The Complainant is Zalando GmbH of Berlin, Germany, represented by Epp & Kühl Rechtsanwaltsgesellschaft, Germany.
The Respondent is Heidi Geiger of Macedonia, Ohio, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2012. On August 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 2012, 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 September 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2012.
The Center appointed Adam Samuel as the sole panelist in this matter on October 5, 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.
On October 1, 2012, the Complainant’s representatives asked the Center for permission to amend the Complaint to request the transfer of the disputed domain name instead of its cancellation. The Center referred this matter to the Panel to decide. 4. Factual Background
The Complainant is an online retailer of clothing, shoes and accessories. It is the legal owner of a number of European Community trademarks for the name “zalando”, the oldest of which is registration no. 8686008, dated December 10, 2010 and a US trademark registration, no. 4127370, dated April 17, 2012 for the same name. The disputed domain name was registered on December 11, 2011. The Complainant markets its products through which was registered on May 22, 2008 and a variety of other domain names, typically consisting of the name “zalando” and a country code top-level domain (ccTLD) suffix such as “.de”. 5. Parties’ Contentions A. Complainant
This section sets out the Complainant’s contentions with which the Panel may or may not agree.
The Complainant has registered its trademark ZALANDO in many countries including the US in connection with the retailing of shoes, other clothes and accessories. The disputed domain name comprises the Complainant’s trademark and the generic word “style”, a common word in the English language referring to the fashion field where the Complainant uses its trademark. As such, the Respondent’s addition of “style” to the disputed domain name does nothing to reduce its confusing similarity with the Complainant’s trademark.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not generally known by the disputed domain name. Nor has it acquired any trade or service mark rights in the name ”zalando”. The word “zalando” is invented. The term “styleszalando” is not a term which would be chosen unless seeking to create a misleading impression of an association with the Complainant. The Complainant has not authorized, licensed or otherwise consented to the Respondent’s use of its trademark ZALANDO.
The disputed domain name resolves to a website where shoes and underwear are being sold. It appears to be operated in order to deceive consumers. The website contains neither legal information about the identity, telephone number or address of the owner of the website nor information about the privacy or conditions of use. Several consumers have complained about having been deceived by the online shop operating from the website. Shoes ordered through the website and paid for through the PayPal service are never delivered. The Respondent appears to have stolen the contact details of a Mrs. Geiger in order to provide false address information for the purpose of the domain name registration.
Given the fame and success of the ZALANDO trademark, it is difficult to envisage how the disputed domain name could be registered in good faith and used by the Respondent without the knowledge that consumers would be likely to consider it to be associated in some way with the Complainant’s trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which they have 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. A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant’s trademark, the generic word “style”, often associated with shoes, clothes and accessories, and the necessary standard generic top-level domain name (gTLD) suffix “.com”. The addition of generic words (such as “style”) and the gTLD suffix “.com” to a trademark does not prevent the resulting domain name from being confusingly similar to the trademark concerned. This is particularly the case here where the trademark is an invented word and the generic word added to it is naturally associated with the products marketed using the trademark concerned. For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Respondent is not called “Zalando” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. The Respondent has never asserted any rights or legitimate interests in that name. For these reasons, and in the absence of any response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Respondent’s website to which the disputed domain name resolves indicates clearly that the Respondent is well aware of the Complainant’s trademark. Through the website, the Respondent seeks to market the Complainant’s type of products even though the Complainant’s trademark is an invented word unconnected with those types of products. This would be sufficient on its own to justify a conclusion that the dispute domain name was registered and is being used in bad faith.
The case file also shows that consumers have bought goods using the website to which the dispute domain name resolves and not received them. This appears from extracts taken from a chatroom website provided by the Complainant as part of its evidence. There is also evidence from the same website that the registrant of the disputed domain name have used the contact details of the named Respondent to register the disputed domain name. A Mrs. Geiger wrote into protest the misuse of her name and contact details for this purpose.
The case file shows that the Complaint was notified to the Respondent not only through conventional methods but by a message through the contact page on the website to which the dispute domain name resolves. In the circumstances, the Respondent’s failure to respond means that the Panel must conclude that the allegations made in the Complaint are correct.
For all these reasons, the Panel concludes that the Respondent registered and is using the dispute domain name in bad faith. 7. Decision
The Complaint requested the cancellation of the disputed domain name. As indicated above, the Center received an application on October 1, 2012, to amend the Complaint to request the transfer, rather than the cancellation, of the disputed domain name, after the Complaint was notified to the parties.
Paragraph 10(a) and (b) of the Rules reads as follows:
“(10) General Powers of the Panel
(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.”
This rule gives the Panel a broad discretion in the way in which it conducts these proceedings “as it considers appropriate.”
The purpose of the proposed amendment to the Complaint is to ensure that once any decision favourable to the Complainant is reached and enforced by the Registrar of the dispute domain name, somebody else does not immediately register the same domain name. Under the Policy, the Panel is required to order the transfer of the disputed domain name to the Complainant if the Complainant proves the three elements described above and requests this remedy. This is not a matter of discretion. So, submissions or evidence on the appropriateness or otherwise of order the transfer of the domain name would have no impact on the outcome of the case if the Panel permitted the amendment concerned.
In the specific circumstances of this case, this Panel considers it appropriate to allow the amendment to the Complaint requested. The Complainant has provided sufficient evidence to justify the Panel in ordering the transfer of the disputed domain name. Such a conclusion would have required the Panel to order this transfer had it been requested in the original Complaint. As indicated above, there is no point in giving the Respondent an opportunity to comment on the appropriateness of the remedy. The Respondent has in any event declined to comment on the merits of the Complaint. Providing an opportunity for the Respondent to comment now on this essentially formal amendment would just prolong these proceedings unnecessarily without any increase in fairness to the Respondent.
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 the Complainant.
Adam Samuel
Sole Panelist
Dated: October 30, 2012
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