The Complainant is MUSTANG Bekleidungswerke GmbH & Co. KG of Künzelsau, Germany, represented by Reed Smith LLP, Germany.
The Respondent is Kai Schünemann dba Dreambuy of Aachen, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with PSI-USA, Inc. dba Domain Robot. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2010. On June 2, 2010, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot a request for registrar verification in connection with the disputed domain name. On June 4, 2010, PSI-USA, Inc. dba Domain Robot 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 9, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 29, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2010.
The Center appointed Brigitte Joppich as the sole panelist in this matter on July 27, 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is a German company founded in 1958, which manufactures and distributes all kinds of clothing, footwear, headgear and accessories and is widely known in Germany, especially in connection with blue jeans.
The Complainant is registered owner of numerous trademarks containing the word “Mustang”, including German registration no. 722702 MUSTANG, registered on March 3, 1959, German registration no. 1058413 MUSTANG, registered in January 16, 1984 and Community registration no. 357178 MUSTANG, registered in February 6, 2003 (hereinafter referred to as the “MUSTANG-Marks”).
Furthermore, the Complainant is registered owner of domain names including the term “Mustang”, inter alia .
The disputed domain name was registered on February 4, 2006 by the Respondent, who has been an authorized dealer of the Complainant’s products until July 23, 2008, when the cooperation was terminated, and used to sell the Complainant’s products in his store in Aachen, Germany. The Respondent used the disputed domain name in connection with a website offering the Complainant’s products for sale as well as products from the Complainant’s direct competitors like “Bruno Banani”, “Vanzetti” and “Sendra”. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the MUSTANG-Marks from which it only differs by the addition of the generic word “schuhe”, which is the German term for “shoes”, and which does not eliminate the similarity between the Complainant’s trademark and the disputed domain name.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as he was neither authorized to use the Complainant’s famous MUSTANG-Marks nor to register a domain name including any of its trademarks, as the Respondent is (no longer) an authorized reseller of the Complainant’s products, as the Respondent has not been using the disputed domain name in connection with a bona fide offering of goods or services, as he used the disputed domain name in connection with products of the Complainant’s direct competitors, as the Respondent has not been and is not commonly known by the disputed domain name, as the Respondent has not acquired any trade marks or other rights in the name, and, finally, as the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.
(3) The domain name was registered and is being used in bad faith. The Complainant contends that the Respondent as a reseller of the Complainant’s products must have been aware of the MUSTANG-Marks when registering the disputed domain name. With regard to bad faith use, the Complainant contends that the Respondent’s use of the disputed domain name in connection with a website offering products from the Complainant’s competitors is clear evidence of bad faith as the Respondent improperly used the Complainant’s marks to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of the website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trade mark; 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. A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s MUSTANG-Marks in which the Complainant has exclusive rights.
The additional word “schuhe” (the German word for “shoes”) following the term MUSTANG in the disputed domain name is merely generic and describes one of the Complainant’s products. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Crocs, Inc. v. Chadd Chustz, NAF Claim No. 1002536 (); Z, Inc. v. Z Inc, NAF Claim No. 999674 (); Louis Vuitton Malletier S.A. and Marc Jacobs Trademarks, L.L.C. v. Unasi Inc., NAF Claim No. 603008 ( et al.)).
Furthermore, it is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has asserted that the Respondent has no rights or legitimate interests in the disputed domain name as he was neither authorized to use the Complainant’s famous MUSTANG-Marks nor to register a domain name including any of its trademarks, as he is no authorized reseller of the Complainant’s products, as he has not been using the disputed domain name in connection with a bona fide offering of goods or services, as he has not been and is not commonly known by the disputed domain name, as he has not acquired any trade marks or other rights in the name, and as he is not making a legitimate non-commercial or fair use of the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
Furthermore, based on the evidence before the Panel, the Respondent’s use of the disputed domain name was not bona fide under the Policy. The Panel is aware that a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if the use fits certain requirements, including the fact that the respondent must use the site to sell only the trademarked goods, as otherwise he could be using the trademark to bait Internet users and then switch them to other goods (cf Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Mariah Boats, Inc. v. Shoreline Marina, LLC, NAF claim No. 94392; Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774; Experian Information Solutions, Inc. v. Credit Research, Inc.,WIPO Case No. D2002-0095). The Complainant provided evidence that the Respondent used the disputed domain name to market not only the Complainant’s products but also products of the Complainant’s competitors. Therefore, the Respondent’s use of the disputed domain name was not bona fide under the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive. The Complainant must show that the domain name was registered in bad faith and is being used in bad faith (cf. Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Telstra Corporation Limited v. Adult Web Development and Telstraexposed,WIPO Case No. D2002-0952; Prada S.A. v. Mr. Chuan Sheng Wang,WIPO Case No. D2003-0758).
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the MUSTANG-Marks for the following reasons: the Complainant is widely known in Germany and has been carrying on business activities under the MUSTANG-Marks for many decades. The Respondent has been a reseller of the Complainant’s products. It is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s rights. Noting also the use of the disputed domain name to sell competing products to the Complainant’s products, the Panel is satisfied that the Respondent registered the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.
As to bad faith use, by fully incorporating the MUSTANG-Marks into the disputed domain name and by using such domain name in connection with a website offering the Complainant’s competitors’ products for sale, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain. Such use and exploitation of trademarks to obtain commercial profit from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy. The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 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.
Brigitte Joppich
Sole Panelist
Dated: August 10, 2010
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