The Registrar is OnlineNIC, Inc., United States of America.

3.   Procedural History

     The Complaint was received by WIPO Arbitration and Mediation Center ("the
     Center"), in electronic form on April 22, 2002, and a hard copy on April 25, 2002. On
     May 10, 2002, the Center asked the Complainant to amend the Complaint to comply
     with certain formal requirements. That amendment was delivered by e-mail on
     June 3, 2002. The Center has verified that the Complaint satisfies the formal
     requirements of the Start-up Trademark Opposition Policy ("the STOP Policy"), as well
     as the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ
     ("the WIPO Supplemental STOP Rules") relating thereto and that payment was
     properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

     On June 6, 2002, the Center notified the Respondent of the Complaint in the usual
     manner. On June 24, 2002, the Respondent’s attorney requested an extension of time
     of 20 days, owing to the exceptional number of STOP disputes in which he was
     involved. The Complainant’s representative, despite having taken 23 days to reply to

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     the Center’s purely formal request for amendment of the Complaint, refused to agree to
     any extension of time. The Center granted an extension to July 6, 2002. A Response
     was received by the Center on July 5, 2002, in electronic form, and on July 9, 2002, as
     a hard copy.

     The Panel was properly constituted. The undersigned Panelist submitted a Statement of
     Acceptance and Declaration of Impartiality and Independence, and is due to deliver his
     Decision by July 30, 2002.

4.   Factual Background

     (1)   The Domain Name was registered by the Respondent on March 27, 2002.

     (2)   The trade mark "REAL" in which the Complainant alleges it has rights has been
           registered in respect of a wide variety of consumer products. The Complaint
           identifies three German trade marks and two International registrations dating
           back as far as 1991.

     (3)   The Respondent is said to be an entrepreneur who resides in Bangkok.

5.   Parties’ Contentions

     A.    Complainant

           (i)    The Complainant's trademark "real" is well known in Germany and
                  throughout the world. There are numerous warehouses and supermarkets
                  trading under the Complainant's trademark.

           (ii)   There seems to be no connection between the Respondent's business and
                  the Domain Name. It is unlikely that Respondent has any legitimate
                  interests in respect of the Domain Name. The Respondent has also applied
                  for other domains, which the Complainant has trademark rights for, e.g.

           (iii) Circumstances indicate that the Respondent registered the Domain Name to
                 either disrupt the business of a competitor or to attract commercial gain
                 from the Complainant's famous trademark. The Domain Name was
                 registered in bad faith.

     B.    Respondent

     The Response exhibits an unsworn declaration by the Respondent, which states:

           (i)   I registered <> because “real” it is a shortened version of “real
                 estate”. I registered to use for a real estate web site.
           (ii) The <> web site will offer real estate news, information on buying
                 and selling real estate, a real estate agent directory, and related products and
                 services, such as movers and financing.
           (iii) I have developed a preliminary web site at
                 "". A completed site will be hosted
                 at the <> URL once this matter is resolved and the name is taken off

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          (iv) I did not register <> to sell to Complainant, to prevent Complainant
               from reflecting its mark in a corresponding domain name, to disrupt
               Complainant’s business or to confuse consumers.
          (v) I have not applied to register the domain name <>.

     (C) Complainant’s Further Submission

     The Complainant has lodged a further submission, which the Panelist has decided to
     take into account. It states:-

          (i)   Complainant does not agree to Respondent’s opinion that it has a legitimate
                interest in the Domain Name. Respondent makes no indication of a
                commercial interest in the Domain Name. Respondent does not even seem
                to use “real” as a name in commerce, except in the combination “real
                estate”, which is not similar to “real”. It is expressly denied that “real” is
                short for “real estate”.
          (ii) The quoted web site is not in use yet and makes no reference to the Domain
                Name. As far as Complainant can judge from the preliminary web site
                “real estate”, Respondent links to news articles under
                “”, which have nothing to do with
                the business of an estate agency.
          (iii) Respondent claims to be an entrepreneur residing in Bangkok, Thailand.
                Complainant could not find any information on the Respondent.
                Complainant searched for Respondent in various search machines on the
                internet and was not even able to find the Respondent in one of the biggest
                Thai search engines SIAMGURU. As there is and was no information
                available on the Respondent, the Complainant had to make assumptions
                about the Respondent’s intentions in registering the Domain Name. It still
                assumes that the Domain Name was registered in bad faith, as it is still not
                clear, why especially <> is of interest to the Respondent.
          (iv) Apart from its registered company name, Complainant owns the domains
                "" and "".

6.   Discussion and Findings

     According to paragraph 4(a) of the STOP Policy, the Complainant must prove that:

          (i)     The Domain Name is identical to a trademark or service mark in which the
                  Complainant has rights; and

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

          (iii)   The Domain Name has been registered or is being used in bad faith.

     There is no doubt that the Domain Name is identical to the trade mark "REAL" in
     which the Complainant has rights, and that the Complainant has established (i).

     While it may well be the case that the Complainant enjoys a considerable reputation
     and goodwill in the trade mark REAL in its area of business, the word “real” is prima
     facie non-distinctive, and there is no evidence before the Panelist to suggest that the
     word has acquired a secondary meaning such as to entitle the Complainant to claim
     exclusive rights outside its own area of business. Nor is there any evidence to suggest

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     that the Respondent had any knowledge of the existence of the Complainant’s business.
     The Complaint is defective in not providing any evidence which demonstrates that the
     Respondent has no legitimate interests in the Domain Name and that he has been acting
     in bad faith.

     The finding that the Complainant has failed to establish either of elements (ii) or (iii)
     above is sufficient for dismissing this Complaint.

     However, the Panelist has been informed that there has been a further STOP Complaint
     lodged against the Domain Name. In such circumstances, paragraph 4(l) of the STOP
     Policy requires the Panelist to decide, in accordance with the criteria there set out,
     whether to allow any further challenges. Having decided that the Complainant has
     failed to establish its case, two options are open to the Panelist, as set out in paragraph
     4(l)(ii)(2) and (3) of the STOP Policy.

           "2. In the event that you [i.e. the Respondent] demonstrate that you have
           legitimate rights to the domain name, the Panel will dismiss the complaint, and
           decide that no subsequent challenges under this Policy against the domain
           name(s) that is/are the subject of the Panel’s decision shall be permitted.

           3. In the event that you do not, or are unable to demonstrate legitimate rights to
           the domain name(s), and the Complainant is unable to demonstrate either (a) it
           has legitimate rights, or (b) the domain name(s) was/were registered in bad faith,
           the Panel will dismiss the complaint, and decide that subsequent challenges under
           this Policy against the domain name(s) that is/are subject of the Panel’s decision
           shall be permitted. Such challenges under this Policy, however, may not be
           brought by the same Complainant."

     While the Response cites decisions from 39 other domain name disputes, it contains no
     relevant factual evidence other than that recited in paragraph 5B above. Although the
     Respondent has expressed an intention to use the Domain Name, the Panelist is not
     satisfied that the Respondent has so clearly demonstrated that he has "legitimate rights"
     to the Domain Name. Accordingly it is appropriate to order that subsequent challenges
     to the Domain Name under the STOP Policy shall be permitted.

7.   Decision

     The Complaint is dismissed.

     In accordance with STOP Policy paragraph 4(l)(ii)(3), the Complainant having failed in
     the Complaint and the Respondent having not proved to the satisfaction of the Panel
     that he has legitimate rights in respect of the Domain Name, the Panel orders that
     subsequent challenges to the Domain Name under the STOP Policy shall be permitted.

                                   Christopher Tootal
                                      Sole Panelist

                                    Dated: July 26, 2002

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