The Complainant is WIKA Alexander Wiegand SE & Co. KG of Klingenberg, Germany, represented by RWZH Rechtsanwälte Partnerschaft, Germany.
The Respondent is WIKA ARMATUREN GmbH & Co. KG of Hamburg, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2010. On November 10, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On November 10, 2010, Tucows 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 12, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 2, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2010.
The Center appointed Brigitte Joppich as the sole panelist in this matter on December 10, 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 company based in Germany, doing business in the field of measuring apparatus, especially valves.
The Complainant is the registered owner of numerous trademarks containing the term “wika” in various countries, including Germany, where the Respondent is located, inter alia International trademark registration no. 438667 WIKA, registered on June 16, 1978, and German trademark registration no. 632621 WIKA & design, registered on January 14, 1953 (hereinafter referred to as the “WIKA Marks”). The Complainant’s trademarks are registered inter alia for valves.
The disputed domain name was registered on February 3, 2005 and is used in connection with a website offering valves. 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 Complainant states that the disputed domain name is confusingly similar to the highly distinctive WIKA Marks as it only differs from such marks by the word “valve”, which is descriptive of the Complainant’s main products.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as there is no evidence that the use of the disputed domain name by the Respondent constitutes a bona fide offering of goods or services. The Complainant states that the Respondent has not been and is not commonly known by the disputed domain name. The Complainant also states that the Respondent’s address provided in the WhoIs database is incorrect as there is no such address in Hamburg, Germany, that the company registered as owner of the disputed domain name has never been listed in the German Commercial Register and therefore does not exist, and that the phone number provided in the WhoIs database is also incorrect.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant alleges that the disputed domain name was registered in order to prevent the owner of the trademark from reflecting the mark in the corresponding domain name, that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant, and that the Respondent intentionally attempted to attract for financial gain Internet users to the registrant’s web site or other online locations, by creating a likelihood of confusion with the Complainant’s mark. 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 WIKA Marks in which the Complainant has exclusive rights.
The additional word “valve” following the term WIKA in the disputed domain name is merely generic and describes one of the Complainant’s main 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, such as “valve” (cf. Balon Corporation v. Bolon Valves Company c/o Bolon, NAF Claim No. 1125156 (); Norgren, Inc. v. Norgren, Inc. c/o Domain Administrator, NAF Claim No. 670051 ()).
Furthermore, it is well established that the generic 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 noncommercial 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 substantiated that the Respondent has no rights or legitimate interests in 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.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent in the disputed domain name either. In particular, the Complainant provided evidence that the Respondent does not exist, as the Respondent’s company has never been registered with the German Commercial Register. Therefore, the Respondent cannot rely on any rights based on the name registered as owner of the disputed domain name. Furthermore, it is well established that there is no bona fide offering of goods and services where the use of the disputed domain name for such offering constitutes a trademark infringement (cf Serta, Inc. v. Maximum Investment Corporation,WIPO Case No. D2000-0123).
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 Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the WIKA Marks. The disputed domain name is composed of the Complainant’s WIKA Marks and the word “valve”, which describes one of the Complainant’s main products. Given the distinctiveness of the Complainant’s WIKA Marks and the actual use of the disputed domain name by the Respondent in connection with a website offering valves, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant and its rights in the WIKA Marks.
As to bad faith use, by fully incorporating the WIKA Marks into the disputed domain name and by using such domain name in connection with a website offering valves, which constitutes an infringement of the Complainant’s right in its WIKA Marks, 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 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: December 20, 2010
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