WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Frey Wille GmbH & Co KG v. Den Gledenov Case No. D2010-0438 1. The Parties
The Complainant is Frey Wille GmbH & Co KG of Vienna, Austria, represented by Schönherr Rechtsanwälte GmbH, Austria.
The Respondent is Den Gledenov of Dubna, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2010. On March 24, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On March 24, 2010, GoD, Inc. 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” 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 March 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 19, 2010.
The Center appointed Ladislav Jakl as the sole panelist in this matter on April 23, 2010. 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.
As the Registration Agreement for the disputed domain name is in English, the Complainant requests the Panel to decide the language of the administrative proceedings in this case is English. The Respondent did not submit in this question any response. The registrar indicated that the specific language of the registration agreement as used by the Respondent for the disputed domain name is English. Pursuant the Rules, paragraph 11, in absence of an agreement between the parties, the language of the administrative proceeding shall be the language of the registration agreement. Therefore the Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836), decides that the language of the administrative proceedings is English. 4. Factual Background
The Complainant is a manufacturer of luxury jewelry. The production is situated in Vienna, Austria from where the in-house artists, goldsmiths, designers and experts of fine enameling create timeless masterpieces of decorative art. The Complainant is a global player in the luxury jewelry sector and has many shops around the world, including in the Russian Federation where the Respondent resides. Remarkable advertisements and press reports have been made in 2004 and 2005 for the mark FREY WILLE and since the 1990s the Frey Wille products are marketed by catalogues which are given to many customers worldwide.
The mark FREY WILLE is based on the names of Michaela Frey, the founder of the company, and Dr. Friedrich Wille, the current owner of the company. According to company's register of Vienna, Austria, the first registration of the company name “FREY WILLE”, GmbH &Co. KG was on November 18, 1968.
The Complainant registered and owns a large number of domain names containing the mark FREY WILLE, both under generic and country-code Top Level Domains, such as , , , , , and .
The Complainant is the proprietor of several registrations and applications of design rights and registered trademarks containing the mark FREY WILLE, such as International Registration Trademark M.FREY WILLE, No. 776831 (priority under Paris Convention on December 3, 2001) and International Registration Trademark FREY WILLE, No. 824396 (priority under Paris Convention on August 25, 2003), registered in many countries around the world, both registered in the classes 3,14,16,18 and 25.
The Respondent is the registrant of the disputed domain name, which was registered on May 8, 2005. This domain name expires on May 8, 2019. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademark, that the Respondent has no rights or legitimate interests in respect to the domain name and that this domain name was registered and is being used in bad faith.
The Complainant introduces that the mark FREY WILLE is based on the names of Michaela Frey, the founder of the company, and Dr. Friedrich Wille, the current owner of the company. Since 2004 this mark is used by the Complainant for jewellerly from Austria and before the mark M.FREY WILLE was used.
Furthermore the Complainant states, that is the proprietor of the registered trademarks consisting or containing the mark FREY WILLE, explicitly internationally registered trademark M.FREY WILLE, No. 776831, priority date December 03, 2001, and internationally registered trademark FREY WILLE, No. 824396, priority date August 25, 2003. The Complainant also asserts that the disputed domain name is identical or confusingly similar to these trademarks and the addition of the “.com” suffix does not serve to distinguish the domain name from the trademark FREY WILLE. Moreover, it is a common practice that blank spaces in trade names or trademarks are omitted to form a corresponding domain name.
The Complainant also argues that the disputed domain name takes over its business name Frey Wille GmbH & Co KG and that GmbH & Co KG only indicates the legal nature of this company.
As to legitimate interests in respect of the disputed domain name, the Complainant essentially contends that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to register or use any domain name incorporating any of those marks or any variations thereof. Therefore, the Respondent would not legitimately choose this combination or any variation thereof, unless seeking to create an association to the Complainant. Apparently, the Respondent has registered the disputed domain name to create the misleading impression of being in some way associated with the Complainant, trying to exploit the fame and reputation of the Complainant's trademarks.
Furthermore, the Respondent has not used the disputed domain name in connection with bona fide offering of goods or services and has not been commonly known by this domain name but rather intends to have a free ride on the fame and the goodwill of the Complainant's trademarks.
