The Complainant is Mr. Ralph Anderl of Berlin, Germany, represented by Habermann, Hruschka & Schnabel, Germany.
The Respondent is Shenzhen Shenzhen911 of Guandong, 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 June 21, 2013. On June 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 21, 2013, the Registrar 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 July 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 23, 2013.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on July 30, 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
Complainant is owner or co-owner of trademarks including IC, IC!, IC! BERLIN, and IC-BERLIN (the “IC! BERLIN” marks), which are registered throughout the world, including China, in which Respondent resides. The IC! BERLIN marks are licensed exclusively to the German company ic! Berlin brillen GmbH, which manufactures designer spectacles, sunglasses, parts and accessories sold under the IC! BERLIN marks. Complainant is the Managing Director of ic! Berlin brillen GmbH, which also markets IC BERLIN sunglasses on its website at “”.
Respondent registered the disputed domain name on June 28, 2012. The disputed domain name reverts to a website depicting sunglasses marketed under the IC! BERLIN marks. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has rights in the IC! BERLIN marks. It contends that the disputed domain name is confusingly similar to Complainant’s marks because it consists of Complainant’s IC! BERLIN mark in its entirety, and that the only difference between Complainant’s IC! BERLIN mark and the disputed domain name is the addition of the descriptive word “wholesale”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must prove each of the following:
(i) the 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 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
As set forth above, Complainant is the owner or co-owner of the IC! BERLIN marks. The disputed domain name is confusingly similar to Complainant’s IC! BERLIN marks. It contains Complainant’s IC! BERLIN marks in their entirety. The only difference between Complainant’s IC! BERLIN mark and the disputed domain name is the addition of the common word “wholesale”, which is connected to “berlin” by a hyphen. Numerous previous WIPO UDRP decisions have held that the addition of a common word or hyphen does not distinguish a domain name from a complainant’s mark or preclude a finding of confusing similarity. See, e.g. Wal-mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; Hertz System, Inc. Hertz Equipment Rental Corp. v Vasilina Fedotova, WIPO Case No. D2012-2526.
Accordingly, the Panel finds that Complainant has rights in the IC! BERLIN marks and that the disputed domain name is confusingly similar to Complainant’s marks. Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has rights in its IC! BERLIN marks and has not authorized Respondent or anyone else to register or use the disputed domain name . Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the IC! BERLIN marks. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that:
“for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
[…]
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
It is difficult to conceive that Respondent did not know of Complainant’s marks and products when Respondent registered the disputed domain name. As set forth above, the IC! BERLIN marks are protected by various worldwide trademark registrations, including in China, where Respondent resides. The disputed domain name reverts to a website showing products identical to Complainant’s products and sold under Complainant’s IC! BERLIN marks, which reinforces the inference that Respondent was aware of Complainant’s marks. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain names, and therefore registered them in bad faith. See, e.g., Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.
In this Panel’s view, it is clear that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or of products on Respondent’s website, thus using Complainant’s marks in bad faith. The disputed domain name reverts to a website showing products identical to Complainant’s products, and which are sold under Complainant’s IC! BERLIN marks. The content appears to be designed to reinforce the Internet user’s impressions that the disputed domain name belongs to Complainant. The resulting confusion is grounds for a finding of bad faith use under paragraph 4(b)(iv) of the Policy. See Pandora Jewelry, LLC v ke ying, no, bing jin, fcgem, Wei Pang, na no and fcg, xiong mao, WIPO Case No. D2010-0642.
Additionally, the products sold on Respondent’s website appear to be identical to Complainant’s products, but sold at much lower prices, which Complainant asserts, is evidence that Respondent’s products are counterfeits, and which disrupt Complainant’s business. Other UDRP panels have held that the sale of counterfeit products is an indication of bad faith under paragraph 4(b)(iii) of the Policy. See Guccio Gucci SpA v. Liuqing Wu, Feiji Lu, WIPO Case No. D2011-1506; Moncler S.r.l. v. Linsaihui, WIPO Case No. D2010-1676; Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith. Complainant has established the third element of paragraph 4(a) 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 Complainant.
Sandra A. Sellers
Sole Panelist
Date: August 2, 2013
Full & Egal Universal Law Academy