WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Andreas Stihl AG & Co KG v. WhoisGuard Protected Case No. D2008-1527 1. The Parties
Complainant is ANDREAS STIHL AG & Co KG of Germany, represented by McGuireWoods LLP, United States of America.
Respondent is WhoisGuard Protected of United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2008. On October 7, 2008 and October 17, 2008, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On October 17, 2008, eNom, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 13, 2008.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on November 27, 2008. 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 trademark upon which the Complaint is based is STIHL. According to the documentary evidence and contentions submitted, the trademark was registered in the United States of America (“United States”) inter alia under Nos. 855458 as of August 27, 1968, 1134411 as of May 6, 1980, 1244156 as of July 5, 1983, 2689897 as of February 25, 2003, 2806370 as of January 20, 2004, 3072557 as of March 28, 2006, and 878898 as of April 13, 2006.
According to the documentary evidence and contentions submitted, Complainant, through its United States subsidiary Stihl Incorporated, registered the domain name on August 30, 1996. Complainant also owns other domain names featuring STIHL, including , , and , all of which were registered before the disputed domain name was registered.
The domain name was registered on July 19, 2008. According to the documentary evidence and contentions submitted, the disputed domain name resolves to a website containing links which direct the Internet user to various websites offering either original or competing products for sale. 5. Parties' Contentions A. Complainant
Complainant argues that the domain name is confusingly similar to the STIHL trademark and domain name.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent has no relationship to any party owning live marks comprised of the name Stihl; (ii) the name WhoisGuard Protect bears no connection to the disputed domain name; (iii) Complainant found no evidence to indicate that Respondent has established rights or legitimate interests in the disputed domain name; and (iv) Complainant sent two letters to Respondent, one on July 25, 2008 which was refused, and a second on August 20, 2008 which was not responded to.
Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith because (i) Respondent's choice of a domain name which incorporates Complainant's mark is likely to create confusion as to the affiliation of Respondent's website with Complainant, (ii) Respondent provides links to websites that sell items manufactured by Complainant's competitors, (iii) Respondent is not commonly known by the domain name and is not making a legitimate noncommercial or fair use of the disputed domain. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Effect of the Default
The consensus view is that respondent's default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441; RX America, LLC. v. Matthew Smith,WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements. B. Identical or Confusingly Similar
It has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the trademark. This Panel also concurs with the opinion of several prior WIPO UDRP panels which have held that, in general when a domain name wholly incorporates a complainant's registered mark, that is sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615.
Furthermore, in the instant case, it is worth noting that Respondent added to the STIHL trademark a term which describes the goods which are commonly identified by the registered trademark, namely chainsaws. Therefore, in this type of combination it is clear that the Complainant's trademark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of that trademark. See Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159.
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith,WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies,WIPO Case No. D2006-0582.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met. C. Rights or Legitimate Interests
The consensus view in WIPO UDRP Panel decisions has been that once a complainant makes out a prima facie case that a respondent lacks rights or legitimate interests in the domain name, respondent then carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.1).
The Panel is convinced that Complainant has done enough to establish a prima facie case. In fact, Respondent is not commonly known by the disputed domain name, the principal element of the disputed domain name is Complainant's trademark, and it is evident that Complainant has not authorized Respondent to use its mark in the domain names at issue.
In addition, the Panel concurs with prior WIPO UDRP decisions holding that there is no bona fide offering of goods or services where the disputed domain name resolves to a website containing links which direct the Internet user to various websites offering competing products for sale. Aventis, Aventis Pharma SA. v. VASHA Dukes, WIPO Case No. D2004-0276; Pfizer Inc. v. Alex Schreiner/Schreiner & Co., WIPO Case No. D2004-0731; Aventis Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290; Lilly ICOS LLC v. Redzone, WIPO Case No. D2005-0534; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. ICN-Toshiba, WIPO Case No. D2004-0941; Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088; Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870.
Finally, the Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met. D. Registered and Used in Bad Faith
It is very unlikely that Respondent would have registered unless Respondent knew (i) of the existence of the STIHL mark, and (ii) that the domain name at issue might be of some type of economic advantage.
This Panel concurs with previous WIPO UDRP decisions holding that in general, registration of a known trademark as a domain name may be a clear indication of bad faith in itself, even without considering other elements. As decided before, “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith”. Caixa D´Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441.
The fact that Respondent has formed the domain name by only adding the descriptive word “chainsaws” shows that the combination was made in bad faith with the motivation to exploit user confusion as to the source of, sponsorship by, affiliation with, or endorsement by Complainant. That conclusion is reinforced by the circumstance that the disputed domain name resolves to a website containing links either to Complainant's products or to alternatives to Complainant's products. This is evidence of opportunistic bad faith. See Pivotal Corporation v. Discovery Street Trading Co. Ltd., WIPO Case No. D2000-0648.
The Panel concludes that the information provided by Complainant, including the contents of Respondent's website, indicates bad faith in the acquisition and use of the subject domain name, and notes that Respondent has done nothing to supplant that indication.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met. 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 Complainant.
Manoel J. Pereira dos Santos
Sole Panelist
Dated: December 10, 2008
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