Complainant is Belron Hungary Kft. Zug Branch of Zug, Switzerland, represented by Sozos Theodoulou, Cyprus.
Respondent is Hartmut Clasen, Falkenber Consultants Ltd. of Nicosia, Cyprus. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2014. On December 23, 2014, 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 Respondent is listed as the registrant and providing the contact details. Complainant filed an amended Complaint on January 20, 2015.
The Center verified that the amended 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 Respondent of the Complaint, and the proceedings commenced on January 21, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2015. On January 12, 2015, the Center received an email communication from Respondent. Respondent did not however submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on February 12, 2015.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 25, 2015. 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 a Switzerland based branch of the worldwide operating vehicle glass repair and replacement group of companies “Carglass”.
Complainant has provided evidence that it, together with the Carglass group of companies, is the registered owner of numerous trademarks worldwide relating to the designation “Carglass”, e.g.:
- Word mark CARGLASS, Benelux Trademark Office (Benlux-Merkenbureau), Registration No.: 0461610, Registration Date: May 25, 1989, Status: Active;
- Word mark CARGLASS, French Trademark Office (Institut National de la Propriété Industrielle, INPI), Registration No.: 1620650, Registration Date: July 18, 1989, Status: Active;
- Word mark CARGLASS, United States Patent and Trademark Office (USPTO), Registration No.: 3443140, Registration Date: June 3, 2008, Status: Active.
In connection with the verification of the documents submitted by Complainant to prove its rights in the CARGLASS trademark, the Panel became aware of the fact that Complainant obviously owns a number of further Community trademarks CARGLASS which, therefore, enjoy protection also in Cyprus where Respondent apparently is domiciled, namely:
- Word-/device mark CARGLASS, Office for Harmonization in the Internal Market (OHIM), Registration No.: 001997188, Registration Date: February 26, 2003, Status: Active;
- Word-/device mark CARGLASS, Office for Harmonization in the Internal Market (OHIM), Registration No.: 000734079, Registration Date: February 9, 2000; Status: Active.
Moreover, Complainant has produced screenshots of websites operated under numerous domain names worldwide which include the designation “carglass” (e.g., , , , , , , etc.) and where Complainant’s CARGLASS trademark and business are being promoted.
The disputed domain name was registered on December 17, 2011. Complainant has evidenced that the disputed domain name redirected on October 20, 2014 to a website at “www.” promoting glass replacement services for all kinds of vehicles of a “Chris A. Carglass” company with domicile in Cyprus. By the time of rendering this decision, the disputed domain name is no longer connected to any content on the Internet.
Complainant sent a warning letter to one of its competitors who on Complainant’s belief is actually using the disputed domain name, Chris A[…], accusing him of an infringement of Complainant’s rights in the CARGLASS trademark, and that the disputed domain name was registered only a few days after the infringement.
Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends to be the world’s leading vehicle glass repair and replacement company with operations in 34 countries across Europe and worldwide. Complainant asserts that its CARGLASS trademark is used in 28 countries in connection with the repair and replacement of vehicle glass and that its CARGLASS trademark, which is in use already since the late 1980s, is meanwhile well-known and notorious in the field of glass repair and replacement (as reflected, e.g., by numerous articles from the mass medias).
Complainant suggests that the disputed domain name is confusingly similar to Complainant’s CARGLASS trademark as it incorporates the trademark in its entirety. The addition of the name “Chris” and the single letter “a” would not sufficiently distinguish the disputed domain name from the CARGLASS trademark which is a fictitious word.
Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name because (1) Respondent has not acquired any related trademark or service mark rights whatsoever, (2) Respondent is not known by the disputed domain name, (3) there is no evidence whatsoever of any prior Respondent’s use or of demonstrable preparations to use the disputed domain name, (4) in fact, since the disputed domain name clearly alludes to Complainant, the making-use of the disputed domain name by one of Complainant’s competitors who is active in the same field of vehicle glass repair and replacement cannot be deemed as making use of the disputed domain name in a legitimate noncommercial or fair manner and (5) Respondent intentionally intended to attract, for commercial gain, Internet users to the website to which the disputed domain name redirects.
