The Complainant is Mr. Ralph Anderl of Berlin, Germany, represented by Habermann, Hruschka & Schnabel, Germany.
The Respondent is Yang Min of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2013. On July 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2013, 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. On July 10, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On July 10, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2013.
The Center appointed Douglas Clark as the sole panelist in this matter on August 13, 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 mark 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 and has registrations in Germany and China as well as under the CTM, and the Madrid system.
The disputed domain name was registered on March 13, 2013. The Respondent appears to be using the disputed domain name to market eyeglasses products, including products branded with the IC Marks. 5. Parties’ Contentions A. Complainant
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.
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 trademarks; the absence of the exclamation mark is immaterial since such characters cannot be replicated in domain names. The additional word “sale” is generic.
The Respondent’s website under the disputed domain name features the corporate logo of ic! berlin brillen GmbH, so as to leave the impression that the website originally refers to the Complainant’s company.
The Complainant submits 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 spectacles offered on the website under the disputed domain name are in a price range of USD 125. This is below the retail price offered by the Complainant’s company. Therefore, the spectacles offered seem to be counterfeits spectacles of ic! berlin brillen GmbH.
Furthermore, the Complainant states that the Respondent is not known to the Complainant and is not an authorized dealer of the Complainant.
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 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 eyeglasses of ic! berlin brillen GmbH.
Finally, the Complainant submits that the website at the disputed domain name is identical to the websites of Ralph Anderl v. Yang Min,WIPO Case No. D2013-0890 and Ralph Anderl v. Luo Zhu,WIPO Case No. D2013-0892 relating to the domain names and . B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Language of Proceedings
The language of the Registration Agreement for the disputed domain name is Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complaint was filed in English. The Complainant requested the language of the proceedings be English on the grounds that the information and content presented on the website under disputed domain name is exclusively and entirely in English. No other language options can be selected by the user. Further, the currency by which the products are offered is US dollars only. Thus, the products offered via that website are clearly directed to the English speaking markets.
It is clear that the Respondent understands English. On this basis, the Panel determines the language of proceedings to be English. Substantive Decision
Paragraph 4(a) of the Policy sets out three elements that must be established by the Complainant to obtain relief. These are:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has 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 is confusingly similar to the Complainant’s IC! BERLIN trademark. The disputed domain name incorporates the Complainant’s IC! BERLIN trademark entirely. The absence of the exclamation mark is immaterial.
The mere addition of generic words such as the term “sale” does not dispel the confusing similarity. According to previous UDRP decisions, the “addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP” (see paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The disputed domain name is confusingly similar to the Complainant’s registered trademark.
The first element of the UDRP is made out. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case. The Respondent’s use of the disputed domain name does not meet the requirements laid down in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 for websites involving the legitimate resale of trademarked goods.
Since the Complainant has made out a prima facie case that the Respondent has not rebutted, the Panel finds that the second element of the UDRP is made out. C. Registered and Used in Bad Faith
The Panel also finds that the disputed domain name has been registered in bad faith and is being used in bad faith.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
(iv) “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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.”
This has clearly happened in this case. 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.
Douglas Clark
Sole Panelist
Date: August 25, 2013
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