The Complainant is CLAIR AG of Cham, Switzerland, represented by Noerr LLP, Germany.
The Respondent is Renewed Mind Publishing of Wilmington, Delaware, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 18, 2012. On September 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and confirming the contact details and information for the disputed domain name which is listed in the Complaint.
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 October 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2012.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on November 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. 4. Factual Background
The Complainant operates a business which refines and sells precious metals. The Complainant and its predecessor have used the trademark DEGUSSA since 1873 in association with their business activities. The Complainant’s Degussa brand is registered in association with precious metals such as gold, silver and platinum. The Complainant has licensed its subsidiary, Degussa Goldhandel GmbH to use the trademark DEGUSSA for the refining and sale of precious metals.
The Complainant owns several trademark registrations for the DEGUSSA mark, as follows:
DEGUSSA Design – German Trademark No. 30 2009 062828
DEGUSSA Design – International Trademark No. 431497A
DEGUSSA Design – Community Trademark No. 9122649
DEGUSSA Design – Community Trademark No. 8749012
The Complainant also owns a website in association with its business of refining and selling precious metals at .
The Respondent registered the disputed domain name on January 26, 2011. At the time the Complaint was filed the disputed domain name reverted to a website that provided links to third parties’ websites which offered for sale precious metals, such as gold, silver and platinum. 5. Parties’ Contentions A. Complainant
Confusingly Similar
The Complainant submits that it owns several registrations for the trademark DEGUSSA, namely German Trademark Registration No. 30 2009 062828; International Trademark Registration No. 431497A; Community Trademark Nos. 9122649, and 87490012.
The Complainant further contends that the disputed domain name is identical to the Complainant’s DEGUSSA trademark except for the addition of descriptive word “gold” and the “.com” url designation. The Complainant submits that the descriptive word “gold” does not serve to distinguish the disputed domain name from the Complainant’s registered trademark. The Complainant also submits that the addition of the “.com” designation does not serve to distinguish the domain name from the Complainant’s registered trademark.
Accordingly, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered DEGUSSA trademark.
Rights and Legitimate interests
The Complainant submits that the Respondent does not have any legitimate rights or interests in the disputed domain name . The Respondent is not commonly known by the name “Degussa”, and has never been authorized or licensed by the Complainant. The Complainant further contends that the Respondent has not used the domain name in a bona fide offering of goods and services. The disputed domain name currently reverts to a website that provides links to third parties which are direct competitors of the Complainant.
Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) Respondent must have been aware of the Complainant’s registered trademark rights in DEGUSSA, when it registered the confusingly similar domain name; (ii) Respondent is using the disputed domain name in association with the operation of a website that provides links to third parties which are direct competitors of the Complainant for purposes of monetary gain; and (iii) Respondent registered and is using a confusingly similar domain name to trade on the goodwill and reputation of the Complainant’s registered trademark, and thereby interfering with the commercial business of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest 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 Panel finds that the Complainant does have registered trademark rights in the mark DEGUSSA by virtue of its German Trademark Registration No. 30 2009 062828; International Trademark Registration No. 431497A; Community Trademark Nos. 9122649, and 87490012.
The Panel further finds that the disputed domain name is identical to the Complainant’s registered trademark DEGUSSA, except for the addition of the addition of the descriptive word “gold” and the “.com” url designation. The Panel finds that the addition of a descriptive word does not serve to distinguish a domain name from a trademark. In fact in the present circumstances, the Panel finds the addition of the word “gold” which is one of the products sold by the Complainant actually increases the confusing similarity.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel notes that the Respondent did not file any responding materials in this proceeding, and therefore did not dispute any of the facts submitted by the Complainant. Accordingly, with the evidence as filed, the Panel is prepared to find that the Respondent does not have any rights or legitimate interests in the disputed domain name . The Respondent is not commonly known by the name “Degussa2, and was clearly never authorized or licensed by the Complainant to use the registered trademark DEGUSSA.
Furthermore, the Panel is prepared to find that the Respondent is not using the disputed domain name in a bona fide manner. The disputed domain name, at the time the Complaint was filed, reverted to a website that provided links to third parties’ websites who are in direct competition with the Complainant. The Panel finds that the use of a domain name confusingly similar to a trademark in this manner is not evidence of a bona fide offering of goods and services.
Accordingly, the Panel finds that the Complainant has satisfied the required under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is prepared to find, on the evidence filed, that the Respondent must have been aware of the Complainant’s registered trademark rights in the mark DEGUSSA when it registered the disputed domain name on January 26, 2011. The Panel further concludes that the Respondent is acting in bad faith by attempting to trade on the goodwill and reputation of the Complainant’s trademark by using the disputed domain name in association with a website which provides links to websites of third parties who are in direct competition with the Complainant.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under 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.
Christopher J. Pibus
Sole Panelist
Date: November 19, 2012
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