WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
B�rlind Gesellschaft f�r kosmetische Erzeugnisse mbH v. Caribbean Online International Ltd.
Case No. D2007-1636
1. The Parties
The Complainant is B�rlind Gesellschaft f�r kosmetische Erzeugnisse mbH of Calw-Altburg, Germany, represented by Ladenburger Neifeind Schm�cker & Homann, Germany.
The Respondent is Caribbean Online International Ltd. of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name is registered with Capitoldomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2007. On November 7, 2007, the Center transmitted by email to Capitoldomains, LLC a request for registrar verification in connection with the domain name at issue. On November 7, 2007, Capitoldomains, LLC 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 November 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2007.
The Center appointed Alfred Meijboom as the sole panelist in this matter on December 13, 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.
4. Factual Background
Annemarie Lindner and Hermann B�rner, whose names merged into the brand name “Annemarie B�rlind”, founded the Complainant on January 1, 1959. The Complainant has produced and sold cosmetics under the brand name “Annemarie B�rlind” for more than fifty years. The products are exported to more than 30 countries, mainly in Europe, North America and Asia.
The Complainant holds, inter alia, the following trademarks:
- the German word mark ANNEMARIE B�RLIND (reg. No. 1153432), registered since February 1, 1990 for cosmetics and related products;
- the European Community word mark ANNEMARIE B�RLIND (reg. No. 3386463), registered since May 27, 2005 for cosmetics and related products;
- the international word mark ANNEMARIE B�RLIND (reg. No. 2861837), registered since September 5, 1990 for cosmetics and related products.
Furthermore, the Complainant uses the domain name for its official website. In comparison with the trademark, this domain name replaced the character “�” by “oe” since the German character “�” does not exist in the English language nor is it a valid character variant in sublevel domains.
The disputed domain name (the “Domain Name”) was registered on February 4, 2007. The Domain Name leads to a so-called parking website with various sponsored listings, several of them referring to cosmetics offered by the Complainant’s competitors.
5. Parties’ Contentions
A. Complainant
The Complainant has stated that the Domain Name is identical to its ANNEMARIE B�RLIND trademark, since – besides the phonetic identity – the German letter “�” does not exist in the English language nor is a valid character variant in sub level domains. Furthermore, adding the hyphen between “annemarie” and “boerlind” does not eliminate the identical character nor prevent confusing similarity.
The Complainant has put forward that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the Domain Name in connection with the bona fide offering of goods and services. The Respondent is not commonly known by the Domain Name. Lastly, there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain.
With reference to four other WIPO administered domain name cases the Respondent was involved in as a respondent, the Complainant has argued that the Respondent has demonstrated a pattern of engaging in bad faith registration and use of domain names, which violate third party’s rights. Furthermore, according to the Complainant, the Respondent is using the Domain Name in bad faith because he operates a pay-per-click website form which he derives substantial revenue through Internet advertising, and therefore capitalizes on the goodwill of the Complainant’s trademark and traffic intended for the Complainant’s website.
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 requested remedy can be granted if the Complainant asserts and proves each of the following:
A. that the Domain Name is identical or confusingly similar to a trademark or a service mark in which Complainant has rights; and
B. that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
C. that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant holds several ANNEMARIE B�RLIND trademark registrations. The Panel finds that the Complainant has rights in the ANNEMARIE B�RLIND trademark.
For the purpose of assessing whether the Domain Name is identical or confusingly similar to the ANNEMARIE B�RLIND trademark in which the Complainant has rights, the “.com” suffix is disregarded, it being a necessary component. The difference between the ANNEMARIE B�RLIND trademark and the Domain Name is an “oe” instead of the “�” character. The German letter “�” is not part of the character set which can be used for .com domain names and is as a rule replaced by the letters “oe” which represents the same character in the German language. Hence the use of the letters “oe” for “�” in the domain name which the Complainant uses for its official website. Therefore the Panel is of the opinion that the difference between the characters “oe” and “�” is insignificant and does not reduce the likelihood of confusion. As a result the Panel considers the Domain Name to be confusingly similar to the Complainant’s ANNEMARIE B�RLIND trademark.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy the Complainant should prove that the Respondent has no right or legitimate interest in the Domain Name. According to the consensus view among panels, this condition is met if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests and the Respondent fails to show rights or legitimate interests.
The Complainant has undisputedly contended that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the Domain Name in connection with the bona fide offering of goods and services, that the Respondent was not commonly known by the Domain Name and that there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain. Therefore, also in view of the use of the disputed domain name as defined below under “Registered and used in bona fide” the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Domain Name is composed of the distinctive name “Annemarie Boerlind”, which is confusingly similar to the ANNEMARIE B�RLIND trademark of the Complainant. For this reason, in accordance with (ACCOR, Soci�t� Anonyme � Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625), the Panel finds it reasonable to conclude that only someone who was familiar with the ANNEMARIE B�RLIND trademark could have registered the Domain Name. Consequently, the Panel finds that the Domain Name was registered in bad faith.
The Complainant must also prove that the Respondent uses the Domain Name in bad faith.
In accordance with paragraph 4(b) of the Policy, an indication of use in bad faith is found where the Respondent is intentionally attempting to attract, for commercial gain, internet users to his website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on his website.
The Respondent has generated traffic to the website linked to the Domain Name by creating a likelihood of confusion with the ANNEMARIE B�RLIND trademark. The Domain Name leads to a so-called parking website with various sponsored listings, several of them referring to cosmetics offered by the Complainant’s competitors. Such use is considered to be use for commercial gain. Therefore, the Panel concludes that the Respondent’s use of the Domain Name satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain Name is also being used in bad faith.
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.
Alfred Meijboom
Sole Panelist
Dated: December 27, 2007
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