WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Villeroy & Boch AG v. Nikolay A. Lezhnin Case No. D2009-1036 1. The Parties
The Complainant is Villeroy & Boch AG of Mettlach, Germany, represented by Taylor Wessing, Dusseldorf of Germany.
The Respondent is Nikolay A. Lezhnin of Mitischi, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with ANO Regional Network Information Center d/b/a RU-CENTER (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2009. On August 4, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2009, the Registrar 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 August 11, 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”).
On August 13, 2009, Complainant requested the suspension of the proceedings for a period of 30 days. On September 10, 2009, Complainant requested an extension of the suspension period for additional 30 days. On September 16, 2009, Complainant requested the re-institution of the proceedings.
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 September 17, 2009.
In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2009. The Respondent filed with the Center an informal response on September 19, 2009, whereby he requested the suspension of the proceedings. In response to this request, on September 22, 2009 the Center informed the Parties that it would not be in a position to suspend the proceedings absent a request by Complainant or by both parties to this effect. On October 7, 2009, Complainant filed a supplemental submission. On October 11, 2009, Respondent submitted to the Center a copy of a request for the deletion of the registration of the Domain Name, allegedly filed with the Registrar on October 9, 2009.
The Center appointed Assen Alexiev as the sole panelist in this matter on October 16, 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 relation to the language of the administrative proceeding, the Panel considered the following circumstances:
The Complaint is filed in the English language. Complainant has requested English to be the language of the proceedings, without any objections being filed by Respondent in this regard. In the course of this administrative proceeding, each of the Parties has communicated with the Center in English. Respondent was provided the option to file its Response in either English or Russian. English is not the native language of any of the Parties or their counsel in this proceeding.
In these circumstances, the Panel is of the opinion that the parties will be treated equally and neither of them would be put at a disadvantage if English is chosen as the language of the proceedings. Therefore, and on the grounds of Rules, paragraph 11(a), and Rules, paragraph 10(a), (b) and (c), the Panel decides that the language of the administrative proceeding be English. 4. Factual Background
Complainant is a leading manufacturer of tiles, bathroom ceramics, bathroom furniture and fittings, bathroom accessories, mirrors, lights, bathroom textiles, ceramic kitchen sinks and tableware. It was founded in 1748 and is currently trading under the name of Villeroy & Boch AG. The company became a public limited company in 1987 and has been listed on the German Stock Exchange since 1990. In the course of its history, Complainant has developed from a manufacturer and marketer of high quality products into a lifestyle specialist enjoying a worldwide reputation. Its current global annual sales amount to EUR 841,000,000 (2008). Complainant products are marketed in 125 countries around the world by its own marketing companies and importers.
In 2000, Complainant acquired Gustavsberg AB - a Swedish factory for porcelain and ceramic products. This acquisition included certain subsidiaries of Gustavsberg AB and its marketing structures in Sweden, Norway, Denmark, Finland, the Russian Federation, Ukraine and the Baltic states. The manufacturing of porcelain under the name Gustavsberg started in 1825 and today Gustavsberg, now trading as Villeroy & Boch Gustavsberg AB, is one of Sweden's leading brands for bathroom products. Gustavsberg is also being marketed in Norway, Denmark, Finland, the Russian Federation, the Ukraine and the Baltic States. In the Russian Federation, Gustavsberg has been doing business for many years.
Complainant is the owner of numerous trademark registrations in the Russian Federation, the European Union and around the world containing the word “Gustavsberg”, including the following trademarks:
- German trademark No. 30434292 GUSTAVSBERG and DEVICE, application date June 15, 2004, registered in classes 08, 11, 19, 20, and 21;
- International registration No. 861496 GUSTAVSBERG and DEVICE, registration date November 26, 2004, registered in classes 08, 11, 19, 20, and 21, for the territory of 24 countries, including the Russian Federation; and
- Community trademark No. 003885902 GUSTAVSBERG and DEVICE (figurative mark), application date June 15, 2004, registered in classes 08, 11, 19, 20, and 21.
Complainant and its subsidiaries have also registered numerous domain names containing the trademark and trade name “Gustavsberg”.
The Domain Name was registered by Respondent on February 10, 2009. 5. Parties' Contentions A. Complainant
According to Complainant, the Domain Name is confusingly similar to its GUSTAVSBERG trademarks, as the Domain Name fully incorporates the distinctive element of these trademarks.
Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name. The adoption and use of the GUSTAVSBERG, trademarks, trade name and domain names precede by many years the registration by Respondent of the Domain Name. There is no evidence of Respondent's use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods. Respondent was not authorized by Complainant to use the GUSTAVSBERG trademark or to apply for any domain name incorporating it. Complainant has not permitted Respondent in any other ways to use this trademark. Respondent is not an authorized dealer of Complainant's products, and is not engaged in a bona fide retail business of selling products or services of the same kind as those offered by Complainant.
Respondent is fully aware of Complainant and its trademarks and trade name, and was at one time making an unauthorized use of the Domain Name as a portal for offering and selling “Gustavsberg” products. Respondent had virtually copied the design of Complainant's official Russian website. Through this use of the Domain Name, Respondent infringes Complainant's trademark rights and intentionally attracts consumers to his own website. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant's mark is evidence of bad faith registration and can not establish rights or legitimate interests within the meaning of the Policy.
Respondent has not been and is not commonly known by the Domain Name, and has not acquired any trademark or service mark rights in it. It does not use the term “Gustavsberg” in trade or business in any other way and is, therefore, also not known to the public by this name. There is no evidence that Respondent is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue so as to create an impression of association with the Complainant.