Finally, Complainant asserts that the disputed domain name was registered and is being used by Respondent in bad faith because (1) there can be no doubt that Respondent had knowledge of Complainant’s well-known CARGLASS trademark by the time of registering the disputed domain name, (2) since Respondent is an Internet and marketing consulting company which, among others, administrates websites, it is obvious that Respondent registered the disputed domain name primarily for the purpose of renting it to one of Complainant’s direct competitors and, thereby, disrupting Complainant’s business and (3) given the history between Complainant and its competitor Chris A[…], it is rather obvious that Respondent’s services were hired by the competitor as to register the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute based upon the Complaint. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the CARGLASS trademark in which Complainant has shown to have rights.
The disputed domain name incorporates the CARGLASS trademark in its entirety with the mere addition of the first name “Chris” and the letter “a”. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in numerous UDRP decisions and has meanwhile become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term to a trademark in a domain name is normally insufficient in itself to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the first name “Chris” followed by the letter “a” is not capable to dispel the confusing similarity arising from the incorporation of Complainant’s CARGLASS trademark in the disputed domain name.
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled. B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s unrebutted contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent become known by the disputed domain name, nor can be found that Respondent makes a legitimate noncommercial or fair use without intent for commercial gain.
Complainant asserts that Respondent is operating an Internet and marketing consulting company which apparently registered the disputed domain name only a few days after Complainant had sent a warning letter to its competitor Chris A[…] accusing him of an infringement of Complainant’s rights in the CARGLASS trademark. Moreover, it seems that Respondent subsequently allowed said Chris A[…] to run a website under the disputed domain name promoting glass replacement services for all kinds of vehicles of a “Chris A. Carglass” company. Against this background, it is reasonable to argue that Respondent itself has neither been known by the disputed domain name nor did it make a legitimate noncommercial or fair use thereof without intent for commercial gain. Moreover, this Panel takes the view that the timely coincidence of the pre-procedural communication of Complainant with its competitor Chris A[…]and the subsequent registration and the use of the disputed domain name avoids the finding of a bona fide offering of goods or services under the disputed domain name before any notice to Respondent of the dispute under paragraph 4(c)(i) of the Policy.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not formally reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on January 21, 2015, nor did it come forward with any other reasonable explanation (e.g. in the email correspondence received by the Center on January 12, 2015) that might have thrown a different light on Respondent’s possible rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
Complainant contends, and Respondent has not challenged this contention, that Complainant’s CARGLASS trademark is meanwhile well-known and notorious in the field of vehicle glass repair and replacement, including in Cyprus where Respondent is located. Also, Complainant submitted its evidence and contentions, which Respondent has not rebutted, that the disputed domain name was registered by Respondent and subsequently used by one of Complainant’s competitors to promote a company active in the very field of vehicle glass repair and replacement only very shortly after Complainant had sent a warning letter to said competitor accusing the latter of an infringement of Complainant’s rights in the CARGLASS trademark. Against this background and in light of the fact that Respondent did not submit any Response (other than sending an email to the Center on January 12, 2015 stating that the disputed domain name had not been renewed by it), it is reasonable to find that Respondent registered the disputed domain name with full knowledge of the well-known CARGLASS trademark and in order to somehow profit from said registration of the disputed domain name which obviously alludes to the CARGLASS trademark. It can, therefore, be found that Respondent either registered the disputed domain name for the purpose of selling, renting, or otherwise transferring it to a competitor of Complainant within the meaning of paragraph 4(b)(i) of the Policy, or Respondent registered the disputed domain name primarily for the purpose of disrupting the business of Complainant being acompetitor of Chris A[…], as set forth by paragraph 4(b)(iii) of the Policy. Such circumstances shall be evidence of the registration and use of the disputed domain name in bad faith.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements 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.
Stephanie G. Hartung
Sole Panelist
Date: March 4, 2015
Full & Egal Universal Law Academy