WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carl Freudenberg KG v. Admin, Domain
Case No. D2006-0555
1. The Parties
The Complainant is Carl Freudenberg KG, Weinheim, Germany, represented by Latham & Watkins, Germany.
The Respondent is Admin, Domain, eCommerce Advertising, West Bay, Granc Cayman KY, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2006. On May 3, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On May 5, 2006, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May�29,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2006.
The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on June�7,�2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a limited partnership registered in Germany.
The Complainant holds and has been using the word marks VILEDON for different goods and different geographical regions since 1956.
The Complainant holds two VILEDON trademark registrations with the German Trademark office.
The first one is registered (old file No. F35011; new file No. 1102982). for the following goods classes: No. 24 (Fabrics), No. 7 (Machinery), No. 9 (Electrical and Scientific Apparatus), No. 10 (Medical Apparatus), No. 11 (Environmental Control Apparatus), No. 12 (Vehicles), No. 16 (Paper Goods and Printed Matter), No. 17 (Rubber Goods), No. 19 (Nonmetallic Building Materials), 20 (Furniture and Articles Not Otherwise Classified), No. 21 (Housewares and Glass), No. 22 (Cordage and Fibers) and is used by the Complainant for its most important product, technical nonwoven fabric.
The second one is registered (file No. 30050713.5) on October 19, 2000, for the following service classes: No. 37 (Building, Construction and Repair), No. 39 (Transportation and Storage), No. 40 (Treatment of Materials), No. 41 (Education and Entertainment), No. 42 (Computer, Scientific and Legal) and is used by the Complainant for its services in the area of filter techniques.
The Complainant has also registered two international word marks protected by the Madrid Agreement in several countries.
The first international word mark protected by the Madrid Agreement/Protocol is VILEDON (file No. 516317), registered for the Complainant on May, 29, 1987, for the following goods classes: No. 7 (Machinery), No. 9 (Electrical and Scientific Apparatus), No. 10 (Medical Apparatus), No. 11 (Environmental Control Apparatus), No. 12 (Vehicles), No. 16 (Paper Goods and Printed Matter), No. 17 (Rubber Goods), No. 19 (Nonmetallic Building Materials), No. 21 (Housewares and Glass), No. 22 (Cordage and Fibers), No. 24 (Fabrics), No. 27 (Floor Coverings) and used by the Complainant for its most important product, technical nonwoven fabric. The word mark is protected in 28 countries.
The second international word mark protected by the Madrid Agreement/Protocol is VILEDON (file No. 755710), registered for the Complainant on December 8, 2000 for the following service classes: No. 37 (Building, Construction and Repair), No. 39 (Transportation and Storage), No. 40 (Treatment of Materials), No. 41 (Education and Entertainment), No. 42 (Computer, Scientific and Legal) and used by the Complainant for its services in the area of filter techniques. The word mark is protected in 5 countries.
The disputed domain was registered by the Respondent in October 2004.
5. Parties’ Contentions
A. Complainant
The Complainant contends that:
- the disputed domain name is identical with the trademark in which it has been holding rights since at least 1956;
- it has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, as the Complainant’s trademarks predate by half of a century the registration of the disputed domain name;
- the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use of the domain name but for diverting Internet users to other websites offering for sale Complainant’s competitors’ products and services unrelated to the Complainant’s business;
- there is no formal connection between the Complainant and the Respondent;
- the disputed domain name is directed to a search engine and portal site linked to a domain which offers a revenue program, which brings revenues to the owner of the domain name;
- the Respondent is using several other brands as domain names to host websites containing links to various commercial websites which offer products in competition to the trademark owners’ rights;
- the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the trademark in a corresponding domain name and to attract for commercial gain, Internet users to the disputed domain name, by creating a likelihood of confusion with the Complainant’s trademarks.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
A1. The Complainant’s trademark rights
The Complainant’s rights in the VILEDON mark are uncontestable. As it can be seen from the German and international registration of the mark, such registrations cover a different range of goods and services classes, such as No. 24 (Fabrics), No. 7 (Machinery), No. 9 (Electrical and Scientific Apparatus), No. 10 (Medical Apparatus), No. 11 (Environmental Control Apparatus), No. 12 (Vehicles), No. 16 (Paper Goods and Printed Matter), No. 17 (Rubber Goods), No. 19 (Nonmetallic Building Materials), No. 20 (Furniture and Articles Not Otherwise Classified), No. 21 (Housewares and Glass), No. 22 (Cordage and Fibers), No. 37 (Building, Construction and Repair), No. 39 (Transportation and Storage), No. 40 (Treatment of Materials), No. 41 (Education and Entertainment), No. 42 (Computer, Scientific and Legal) and are used by the Complainant for its services in the area of filter techniques.
A2. The identity of the disputed domain name with the Complainant’s trademark
The Panel finds that the disputed domain name is identical to the Complainant’s trademarks because it incorporates the trademark in its entirety. In line to the practice of WIPO UDRP panels, this Panel considers that the mere addition of the gtld .com does not alter such identity.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent has a website under the domain name which provides sponsored, commercial hyperlinks to other websites offering for sale products from the Complainant’s competitors or goods and services unrelated to the Complainant’s business. The Complainant gives the example of the link “air filter” on the website for the domain name which leads to a website linking to various providers for air filter systems similar to the air filters offered by the Complainant under the brand VILEDON. The Complainant documented this example.
In addition, the Complainant contends that the disputed domain name is directed to a search engine and portal site linked to a domain which offers a revenue program, by which the Respondent obtains revenues.
During the administrative proceedings, the Panel accessed the website operating under the disputed domain name and only found links to websites apparently unrelated to the Complainant’s business. Nevertheless, taking into consideration the evidence provided by the Complainant and the lack of any reply from the Respondent following the Center’s proper notification of the Complaint, the Panel accepts that the Respondent had used the website under the disputed domain name to link to websites offering for sale products from Complainant’s competitors or goods and services unrelated to Complainant’s business.
Therefore, based on the facts and evidences presented by the Complainant, it is the opinion of the Panel that the Respondent is not using the disputed domain name in connection to a bona fide offering of goods and services or a legitimate noncommercial or fair use of the domain name but for diverting Internet user to other websites, taking advantage of the Complainant known mark.
Moreover, the contentions of the Complainant as to the fact that the Respondent is not a licensee of the Complainant and is not otherwise authorized to use the Complainant’s marks together with the fact that the Respondent is not known as , strengthens the Panel’s conviction in finding that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel considers that the conduct of the Respondent, as presented and documented by the Complainant, is common among infringers of the trademarks rights of others by using a domain name similar or identical with those trademarks.
In line with this consideration, and as other Panels have decided (see Steelcase Development Corporation v. Admin, Domain, WIPO Case No.�D2005-1352, Costco Wholesale Membership Inc., Costco Whole sale Corporation v. Henry Chan, WIPO Case No. D2004-0218), the Panel finds that the Respondent has registered and used the disputed domain name in bad faith as it has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website paragraph 4(b)(iv) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant.
Beatrice Onica Jarka
Sole Panelist
Dated: June 21, 2006
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