The Complainant is SALUS Haus Dr. med. Otto Greither Nachf. GmbH & Co. KG of Bruckmuehl, Federal Republic of, Germany, represented by Guangsheng & Partners, China.
The Respondent is wa tai of Taiwan, China. 2. The Domain Names and Registrar
The disputed domain names , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2014. On April 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 25, 2014, 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 May 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default.
The Center appointed Jonathan Agmon as the sole panelist in this matter on June 11, 2014. 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, SALUS Haus Dr. med. Otto Greither Nachf. GmbH & Co. KG (“Salus Haus”), is a German company based in Germany.
The Complainant, Salus Haus founded in 1916, is a German leading producer of different tea varieties, numerous tonics, tinctures, elixirs, fresh plant juices, herbal tablets, coated tablets and capsules and established distribution to and/or presence in more than 70 countries.
The Complainant owns multiple worldwide registrations for the trademarks FLORADIX, SALUS and KINDERVITAL (“Trademarks”). For example: German trademark registration no. 478,211 – FLORADIX, with the filing date of May 6, 1935; USA trademark registration no. 995,925 – FLORADIX, with the filing date of August 17, 1972; EU trademark registration no. 3,447,349 – FLORADIX, with the filing date of October 24, 2003; Australia trademark registration no. A155099 – SALUS, with the filing date of July 24, 1959; German trademark registration no. 697,145 – SALUS, with the filing date of October 24, 1955; EU registration no. 3,444,891 – SALUS, with the filing date of October 24, 2003; German registration no. 828471 – FLORADIX-KINDERVITAL, with the filing date of February 27, 1961; German registration no. 2057145 – KINDERVITAL, with the filing date of November 30, 1992; International (IR) trademark registration no. 641591 – KINDERVITAL, with the registration date of July 25, 1995.
The Complainant owns the following domain names that consist of its FLORADIX, SALUS and KINDERVITAL trademarks. For example: , , , .
The disputed domain name was created on December 27, 2013.
The disputed domain name was created on December 8, 2013.
The disputed domain name was created on February 24, 2014.
The above disputed domain names resolved to a webpage which offered for sale products bearing the Complainant’s trademark and used the Complainant's trademarks and photos. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain names are identical or confusingly similar to the Complainant’s trademarks.
The Complainant further argues that the disputed domain names resolve to a website, which offers for sale identical products to the products of the Complainant bearing the Complainant's trademarks. The Complainant further contends that the websites under the disputed domain names display the Complainant's logos and marks.
The Complainant further argues that the Respondent is not known by the disputed domain names and has no rights in the marks FLORADIX, SALUS and KINDERVITAL.
The Complainant further argues that it had never granted, assigned, licensed, sold or transferred to the Respondent any rights in the FLORADIX, SALUS and KINDERVITAL trademarks in any manner.
The Complainant further argues that the Respondent registered and is using the disputed domain names in bad faith. The Complainant further contends that the Respondent uses the disputed domain names for commercial purposes, by creating a false impression that the disputed domain names are associated with the Complainant.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant owns multiple worldwide trademarks registrations for the trademarks FLORADIX, SALUS and KINDERVITAL as indicated above in Section 4.
The disputed domain name integrates the Complainant’s SALUS and FLORADIX trademarks in their entirety, as a dominant element.
The disputed domain name integrates the Complainant’s FLORADIX and KINDERVITAL trademarks or the trademark FLORADIX-KINDERVITAL in their entirety, as a dominant element.
The disputed domain name differs from the registered FLORADIX trademark by the additional word “iron” and the generic Top-Level Domain (“gTLD”) “.com”.
The additional word “iron” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark, as it is purely descriptive term for the products sold under the mark FLORADIX. Previous UDRP panels have ruled that the mere addition of a descriptive element does not sufficiently differentiate the domain name from the registered trademark (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087).
The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity (see
F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its FLORADIX, SALUS and KINDERVITAL trademarks or a variation of them. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain names. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademarks. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned registrations for the FLORADIX trademark at least since the year 1935; registrations for the SALUS trademark at least since 1959 and registrations for the KINDERVITAL trademark at least since 1967. It is suggestive of the Respondent’s bad faith in these particular circumstances where the trademarks, owned by the Complainant, were registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Furthermore, the disputed domain names are identical or confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent has been using the disputed domain names to promote the sale of goods bearing the Complainant’s marks, while using the Complainant’s name, photos and logo marks on the website under the disputed domain names. Furthermore, the Respondent indicates on the website under the disputed domain name that it is the Complainant’s official partner in China, which the Complainant has confirmed is not the case.
Using the disputed domain name to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain names with knowledge of the Complainant and of the use the Complainant is making with its trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain names is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademarks registration amounts to bad faith”. The Panel also finds that the Respondent’s attempt to attract, for commercial gain, Internet users to its websites with the intent to creating a likelihood of confusion with the Complainant’s trademarks and its affiliation with the Respondent’s website falls under paragraph 4(b)(iv) of the Policy.
Based on the evidence presented to the Panel, including the registration of the disputed domain names long after the registration of the Complainant’s marks, the identity or confusing similarity between the disputed domain names and the Complainant’s marks and the Respondent’s use of the disputed domain names, the Panel draws the inference that the disputed domains name were registered and are being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden 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 names , and be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: June 25, 2014
Full & Egal Universal Law Academy