Complainant is dm-drogerie markt GmbH + Co. KG, Karlsruhe, Germany, represented by Lemcke, Brommer & Partner Patentanwälte, Karlsruhe, Germany.
Respondent is Aleksey Maksimyuk, Kiev, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2011. On April 1, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. a request for registrar verification in connection with the disputed domain name(s). On April 3, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that 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 April 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2011. The Respondent did not submit any response. Accordingly, the Center issued a notification confirming Respondent’s default on May 2, 2011.
The Center appointed Clark W. Lackert as the sole panelist in this matter on May 18, 2011. 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. 4. Factual Background
Complainant dm-drogerie markt GmbH was founded in 1973 and has since been using the trademark and service mark DM in word form and various stylized design forms for drugstores and products sold in drugstores including cosmetics and cleaning products. Complainant owns multiple trademark registrations for the word mark DM and stylized/design marks featuring DM which cover the European Community and various jurisdictions in Eastern Europe including Belarus, Macedonia, Moldova, Romania, the Russian Federation, and the Ukraine. These registrations cover, amongst other goods and services, cosmetic products, cleaning products, and drugstores. Complainant sells branded products at its drugstores which feature the DM trademark and has provided pages from its website showing that it sells goods under the product names “Balea”, “Das Gesunde Plus”, “Dein Bestes”, “Denk Mit”, “Dontodent”, “Sundance”, “Quality Brands”, “S-qito Free”, “Jessa”, “Sanft & Sicher”, “Paradeies”, and others. Complainant has provided copies of warning letters sent to Respondent and a copy of a legal action initiated against Respondent with the local District Court of Kiev in the Ukraine.
The disputed domain name was created on January 12, 2010 and is registered to Respondent. The disputed domain name advertises cosmetic products in the Russian language under various brand names including many of those advertised on Complainant’s website. At one time the disputed domain name featured one of Complainant’s design marks featuring DM accompanied by “DM UKRAINE”. 5. Parties’ Contentions A. Complainant
Complainant claims that the disputed domain name is confusingly similar to the DM trademarks in which Complainant has rights because it is composed of the letters DM which are identical to the literal elements in Complainant’s trademarks and the term “Ukraine”, which Complainant suggests is non-distinctive because it merely indicates Respondent’s place of business. Complainant alleges that Respondent has no rights or legitimate interests in the term DM and that Respondent was aware of Complainant’s rights in the term due to Complainant’s established trademark rights in Respondent’s home country of the Ukraine. Complainant notes that Respondent offers similar and identical goods to those offered by Complainant under its DM trademarks on the disputed domain name, and that the content features Complainants trademarks and Complainant’s brands. Regarding bad faith, Complainant claims that the advertisement of Complainant’s goods on the disputed domain names falsely suggests that Respondent is associated with Complainant that this use is an intentional attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s DM trademarks. Complainant also claims that Respondent attempted to conceal his identity by deleting his street name and changing his postal code in WHOIS records. This point is supported by copies of correspondence between Complainant and its local counsel for the Ukraine, which advised that The District Court of Kiev was unable to accept Complainant’s court action because the local population register did not reflect Respondent’s address in the Ukraine.
Complainant requests that ownership of the disputed domain name be transferred from Respondent to Complainant. B. Respondent
Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is composed of the letters “DM” and the country name “Ukraine”. The letters “DM” are identical to the literal components of the trademarks in which Complainant has established rights. The incorporation of the country name “Ukraine” does not add distinctiveness. It has been established by numerous prior panel decisions that the combination of a trademark with the name of a country to form a domain name does not avoid a likelihood of confusion. See, e.g., Toyota Jidosha Kabushiki Kaisha a/k/a Toyota Motor Corporation v. Atma Estate,WIPO Case No. D2006-1231 (holding that was confusingly similar to the LEXUS trademark), L'Oréal SA v. LV Kefeng,WIPO Case No. D2009-1231 (holding that the addition of common geographical terms to trademarks to form the domain names and resulted in domain names which were confusingly similar to the trademarks), and Dollfus Mieg et Compagnis (DMC) v. Jesse,WIPO Case No. D2002-1137 (holding that “the addition of the name of a country as a suffix normally indicates that it is the domain name of the trademark owner for the business activities in that country”).
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant’s trademark rights in DM precede the creation of the disputed domain name on January 12, 2010. There is no evidence in the record that Respondent is licensed to use Complainant’s DM trademarks, that Respondent is associated with or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in DM as a trademark or trade name.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The record shows that Complainant has established trademark rights in DM in multiple jurisdictions including Ukraine, the country cited as Respondent’s jurisdiction of residence. Complainant’s trademark rights precede the creation of the disputed domain name.
According to Paragraph 2 of the Domain Registration Agreement between Respondent and the registrar for the disputed domain name, Respondent agreed to provide, maintain, and update current complete and accurate WHOIS information at the time the disputed domain name was registered. The case file indicates that at least some of the WHOIS contact information provided is inaccurate and also suggests that the name provided by Respondent is false. Specifically, all of the correspondence sent to Respondent pertaining to this case could not be delivered. The courier service used to forward a copy of the complaint informed WIPO that the recipient name did not correspond to the address provided, while the District Court of Kiev informed counsel for Complainant that an action could not be pursued against Respondent because the name and address provided as WHOIS contact information did not correspond with local population records. The provision of false or misleading WHOIS contact information has been cited in numerous past decisions as grounds for findings of bad faith registration. See, e.g., Forte Communications, Inc. v. Service for Life,WIPO Case No. D2004-0613 (finding bad faith noting that Respondent had “purposefully used false information in registering the Domain Name to conceal Respondent’s identity and to make it difficult to locate Respondent for purposes of lawfully pursuing the Domain Name”) and BellSouth Intellectual Property Corporation v. Real Yellow Pages,WIPO Case No. D2003-0413 (finding bad faith noting that correspondence sent to Respondent was returned as undeliverable).
Regarding bad faith use, the website content of the disputed domain name confirms that Respondent is aware of Complainant. Specifically, the webpages featured on the domain name feature potentially copyrighted images and descriptions of Complainant’s products and at one time incorporated Complainant’s DM logo house mark. Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, this constitutes evidence of bad faith registration and use. It is likely that consumers accessing Respondent’s website will believe that the content is sponsored, endorsed, or authorized by Complainant because the websites feature Complaints goods and Complainant’s trademarks. This use supports a finding of bad faith. See e.g. Las Vegas Sands, LLC v. Hsiu Chin Kuo,WIPO Case No. D2006-1377 (“Respondent’s use of the Domain Name in connection with on-line gaming services that compete with Complainant’s services demonstrates an intentional attempt to attract Internet users to Respondent’s site by creating confusion as to source, sponsorship of, affiliation with or endorsement by Complainant.”) and Tigre S.A. Tubos eConexoes v. Tubo Forte, S.A.C., WIPO Case No. D2008-1337 (finding that where the domain name at issue resolves “[t]o a web site at which goods directly competitive to those of Complainant are offered for sale. This is a direct violation of paragraph 4(b)(iv) of the Policy.”). Moreover, the disputed domain name incorporates the country name “Ukraine” and displays a contact phone number based in this country. These factors combined with the use of Complainant’s trademarks could lead consumers to believe that the domain name serves as the Ukranian website for Complainant.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For 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 Complainant.
Clark W. Lackert
Sole Panelist
Dated: June 7, 2011
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