Furthermore, the Complainant asserts that the disputed domain name was registered and is being used in bad faith, as the website at the disputed domain name is offered for sale (the Complaint provideds the screenshot of the website at the disputed domain name saying “Domain erwarben This domain may be for sale”), and therefore this is evidence of registration in bad faith according to paragraph 4 b(i) of the Policy (Charles Jourdan Holding AG v. AAIM,WIPO Case No. D 2000-0403). The website also shows links to competing products, which is evidence of bad faith use according to paragraph 4(b)(iii) of the Policy. Moreover, the Complainant argues that it is inconceivable that the Respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant. Internet users searching for the Complainant's products will use the term “Frey Wille” in order to search for the Complainant's products. The Respondent has registered the disputed domain name to create the misleading impression that he acts in accordance or that his business is in some way associated with the Complainant by registering the disputed domain name under the Top Level Domain “.com”. The Complainant is therefore of the meaning that the Respondent is trying to exploit the fame and reputation of the Complainant's FREY WILLE trademark, which indicates bad faith as outlined in paragraph 4(b)(iv) of the Policy and as the disputed domain name is a so called “domain parking” website, the intention to obtain a financial gain is given as well (see The Sportsman's Guide, Inc. v. Modern Limited, Cayman Islands,WIPO Case No. D2003-0305).
In accordance with paragraph 4(b)(i) of the Policy, for reasons described in paragraph 5 of the Complaint, the Complainant requests the Panel appointed in these administrative proceedings to issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed 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 disputed domain name; and
(iii) the disputed 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. A. Identical or Confusingly Similar
The Complainant states, that it is the proprietor of the registered trademarks consisting or containing the words FREY WILLE, explicitly internationally registered trademark M.FREY WILLE, No. 776831, priority date December 03, 2001, and internationally registered trademark FREY WILLE, No. 824396, priority date August 25, 2003. The Complainant also asserts that the disputed domain name is identical or confusingly similar to these trademarks and the addition of the “.com” suffix does not serve to distinguish the domain name from the trademark FREY WILLE.
The Panel finds that it is a well-established principle that non-distinctive additions to a trademark as well as the inclusion of the gTLD suffix “.com” and omission of blank spaces do not avoid confusing similarity of domain names and trademarks (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-aventis v. Brad Hedlund,WIPO Case No. D2007-1310). Accordingly, by registering the disputed domain name, the Respondent created a likelihood of confusion with the Complainant's trademarks. Moreover, it is likely that this domain name could mislead Internet users in thinking this is in some way associated with the Complainant.
For all the above-cited reasons, the Panel concludes that disputed domain name is identical or confusingly similar to the Complainant's trademarks in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
The Complainant essentially introduces that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to register or use any domain name incorporating any of those marks or any variations thereof. Therefore, the Respondent would not legitimately choose this combination or any variation thereof, unless seeking to create an association to the Complainant. Apparently, the Respondent has registered the disputed domain name to create the misleading impression of being in some way associated with the Complainant, trying to exploit the fame and reputation of the Complainant's trademarks. The Respondent has put forward no evidence that it holds a right or legitimate interest in the disputed domain name.
Based on the Complaint, the Panel finds that the Respondent is not affiliated with the Complainant in any way, nor has the Respondent been authorized by the Complainant to register and use the Complainant's trademarks or to seek registration of any domain name incorporating said trademarks. The Respondent never used the words “frey wille” in any way before the Complainant started its business on November 18, 1968, when it registered its company name as “FREY WILLE” GmbH & Co. KG.
The Respondent is not a licensee of the Complainant and did not obtain any authorization to use the trademarks and/or trade name of the Complainant. The Panel notes that the submitted use of the disputed domain name is to display a parking-site on which click-through-advertisements appear. There is a consensus view by previous UDRP panels that such use cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use in circumstances as the ones that are present in this case (Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang,WIPO Case No. D2005-0819).
For the above-cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Complainant has submitted evidence, unchallenged by the Respondent, that it is obvious that the Respondent knew or must have known of the Complainant's trademarks FREY WILLE and M.FREY WILLE at the time he registered the disputed domain name. Due to the fact that the disputed domain name directs Internet users to a web page relating to the Complainant's business and history, the Respondent cannot have ignored the Complainant's business reputation at the time of registration of the domain name. The disputed domain name used by the Respondent suggests that he is aware of the Complainant and that the Respondent's use of the disputed domain name will cause consumers to believe that the domain name is affiliated with or owned by the Complainant.
The Panel further finds that by using the Complainant's trademark to draw Internet users to a site offering what appears to be competing or at least related goods, the Respondent is attempting to divert customers from the Complainant and thus to disrupt the Complainant's business. Such conduct has been found to signal bad faith in other cases such as Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658.
For the above cited reasons the Panel finds that the disputed domain was registered and used in bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Ladislav Jakl
Sole Panelist
Dated: May 4, 2010
Full & Egal Universal Law Academy