WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION s. Oliver Bernd Freier GmbH & Co. KG v. Whois privacy services / Comar Ltd., Domain Administrator Case No. D2009-1201 1. The Parties
The Complainant is s. Oliver Bernd Freier GmbH & Co. KG of Rottendorf, Germany, represented by Weber & Sauberschwarz, Germany.
The Respondent is Whois privacy services / Comar Ltd., Domain Administrator of Saint-Petersburg, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with NICREG LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2009. On September 11, 2009, the Center transmitted by email to NICREG LLC a request for registrar verification in connection with the disputed domain name. On September 16, 2009, NICREG LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 17, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on September 22, 2009. The Center verified that the Amended 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 September 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 14, 2009.
The Center appointed Knud Wallberg as the sole Panelist in this matter on October 20, 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 Rules, paragraph 10(a), the Panel had the Center send the following order to parties on October 29, 2009:
1. In paragraph 11 (pages 6 – 10) of the Complaint the Complainant puts forward the factual and legal grounds for the Complaint. The Panel notes that the Complainant in subparagraphs B and C of this paragraph puts forward information about the concrete use of the disputed domain name, just as the Panel observes that the Complainant seems to rely heavily on this use in its grounds for the Complaint. However, Complainant does not seem to have furnished any evidence of such use neither in the Compliant nor in the Annexes, and the Panel has not been able to access the website under the disputed domain name “www.” in order to get the information on the concrete use verified or disproved.
2. Without prejudice to any ultimate decision made by the Panel in this case, the Panel therefore invites the Complainant to comment on the above observations by the Panel and to supplement the record accordingly with any applicable submission or supporting evidence if it so wishes. Such filing should be filed with the Center by e-mail (to domain.disputes@) within 7 (seven) days from the notification of this Order to the Parties.
3. Following the Supplemental Filing by the Complainant in response to this Order – if any – the Panel further orders that the Center notify the Respondent of this Filing and allow the Respondent 7 (seven) days, in which to provide a Response in relation to the Supplemental Filing from the Complainant.
4. The Panel's projected decision date is extended accordingly, and the Decision will therefore be due within 7 (seven) days from receipt of Respondent's Response, or within 7 (seven) days from Respondent's default, should a Response not be submitted.
The Complainant filed a reply to the above Panel Order including a new Annex 12 on November 3, 2009. The Respondent did not file any reply within the prescribed deadline. The Panel has decided to accept the Complainant´s aforementioned reply. 4. Factual Background
The Complainant is an international fashion company with its key market in Germany, but whose fashion articles are also sold in a number of other European countries.
The Complainant has since an acquisition in 2001 been the proprietor of the trademark COMMA,, which is registered in a number of countries in Europe including in the Russian Federation for several different goods and for retail services all related to fashion. 5. Parties' Contentions A. Complainant
The disputed domain name incorporates the Complainant's registered mark COMMA, in its entirety. Where a domain name incorporates the Complainant's mark in its entirety, the domain name is deemed to be confusingly similar to that mark. This assumption must also apply in the case where the addition of words is directly associated with the products or services the mark is registered for. As it was established above, that the mark COMMA, is also registered for fashion articles, the Complainant states that there is a likelihood of confusion in respect of the registered trademarks and the disputed domain name.
There are according to the Complainant no circumstances present which give rise to a right or legitimate interest of the Respondent in the disputed domain name.
The Respondent is neither associated with the Complainant in any way, nor is it authorized to use the Complainants marks. Further it is not - to the best of the Complainant's knowledge - commonly known by the name “Comma” or “Commafashion”.
