The Complainant is Ralph Anderl of Berlin, Germany, represented by Habermann, Hruschka & Schnabel, Germany.
The Respondent is Yang Mingfeng, Mingfeng Yang of Shantou, 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 April 30, 2014. On April 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 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.
On May 5, 2014, the Center transmitted by email to the Registrar noting that the disputed domain name was scheduled to expire on June 21, 2014. Accordingly the Center requested that the Registrar in accordance with ICANN’s Expired Domain Deletion Policy, paragraph 3.7.5.7, that the domain name will be placed in Registrar LOCK status, and that the domain name would remain in such status after the lapse of the expiry date until the UDRP proceedings are concluded; and whether any action is required by the parties (either now by the Respondent, or by the Complainant in the event that the domain name is deleted or expires during the dispute) to keep the domain name under Registrar LOCK so that the administrative procedure can continue as required by the UDRP. The Registrar replied on May 6, 2014, advising “It is the position of this registrar to make the Complainant bear the burden of ensuring that the domain name do not expire. However, we do take steps to ensure that the domain name remain/s in status quo during the pending dispute.”
The Center advised the parties on May 7, 2014, and again on June 4, 2014, of the Registrar’s position, noting that the Center had no responsibility beyond bringing this matter to the parties’ attention and urging that the parties contact the Registrar in respect to the matter. On June 4, 2014, the Complainant’s representative notified the Center by email that “the [disputed] domain [name] has been renewed by the Complainant.” The Panel takes this to mean that the Complainant had paid the renewal fee to the Registrar.1
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 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2014.
The Center appointed Richard G. Lyon as the sole panelist in this matter on June 11, 2014. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 holds numerous trademarks for IC, IC!, AND IC! BERLIN, duly registered in the national registry of many countries around the world, including China. Several of the Complainant’s marks date to the 1990s; all predate the creation of the disputed domain name. The Complainant’s exclusive licensee (of which the Complainant is managing director) ic! berlin brillen GmbH sells eyeglasses and other eyewear under these marks around the world.
The disputed domain name was created in June 2013. Currently the disputed domain name resolves to a website at which various brands of eyewear are offered for sale. Five prominent eyewear makers including IC! BERLIN are listed at the top of the page under “Featured Categories”; each such brand’s logo is displayed with the brand name. According to a screen shot that accompanies the Complaint at one time the disputed domain name resolved to a website, also including the Complainant’s brand and logo, at which only products identified with the Complainant’s brand were sold. 5. Parties’ Contentions A. Complainant
The Complainant contends as follows:
1. The Complainant has rights in his IC! marks by reason of its many registered trademarks. The disputed domain name differs only by adding the word “glasses”, which merely describes the products sold or deletion of the word “Berlin”, a reference to the capital city of Germany. The disputed domain name is thus confusingly similar to the Complainant’s marks.
2. The Complainant has no business arrangement with the Respondent. Further, “The Respondent does not use the domain in question to bona fide offer goods. In fact, the spectacles offered on the site are in a price range of USD 90, which for the respective models is below the retailer price offered by the Complainant’s company. Therefore, the spectacles offered seem to be counterfeits of IC! BERLIN spectacles."
3. The Respondent registered and has used the disputed domain name to confuse or mislead prospective customers, for the purpose of selling counterfeit goods. This establishes registration and use of the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedures Applicable in a Default Case
Unlike civil litigation, the Respondent’s default does not result in an automatic decision in the Complainant’s favor or an admission of the truth of the factual allegations in the Complaint. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6. Even in a default case “[t]he Policy requires the Complainant to prove each of the three elements. Policy, paragraph 4.” Western Research 3000, Inc. v. NEP Products, Inc., WIPO Case No. D2004-0755, emphasis in original.
The Panel notes that the Complainant accuses the Respondent of selling counterfeit goods. His only basis for this is an allegation, quoted above, that the price at which purported IC! BERLIN glasses are offered on the Respondent’s website are below the Complainant’s licensee’s retail product prices. On occasion panels (this one included) have required a heightened standard of proof when criminal or similarly grave conduct is alleged; other panels have not. But under any standard some proof is required; counsel’s statements on a factual matter in a pleading are of no force or effect. See, e.g., The Teaching Company, LLC d/b/a The Great Courses v. Worldwide Media Inc,WIPO Case No. D2014-0457 footnote 4. Here there is no proof. The Panel will therefore disregard any charge of selling counterfeit goods in his analysis of the three required Policy elements. Karen Millen Fashions Limited v. Fundacion Private Whois,WIPO Case No. D2012-1827. B. Identical or Confusingly Similar
For the reasons advanced in the Complaint, summarized above, both rights in a mark and confusing similarity have been proven. The Complainant’s nationally registered marks establish the former. Adding the name of goods for which the trademark owner uses his marks only enhances confusion, as many panels have held. While “glasses” might be deemed a common word and “ic” a simple two-letter designation, the two in combination are in no wise common or descriptive, particularly when the website content at the disputed domain name reveals the Complainant’s mark, including design elements, and logo. C. Rights or Legitimate Interests
Even without a finding of selling counterfeit goods the record reflects no rights or legitimate interests of the Respondent in the disputed domain name. The Complainant has never authorized the Respondent to use his marks, and nothing in the record indicates that the Respondent has been commonly known by the disputed domain name, other than its sales of purportedly branded products of others at the disputed domain name. That alone does not establish a right or legitimate interest. Any notion that the Respondent, even as an unauthorized reseller, might fit within the doctrine of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, is immediately dispelled by the fact that the Respondent does not sell the Complainant’s goods exclusively. D. Registered and Used in Bad Faith
The Complainant has carried his burden of proof under this Policy head as well. The content at the Respondent’s website reveals both knowledge of the Complainant and his marks and an intent to take advantage of both for commercial gain. Such conduct falls squarely within the example of evidence of bad faith set out in 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.
Richard G. Lyon
Sole Panelist
Date: June 19, 2014
1 This is expressly authorized by ICANN’s Expired Domain Deletion Policy, paragraph 3.7.5.7: “In the event that a domain which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, the complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant.”
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