WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grundig Multimedia B.V. v. Nikolay Zhoukov
Case No. D2007-1249
1. The Parties
The Complainant is Grundig Multimedia B.V., Amsterdam, Netherlands, c/o Grundig Intermedia GmbH, Beuthener, N�rnberg, Netherlands, represented by A. A. Thornton & Co., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Nikolay Zhoukov, Dundee, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names , , and are registered with Go D, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2007. On August 24, 2007, the Center transmitted by email to Go D Inc a request for registrar verification in connection with the domain names at issue. On August 25, 2007, Go D Inc transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 August 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2007.
The Center appointed Mr. P-E H Petter Rindforth as the sole panelist in this matter on October 2, 2007. 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.
The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant is the proprietor of a number of trade mark registrations for the mark GRUNDIG, including; UK Trade Mark Registration Nos. 711610 (filed October 22, 1952), 785399 (filed December 22, 1958) and 1290533 (filed November 12, 1986) registered in respect of class 9 goods including “telephone recording apparatus and instruments”. The Complainant is also the registered proprietor of Community Trade Mark Registration No. 4148904 “GRUNDIG MOBILE” (filed November 30, 2004) registered in respect of classes 9, 35, 37, 38 and 42 including “mobile telephones and cable telephones” and Community Trade Mark Registration No. 3071677 GRUNDIG (figurative) (filed April 22, 2003) registered in respect of goods and services classes 1, 7-11, 14, 16-18, 20, 21, 28, 35-42, 44, 45 (Printouts from the official records provided as Annex B of the Complaint).
The Complainant and affiliated companies are also the registrants of the domain names , , and (Whois details provided as Annex D of the Complaint).
The GRUNDIG MOBILE brand was launched in 2005. GRUNDIG MOBILE products are a result of a licensing agreement between the Complainant and Vitel Mobile Technology SA. The domain name is used by the Complainant’s Licensee, Vitel Mobile Technology S.A to provide information and software in connection with the GRUNDIG mobile phone handsets and accessories produced by Vitel Mobile Technology S.A.
The Complainant sent the Respondent notice of its trade mark rights in the marks GRUNDIG and GRUNDIG MOBILE on November 16, 2006, with reminders of February 1, 2007 and March 9, 2007 (Annex G of the Complaint). No response was received.
The Respondent registered the domain names on June 25, 2006. No detailed information is provided about the Respondent’s business activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant states that the trade mark GRUNDIG has been used since 1945 (history of the GRUNDIG brand and key points in the history of the business provided as Annex E of the Complaint), and is now one of the most recognised electronic goods brands in Europe.
The Complainant spends a considerable amount of time and money protecting its intellectual property rights around the world (list of trademark registrations provided as Annex C of the Complaint).
The Respondent’s domain name registrations clearly incorporate the Complainant’s mark GRUNDIG, and , , are also confusingly similar to the Complainant’s registered trade mark GRUNDIG MOBILE.
The addition of ‘mobile’ and ‘phone’ does nothing to detract from the confusing similarity of the Respondent’s domain names to the Complainant’s registered trade marks, rather it is an attempt to catch Internet users searching the Complainant’s registered trade marks in various forms. By incorporating the Complainant’s registered trade mark into the domain names the Respondent is clearly trying to confuse an Internet user into believing the domain names are associated with the owner of the registered trade marks. The Respondent’s domain name is identical to that of the Complainant’s domain name apart from the addition of the letter ‘s’ to the word ‘mobile’.
The Complainant further states that the Respondent is not a licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainant’s marks. There is no indication that the Respondent was known by the names , , or prior to the registration of the domain names.
The Complainant argues that the Respondent registered the disputed domain names via the privacy service Domains By Proxy in an attempt to conceal the identity of the Registrant, therewith indicating a clear knowledge that it lacks legitimate rights in the names.
The Respondent does not use the domain names for a bona fide offering of goods or services, as the connecting web pages encourage users to click through to third party shopping web sites through ‘recommended links’ and also through banner adverts at the top of the page. By incorporating the Complainant’s trade mark into the domain names, it is clear the Respondent aims to attract Internet users to the site and benefit from resulting ‘click through’ revenue. The web page at each disputed domain name also carries links through to the other disputed domain names. These links are listed under ‘Grundig mobile web sites’. By listing links to the other domain names which carry identical web pages, and not listing the official Grundig site, the Respondent is aiming to create the impression the web pages hosted at the disputed domain names are the official web sites of the Complainant, or are associated with the proprietor of the GRUNDIG trade marks.
The Respondent has registered multiple names containing the GRUNDIG trade mark in an attempt to prevent the Complainant from owning these domain names, and to catch as many Internet users as possible searching the Internet by using the Complainant’s registered trade marks.
The Respondent has made a clear attempt to present the web page as the official Grundig web site by copying the presentation of the Complainant’s use of the GRUNDIG trade mark in the ‘GRUNDIG made for you’ format. The Respondent has posted a ‘disclaimer’ page which is only accessible once the user has accessed the contested domain names (Annex J of the Complaint). The disclaimer states:
“The Grundig Mobiles web site is not an official Grundig web site and it is not associated with or related to, or sponsored by, or endorsed by Grundig or any other Company or business Group, or network, or retailer. Neither it is related to www. web site. The aim of the www. web site is to provide adequate and up to date information on deals and offers currently available on the market. The www. website was set up in order to facilitate consumer awareness and promote an informed choice… Grundig logo and made for you motto are copyright of Grundig corporation. The rest of the content is copyright www.. This website contains links to external websites that are not under the control of www., and these links are provided only as a convenience to our users.”
