WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Monier Technical Centre GmbH v. Alexey Shargorodskiy Case No. D2009-0468 1. The Parties
The Complainant is Monier Technical Centre GmbH of Oberursel, Germany, represented by Dr. Willi Schickedanz, Germany.
The Respondent is Alexey Shargorodskiy of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2009. On April 9, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On April 17, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 23, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 25, 2009.
The Center appointed Luca Barbero as the sole panelist in this matter on June 2, 2009. 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.
In accordance with the paragraph 10 and 12 of the Rules, the Panel issued a Panel Order on June 12, 2009, requesting the Complainant to provide further evidence as to the Complainant's ownership and fame of the relied-upon trademark and as to the Respondent's lack of rights or legitimate interests and its use of the Domain Name in bad faith. The Panel Order also invited a reply from the Respondent. The Complainant submitted its reply to the Panel Order on June 19, 2009. The Respondent did not provide any reply to the Panel Order. 4. Factual Background
The Complainant is Monier Technical Centre GmbH, a subsidiary of the MONIER Group GmbH, one of the biggest roofing companies worldwide, with offices in over 40 countries.
The Complainant, through its associates Monier GmbH and Monier Roofing GmbH is the owner of several trademark registrations consisting in the sign “braas ” such as the Austrian trademark No 84295 filed on September 14, 1976 in classes 1, 6, 16, 17, 19, 22, 27, the German trademark No 399 36 745, filed on June 25, 1999, the Indonesian trademark No 461193 registered on January 9, 2001, in class 19 and the Russian trademark, where the Respondent is based, No. 100759 registered on April 30, 1991 in classes 6 and 19.
The Complainant is also the registrant of the domain name , registered on March 14, 2000.
The Respondent registered the Domain Name on August 8, 2006. 5. Parties' Contentions A. Complainant
The Complainant highlights that the Domain Name is identical to trademarks and domain names in which Complainant has rights as it reproduces the trademark BRAAS in its entirety.
With reference to rights or legitimate interests in respect of the Domain Name, the Complainant states that, in light of the Complainant's trademark registrations for BRAAS, the Respondent had no rights to use this sign to promote the activity of German competitors, i.e., ERLUS and KORAMIC, diverting consumers and tarnishing the trademark at issue.
The Complainant highlights that at the time the Respondent registered the Domain Name, the Complainant already owned several trademarks registrations for “BRAAS” and was distributing goods under the said name all over the world. Furthermore, the Complainant emphasizes that the trademark BRAAS is certainly well-known in Germany and Poland.
The Complainant also underlines that the Complainant promotes its activity through several websites, where goods are offered under the name “Braas” and that Internet users can easily find information about the Complainants' products by a simple search on Google engine.
The Complainant therefore points out that the “Respondent had to know that Monier is using the name ‘Braas' and that Monier has several trademarks regarding those goods, which Respondent offers under –‘'”.
With reference to the circumstances evidencing bad faith, the Complainant indicates that the Domain Name “has been registered for the purpose of disrupting the business of the competitors. Furthermore, by using “”, Respondent attempts to attract for commercial gain. There is created a likelihood of confusion with Complainant's trademarks. Internet users assume that Complainant offers their goods together with goods of ERLUS and KORAMIC”. B. Respondent
The Respondent did not reply to the Complainant's contentions and is in default.
Therefore the Panel shall decide this proceeding on the basis of the Complainant's submissions, drawing such inferences from the Respondent's default that are considered appropriate according to paragraph 14(b) of the Rules. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith. A. Domain Name Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a number of trademark registrations for BRAAS such as the German trademark No 399 36 745, filed on June 25, 1999 and other valid trademark registrations also in the country where the Respondent is apparently based.
In comparing the Complainant's marks to the Domain Name with reference to BRAAS it should be taken into account the well-established principle that the generic top level domain may be excluded from consideration as being merely functional component of a domain name. See, i.a., Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 “the specific top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo,WIPO Case No. D2000-1770 “the accused domain name is legally identical to Complainant's trade name CHEVY CHASE BANK”.
In view of the above, the Panel finds that the Complainant has proven that the Domain Name is identical to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the Domain Name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See, i.a. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Met America Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. 852581).
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Name has made preparations to use the Domain Name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, non-commercial or fair use of the Domain Name.
The Panel finds that, in light of the use of the Domain Name to promote the activity of competitors of the Complainant, the Respondent has not made a legitimate noncommercial or fair use of the domain name, but has disclosed intent for commercial gain to misleadingly divert consumers and to tarnish the trademark or service mark at issue
Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a complaint, it can be assumed that respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269).
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the Domain Name; or
(ii) the holder has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder' s 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 holder's website or location or of a product or service on the holder's website or location.
As to bad faith at the time of the registration, the Panel notes that, in light of the trademark registrations and use of a trademark identical to the Domain Name including in the Country where the Respondent is based and also of the use of the Domain Name by the Respondent to promote activities of competitors of the Complainant, it is fair for the Panel to infer that the Respondent was aware of the Complainant's trademark.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang,WIPO Case No. D2003-0257. Along the same lines Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn,WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions WIPO Case No. D2003-0103. As stated,inter alia, in DHL Operations B.V v. Net Marketing Group,WIPO Case No. D2005-0868 “It is obvious that the value and goodwill, of the Complainant's mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
The Panel also finds that, in view of the contents of the web page linked to the Domain Name advertising goods of competitors, the Respondent's registration of the Domain Name interferes with the Complainant's business. Thus, Internet users are very likely to be misled on the source, sponsorship, affiliation, or endorsement of the Respondent's website. See, i.a., Manheim Auctions Inc. v. Whois ID Theft ProtectionWIPO Case No. D2006-1044; Fry's Electronics, Inc v. Whois ID Theft ProtectionWIPO Case No. D2006-1435; Barry D. Sears, Ph.D. v. YY/Yi YanlinWIPO Case No. D2007-0286.
As stated in Kelley Blue Book Company, Inc. v. Nikolay Golovin aka B,WIPO Case No. D2005-0837: “Even if the Panel is not convinced that the texts posted on Respondent's web site directly infringe on Complainant's copyrighted web content, it is satisfied that such content leads Internet users into confusion. Because the disputed domain name is almost identical to Complainant's mark, users searching for Complainant's web site and inadvertently misspelling “Kelley” may connect to Respondent's web site, and after seeing its content, they may believe that it is Complainant's web site. The resulting confusion provides a ground for a finding of bad faith use.”
The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted (and probably succeeded) to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's services.
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146: “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
Along the same lines is the decision Renegade LLC v. Kenneth Gibert,WIPO Case No. D2008-0646, in which the panel stated: “The Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent's website for commercial gain based on confusion with the Complainant's mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith”.
The Panel in the present case finds such reasoning compelling. In view of the above, the Panel finds that the Domain Name was registered and is 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.
Luca Barbero
Sole Panelist
Dated: July 1, 2009
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