In Complainant's submission it contends that, the Domain Name has been registered and is being used in bad faith by Respondent. The Domain Name is used by Respondent to attract Internet users and consumers to Respondent's website by creating a likelihood of confusion with Complainant's websites and trademarks as part of an attempt to offer and sell products. This shows that Respondent knows and bases its business model on the fact that Internet users recognize Complainant's trademark GUSTAVSBERG for Complainant's products and reputation.
By virtue of Complainant's substantial and continuous use of the GUSTAVSBERG trademark in Russia, the European Community and worldwide, and considering that Respondent identically copied the website of Complainant in detail and used the term “gustavsberg” and Complainant's device trademarks on his website, Respondent must have been positively aware of Complainant and its products and trademarks. Thus, the Domain Name was not chosen by coincidence, but was intentionally registered, being confusingly similar to Complainant's trademarks and domain names. Such use of the Domain Name for commercial gain reflects Respondent's attempt to attract users to its website by improperly associating itself with Complainant and/or Complainant's trademarks. Complainant's past and present customers and those who know Complainant by reputation may be lead to think that the Domain Name and the products at the website associated to it are offered by Complainant or an undertaking that is economically linked to Complainant.
Complainant requests the transfer of the Domain Name. B. Respondent
Respondent did not file a response in this proceeding. 6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) That the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That Respondent has registered and is using the Domain Name in bad faith.
By Rules, paragraph 5(b)(i), it is expected of a Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to Respondent, in compliance with Rules, paragraph 2(a), and Respondent was given a fair opportunity to present its case.
In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques,WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent's control. Respondent's failure to present any such evidence or to deny complainant's allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant.[…] In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, Respondent has chosen not to submit a formal Response on the substance of the dispute. Its default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of Complainant. The Panel has to take its decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
Complainant has provided evidence and has thus established its rights in the combined trademarks GUSTAVSBERG and Device, registered in various jurisdictions around the world, including in the Russian Federation. The predominant feature of these trademarks is their verbal element GUSTAVSBERG.
It is a common practice under the Policy to disregard gTLDs such as the “.biz” section of domain names for the purposes of the comparison under Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is its “gustavsberg” element, which is visually and phonetically identical to the distinctive element of Complainant's GUSTAVSBERG trademarks.
On these grounds, the Panel finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights. B. Rights or Legitimate Interests
Complainant claims that Respondent has no rights or legitimate interests in the Domain Name, stating various arguments in this regard. Thus, Complainant establishes a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
It is well established that once a complainant makes out a prima facie case under Policy, paragraph 4(a)(ii), the burden shifts to respondent to rebut the showing by providing evidence of its rights or legitimate interests in the domain name.
Respondent has chosen not to present to the Panel any allegations or documents in its defense despite its obligation under the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that a Panel may extract from the fact of a default (Rules, paragraph 14). If Respondent had any justification for registering or using the Domain Name, it could have provided it. In particular, Respondent has failed to contend that any of the circumstances described in Policy, paragraph 4(c), or any other circumstance, is present in its favor.
The only information available about Respondent is the WHOIS information, provided by the Registrar, the content of the website associated to the Domain Name, and Respondent's informal submissions in this proceeding.
The WhoIs information contains no evidence of rights or legitimate interests of Respondent in the Domain Name, apart from its rights as registrant of the latter. In its informal submissions, Respondent admits to have provided certain services to Complainant's Russian subsidiary, and states that he is currently in dispute with this subsidiary. Respondent makes no claim for having rights or legitimate interests in respect of the Domain Name, while (as submitted by Complainant) the website associated to it was at one time a replica of Complainant's official Russian website. In the course of this administrative proceeding, Respondent has requested the deletion of the registration of the Domain Name by the Registrar. All these circumstances lead the Panel to conclude that Respondent has registered the Domain Name being fully aware of Complainant and its goodwill, and that it may well be that this registration was made in view of Respondent's alleged dispute with the Russian subsidiary of Complainant.
The Panel is of the opinion that this sequence of facts and circumstances does not establish any rights or legitimate interests of Respondent in respect of the Domain Name within the meaning of the Policy, paragraph 4(a)(ii). Complainant succeeds on this point. C. Registered and Used in Bad Faith
For the purposes of Policy, paragraph 4(a) (iii), 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 a 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.
Complainant has provided evidence of the popularity of its trademark and the goodwill associated with it. The Domain Name is confusingly similar to this distinctive trademark of Complainant, and Respondent has registered it without having any rights or legitimate interests in it, while positively being aware of Complainant and of the commercial value of the GUSTAVSBERG trademark. Then, Respondent used the Domain Name to associate it to a website that is a copy of Complainant's official Russian website, and offers similar products.
According to Complainant, the Domain Name was intentionally registered for its confusing similarity to Complainant's trademarks and domain names, and in an attempt by Respondent to attract Internet users to its website by improperly associating itself with Complainant and its trademarks. Respondent has not denied these statements of Complainant.
Taking into account the statements of the parties and the evidence in the case, the Panel is prepared to accept that the Domain Name has been registered and used by Respondent in an attempt for direct or indirect commercial gain to mislead and divert consumers away from Complainant's official website (or to create the possibility for such diversion) by illegitimately associating himself with Complainant and its trademarks. In the Panel's view, such actions amount to bad faith registration and use of the Domain Name under 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.
Assen Alexiev
Sole Panelist
Dated: November 6, 2009
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