According to the Complainant, the disclaimer indicates the Respondent’s knowledge it has no legitimate rights to use the registered trade marks and argues further that the disclaimer is posted on a separate page in the knowledge many users will already have used the click through links before reading any such disclaimer.
The Complainant requests the Panel to issue a decision that the disputed domain names be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent’s domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) that the domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of the trade marks GRUNDIG and GRUNDIG MOBILE.
As shown by Annex E of the Complaint, the GRUNDIG trade mark has a long and established history as a well known brand for electronic goods, such as radios, TV sets, telephones and, more recent, cell phones.
The disputed domain names , , and all includes the Complainant’s trademark GRUNDIG and is almost identical to the trademark GRUNDIG MOBILE, with the addition of the letter “s”.
GRUNDIG is a famous trade mark and the addition of the hyphen and the generic terms “phone” and “mobile/s” is not enough to change the impression of the domain names being confusingly similar to the Complainant’s trademark, see Chernow Communications, Inc v. Jonathan D. Kimball, WIPO Case No. D2000-0119 and Fuji Photo film U.S.A., Inc. v. LaPorte Holdings,WIPO Case No. D2004-0971.
The Panel therefore concludes that , , and are confusingly similar to the Complainant’s mark GRUNDIG, and that ,
and are confusingly similar to the Complainant’s trade mark GRUNDIG MOBILE.
B. Rights or Legitimate Interests
The Respondent is not an authorized agent or licensee of the Complainant’s products or services and has no other permission to apply for any domain name incorporating the GRUNDIG or GRUNDIG MOBILE trade marks.
By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the domain names.
The Respondent has, however, offered an explanation in the abovementioned Disclaimer:
“The aim of the www. web site is to provide adequate and up to date information on deals and offers currently available on the market. The www. website was set up in order to facilitate consumer awareness and promote an informed choice”.
As established in a number of prior cases, such as The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113, R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton,WIPO Case No. D2000-1201 and Nokia Corporation v. Nick Holmes t/a EType Media,WIPO Case No. D2002-0001 the collateral trade mark use necessary to allow resell of and/or customer support in connection with the Complainant’s products does not necessarily confer the right to use the trademark as a domain name.
In addition, all web pages connected with the disputed domain names include links to the Complainant’s competitors, as well as banners for competing goods and services. Such use cannot constitute a bona fide use of the domain names pursuant to paragraph 4(c)(i) of the Policy (See TM Acquisition Corp. v. Gary Lam, NAF FA0405000280499, holding the Respondent’s use of the disputed domain name for a commercial web directory website linking users to competing services did not constitute a bona fide use or fair use pursuant to the Policy; see also Chanel, Inc. v. Cologne Zone,WIPO Case No. D2000-1809, “Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights.”).
The Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain names.
C. Registered and Used in Bad Faith
As concluded above, the Complainant’s trade mark GRUNDIG is well known. The Respondent has registered four domain names all including the trade mark GRUNDIG and all with the addition of words related to the goods and services of the Complainant. The Panel finds that the Respondent had clear knowledge of the Complainant’s trade marks when he registered the disputed domain names.
As stated in Robert J. Goodman, Box Brothers Corporation v. Gary Lam,WIPO Case No. D2004-0785, “If the Respondent was aware of the Complainant or the service mark, it is difficult to avoid the conclusion that the Respondent’s intention must have been to capitalize on the Complainant’s goodwill in the service mark.”
All four domain names are used for active web sites with presumably sponsored links and banners to various mobile phone service providers (as shown by Annex H of the Complaint). The Respondent has also used the exact trade mark logo and pay-off “GRUNDIG made for you” at the top of each web site. The Panel finds that the Respondent has used the domain names with the intention to attract Internet users to his web sites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said web sites and further to create the impression that all connecting web sites are the official web presentation of the Complainant’s mobile phone services.
The Complainant states that the Respondent, by using a privacy service, has indicated a clear knowledge that he lacks legitimate rights in the domain names. Use of a privacy service as such is however not indicating any bad faith registration or use. There may be many legitimate reasons for hiding the identity of the domain name holder, such as avoiding spam. Bad faith is only indicated when such use is connected with the registration and use of infringing domain names, such as in this present case.
Further, the disclaimer does not alter the impression of bad faith registration and use, as it is placed on a sub page and thus only accessible once the Internet user has accessed the disputed domain names. See ISL Worldwide and The Federal Internationale doe Football association v. Western States Ticket Service,WIPO Case No. D2001-0070 (also cited by the Complainant): “The panel does not find the Respondent’s Disclaimer effective for the purposes of either paragraph 4(a)(i) or 4(a)(iii) of the Policy. It is tantamount to committing a tortuous act but then seeking to avoid liability after the event. It is only by unauthorised use of the trade mark that the potential customer is brought to the website (containing the disclaimer) in the first place.”
Accordingly, this Panel concludes that the domain names are both registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) 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 names, , , and be transferred to the Complainant.
P-E H Petter Rindforth
Sole Panelist
Dated: October 16, 2007
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