The Complainant is Ralph Anderl of Berlin, Germany, represented by Habermann, Hruschka & Schnabel, Germany.
The Respondent is Hansin Liu of Guangdong, China. 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 December 4, 2012. On December 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2013.
The Center appointed Angela Fox as the sole panelist in this matter on January 16, 2013. 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 the managing director of ic! berlin brillen GmbH of Berlin, Germany, a manufacturer of designer spectacles sold under the brand “ic! berlin”.
The Complainant owns or co-owns registrations throughout the world for trademarks comprising or incorporating IC, IC!, IC! BERLIN AND IC!-BERLIN (“the IC Marks”) in plain and stylized forms in respect of eyeglasses and related goods throughout the world. These include the following, details of which appeared in Annex II to the Complaint:
- German trademark registration no. 39754661 for IC!, registered on May 11, 1998 in Classes 9, 14 and 28;
- Community trademark registration no. 008555641 for IC! BERLIN, registered on March 16, 2010 in Classes 9, 35 and 44; and
- International trademark registration no. 866475 for IC! BERLIN, registered on December 20, 2004 in Classes 9, 16 and 25.
The Complainant submits that its IC! BERLIN eyeglasses are internationally famous and have been honored with several design awards.
The Complainant licenses the IC Marks exclusively to ic! berlin brillen GmbH, which uses them extensively in connection with the design, development, manufacture, sale and marketing of eyeglasses, sunglasses, eyeglass frames, eyeglass cases and lenses. Details of the business carried out under the IC Marks taken from ic! berlin brillen GmbH’s website at “’’ appeared at Annex III to the Complaint.
The disputed domain name was registered on September 18, 2012. The Respondent uses it to market a range of ostensibly branded third-party eyeglasses and related products, including products branded with the ic Marks and those of competing brands such as Oakley and Silhouette.
The Respondent’s website features the corporate logo of ic! berlin brillen GmbH, as shown in Annex IV to the Complaint.
Annexed to the Complaint also was an affidavit of the Complainant’s German lawyer, attesting to a trap purchase order that he submitted to the Respondent’s website for a pair of eyeglasses under the model “ic! berlin model greg gold” for USD 62.50 on November 21, 2012. In response to that order, an individual by the name of Candy Liu on behalf of the Respondent emailed the Complainant’s German lawyer stating that “our glasses are 1:1 copy” and asking that the payment request through PayPal be submitted with the order number only, and expressly without reference to the product name or brand. The Complainant surmises that this was done with the intention of preventing PayPal from learning that the Respondent was using its PayPal account to facilitate the sale of counterfeit goods, as PayPal could in those circumstances close down the Respondent’s account. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the IC Marks. The element “icberlin” is essentially identical to the Complainant’s IC BERLIN AND IC! BERLIN marks; the absence of the exclamation mark is immaterial since such characters cannot be replicated in domain names. The additional word “eyeglasses” is purely descriptive of the Complainant’s goods, such that use of the disputed domain name is likely to give rise to a likelihood of confusion.
The Complainant submits moreover that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed the Respondent to use the IC Marks. The Complainant submits that the Respondent has been using the disputed domain name to offer counterfeit copies of IC! BERLIN-branded eyeglasses, and that the Respondent’s unauthorized use of the corporate logo of ic! berlin brillen GmbH on the website linked to the disputed domain name reinforces the impression that the disputed domain name is that of or in some way connected to or authorized by the Complainant. The Complainant submits that this is not a bona fide offering of goods within the meaning of the Policy.
Finally, the Complainant submits that the disputed domain name was registered and is being used in bad faith to market counterfeit copies of its branded eyewear. The Complainant notes that the IC Marks are registered inter alia in China, where the Respondent is based. The Complainant submits that the Respondent registered and has used the disputed domain name with the aim of disrupting the business of the Complainant’s company and to mislead consumers so as to gain commercially from the sale of counterfeit goods to consumers who were attracted to the website in the erroneous belief that they would be able to order genuine IC! BERLIN eyeglasses there. B. Respondent
The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) a respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy. A. Identical or Confusingly Similar
The Complainant has shown that it owns registered trademark rights in IC, IC! BERLIN and marks incorporating these. The disputed domain name incorporates the Complainant’s distinctive ic and ic! berlin trademarks in their entirety and differs only in the addition of the non-distinctive English word “eyeglasses”.
