The Complainant is WIKA Alexander Wiegand SE & Co. KG of Klingenberg, Germany, represented by RWZH rechtsanwälte, Germany.
The Respondent is CV. Media Kreasi Utama of Medan, Indonesia. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. (the “Registrar”) 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2011. On December 8, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 2011, the Registrar 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 December 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2012.
The Center appointed Lone Prehn as the sole panelist in this matter on January 10, 2012. 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
The Complainant is a company based in Germany, doing business in the field of measuring apparatus.
The Complainant is the registered owner of numerous trademarks containing the term “Wika” in various countries, including inter alia International trademark registration no. 438667 (WIKA), registered on June 16, 1978 and covering inter alia fastening and connecting elements, namely screw joints, french caps and connections for metal tubes and pipes; Community Trademark registration no. 004544169 (wikaramic) for apparatus for measuring pressure and temperature and registered on June 26, 2006; and German trademark registration no. 632621 (design trademark WIKA), registered on January 14, 1953 covering mechanical processed shell moulds, namely parts of metal gaskets (hereinafter referred to as the “WIKA Marks”).
The Complainant has been producing and selling fastening and connection elements, measuring instruments, gauges and bearings, among others, for more than 60 years and the Complainant uses the WIKA Marks, among other trademarks, worldwide for its measuring instruments and gauges. The Complainant has branches worldwide, including in India, where the concerned Registrar is located. The Complainant’s trademarks are registered inter alia for valves.
The disputed domain name was registered on June 30, 2010 and is used in connection with a website offering WIKA bearings from what it purports to be “Wika Bearing office” in Germany. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is satisfied 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 “bearing”, which is descriptive of goods sold by the Complainant under its WIKA Marks.
(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. On the website hosted at the disputed domain name, the registered trademark of the Complainant is used and the impression is given that the website’s homepage is an official homepage of the Complainant or one of its subsidiaries. However, the products sold at this website, inter alia, bearings, are not original products from the Complainant.
The address and telephone number of the Complaint is displayed on the website hosted at the disputed domain name. The Respondent trades under the name “Wika Bearing Office” and uses the official address, telephone number and facsimile number of the Complainant in order to mislead Internet users. However, not the email address of the Complainant but the email address of the Respondent is used on the website. The domain name which has been used for the email was registered fraudulently.
(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 trademark in a 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 trademark. 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 trademark; 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 “bearing” following the trademark WIKA in the disputed domain name is merely generic and describes one of the Complainant’s products. It is well established that a disputed 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 “bearing”.
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 (see 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
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent failed to submit any response and has thus not denied these assertions in any way.
Based on the evidence before the Panel, the Panel cannot find that the Respondent has any rights or legitimate interests in the disputed domain name. In particular, the Complainant provided evidence that the Respondent misleads Internet users by using the disputed domain name in connection with a website that appears to be the Complainant’s official homepage, but with a misleading email address. The Panel considers it to be prima facie evidence of the Respondent’s lack of rights or legitimate interests in the disputed domain name that the Respondent provides the Complainant’s address, phone and fax number on the homepage but its own email address.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its trademark rights in the WIKA Marks. The disputed domain name is composed of the The Complainant’s WIKA Marks and the word “bearing”, which describes one of the Complainant’s 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 bearings, this Panel finds it to be inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant and its rights in the WIKA Marks.
Regarding 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 bearings, the Respondent was, in all likelihood, trying to divert traffic intended from 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 the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Lone Prehn
Sole Panelist
Dated: January 19, 2012
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