The Respondent's use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use. To the best of the Complainant's knowledge the disputed domain name is used by the Respondent to generate traffic to other Internet shops. The domain name is used as a linking website with links to other shopping domains. For this reasons the Complainant holds that the Respondent exploits the good reputation of the Complainant for its own unfair and unfaithful economic interests. Obviously, the Complainant states, the only intention of the Respondent is to block domain names for well-known trademarks, to confuse Internet users and to exploit the high reputation of well-known trademarks for own unfair and unfaithful economic interests. As the disputed domain name is offered for sale on the website, it is highly probable, that the only intention of the Respondent is to keep the Complainant from becoming the holder of the disputed domain name in order to convert the registration of the disputed domain name into money.
Taking the above mentioned observations into account, the disputed domain name was registered and is being used in bad faith by the Respondent.
It has to be mentioned, that the word combination “commafashion” has no specific meaning. According to the Complainant it only makes sense in relation to its registered trademarks. The only possible conclusion is, that the Respondent registered the disputed domain name primarily because of its similarity to the Complainant's well-known trademarks in order to profit from its brand awareness. In this way, the Respondent exploited the high reputation of the marks by generating traffic via “www.” to other shopping domains. The Respondent used a well-known and high reputed trademark for its own unfaithful economic interest.
To conclude, the Respondent was not only aware of the Complainant's trademarks all the time, but also registered the disputed domain name to exploit the good record. It never intended to use the disputed domain name in an honourable way. Therefore, the Complainant concludes, the registration and use of the disputed domain name in bad faith is evident. B. Respondent
The Respondent did not reply to the Complainant's contentions in the Complaint nor to the reply filed by the Complainant to the Panel Order. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the 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.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate. A. Identical or Confusingly Similar
The dominant and distinctive word element of the Complainant's registered trademark is “comma” and the Panel is satisfied that the Complainant through the registrations has rights in the name “Comma”.
The disputed domain name contains the above-mentioned dominant and distinctive part of the Complainant's mark (namely “comma”) with the addition of the term “fashion”, which is a descriptive term for the goods offered by the Complainant under the COMMA, trade mark. There is a strong likelihood that Internet users will confuse the disputed domain name with the Complainant's trademark and the goods and services of the Complainant in its customary field of business activity.
Since the inclusion of the gTLD denomination “.com” shall be disregarded for the purpose of these proceedings the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademarks and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Respondent's Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.
The Panel is satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this by way of a formal Response or otherwise. The disputed domain name was registered several years after the Complainant registered and started using its trade mark, and the Respondent used the disputed domain name for a website that contains only links to other websites – among others links to websites that offers for sale clothing and fashion. The Respondent thus could not credibly claim that the disputed domain name is intended to be used for any legitimate interests and such a claim would in any event also be contrary to the way the Respondent has used the disputed domain name, namely for a website that contains only links to other sites. The Panel further refers to its below findings in relation to the actual use made of the disputed domain name.
Consequently the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy, with reference to paragraph 4(c) of the Policy, are also fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b)(i) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith.
Given the distinctive character of the Complainant's trade it is inconceivable to the Panel that the Respondent was not aware of the Complainant and the Complainant's activities when registering the disputed disputed domain name. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
Given the extent of use of the Complainant's trademark and the distinctive nature of the mark in relation to clothing and fashion accessories, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant's mark.
This is underlined by the fact that the disputed domain name, at the time of the filing of the Complaint was used for a website that contained links to other websites including links related to clothing and fashion. The Panel therefore finds that the Respondent by its registration and its use of the disputed domain name, intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name with the purpose of attracting Internet users to the website for commercial gain. The fact that the webpage “www.” was deactivated after the filing of the Complaint does not alter this assessment. As held in inter alia Total S.A. v. Frank Marinaro, WIPO Case No. D2007-1728 although the Policy requires that the domain name “is being used in bad faith”, it cannot be interpreted as requiring the bad faith use to be continuing in all stages of the dispute. In any case, the continued holding of the disputed domain name by the Respondent is in itself a passive use of the disputed domain name which, in the circumstances of this case, is in bad faith.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has proved element 4(a)(iii) 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 name be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Dated: November 10, 2009
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