The presence of relevant descriptors or non-distinctive matter in a disputed domain name does not normally avoid confusing similarity between a domain name and a complainant’s trademark, and indeed it often heightens the risk (see, inter alia, Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709, where the panel held, “the mere addition of a descriptive term to an identical trademark, has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” and Pfizer Inc. v. Juan Gonzales,WIPO Case No. D2004-0589, where the panel held, “it is an established principle that the mere addition of generic terms and/or numbers does not create a different trademark in which the respondent has rights and cannot be considered sufficient to avoid confusion between the domain name and the complainant’s trademark.”).
The word “eyeglasses” is a relevant descriptor since it directly describes the Complainant’s goods. Taken together, all the elements in the disputed domain name combine to suggest a website where the Complainant’s IC! BERLIN-branded eyewear can be bought.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s IC Marks. B. Rights or Legitimate Interests
The Complainant has never authorized, licensed or permitted the Respondent to use the IC Marks; indeed, the Complainant’s exclusive licensee is its own company, ic berlin brillen GmbH. The Respondent does not appear to have been commonly known by a name corresponding to the disputed domain name.
The Respondent has made no effort to refute the allegation that it has no rights or legitimate interests in the disputed domain name.
There is nothing on the facts of this case to suggest that the Respondent could invoke any of the circumstances listed in paragraph 4(c) of the Policy in order to demonstrate a right or legitimate interest in the disputed domain name.
Although the Respondent appears to have used the disputed domain name to offer the Complainant’s branded eyewear for sale, such use does not appear to be use in connection with a bona fide offering of goods in accordance with paragraph 4(c)(i) of the Policy. The IC! BERLIN-branded goods offered through the Respondent’s website are not in fact genuine goods, but rather, by the Respondent’s own admission, unauthorized copies. The Respondent’s use of a domain name that is confusingly similar to the Complainant’s trademarks in order to attract Internet users looking for genuine products of the Complainant’s company and to then offer them unauthorized copies instead is a “bait and switch” strategy that lacks bona fides and does not give rise to a right or a legitimate interest under the Policy.
As noted by the panel in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”, WIPO Case No. D2000-0847, trading upon the name, goodwill and reputation of another by misleadingly attracting Internet users for commercial gain cannot be considered to constitute a bona fide commercial or fair use within the meaning of paragraph 4(c)(i) of the Policy. In that case the panel held that:
“use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services […] to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.”
Numerous panels have found under the UDRP that “once the Complainant makes a prima facie showing that the registrant does not have rights or legitimate interests in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name” (see, for instance, The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064).
The Panel finds that the Complainant has made out a prima facie case under this heading, and the Respondent has done nothing to refute it. The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant has shown in evidence that its IC Marks are in use in relation to designer eyewear.
The Respondent’s use of the Complainant’s IC Marks on the website linked to the disputed domain name demonstrates that the Respondent was aware of the Complainant and its IC Marks at the time the disputed domain name was registered. The disputed domain name appears to have deliberately been chosen with the intention of attracting Internet users by creating a likelihood of confusion with the Complainant’s IC Marks, with the intent to gain commercially through the sale of unauthorized imitations.
By its conduct, the Respondent is essentially free-riding on the goodwill of the Complainant’s IC Marks and disrupting the Complainant’s business by diverting and misleading consumers looking for genuine products of the Complainant’s company and instead offering them what appear to be counterfeit products. Such activities are inherently damaging to the Complainant’s rights and legitimate business interests.
These circumstances allow the Panel to infer that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) 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.
Angela Fox
Sole Panelist
Date: January 30, 2013
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