Complainant is Heidelberger Druckmaschinen AG of Heidelberg, Germany, represented by CSC Digital Brand Services AB, France.
Respondent is Don Marleau, D&D Printing Equipment of Longueuil, Quebec, Canada. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2015. That same day the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 14, 2015, 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 Respondent of the Complaint, and the proceedings commenced on January 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 16, 2015.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on February 26, 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 provides solutions and services for the print media industry. The Company was established in 1850 and moved its headquarters to Heidelberg in 1896. In 1905, the Company named “Albert & Hamm” changed its name to “Schnellpressenfabrik AG Heidelberg” and to “Heidelberger Druckmaschinen Aktiengesellschaft” in 1967. As of June 30, 2014, Complainant had a total of 12,454 employees with production sites in Germany, China, Slovakia, Switzerland and North America. It serves customers in 170 countries worldwide and generates more than 80 percent of its sales outside Germany, including in the United States of America under the corporation Heidelberg USA, Inc. and in Canada.
Complainant has protected the trademark HEIDELBERG for goods including printing machines and related parts, for example U.S. Trademark Registration Nos. 2,275,080 and 3,153,188 issued respectively on September 7, 1999 and October 10, 2006 (the “Mark” or the “HEIDELBERG Mark”). Complainant’s rights date back to 1928, when Complainant registered THE HEIDELBERG in Germany (registration number392531). In 1979, Complainant also registered an International trademark for HEIDELBERG, registration number 447080. HEIDELBERG has now been registered worldwide including in Canada on March 25, 1974, registration number TMA 226041, and as a Community trademark, registration number 1649177. All of these trademark registrations predate the registration of the Domain Names.
Complainant also owns numerous domain name registrations incorporating the HEIDELBERG Mark such as , , , and . Complainant’s main website is located at “www.” and it has a microsite at “”.
Respondent registered the Domain Names on May 22, 2014. The Domain Name redirects the public to the website of “D&D Printing Equipment, Inc.”, a business that services and sells equipment in the printing industry. The Domain Name was redirecting the public to a parking webpage, at the time this proceeding commenced. Now the public is taken to a site that has on its first page, for example, links to: “The Print Shop”, “Offset Printing Equipment”, “Heidelberg Printing Machines”, “Heidelberg Parts”, “Heidelberg Letterpress”, “Heidelberg Offset”, and “Heidelberg Printing Equipment”. Clicking on any of these links takes the public to a page of sponsored links for a variety of products and services. 5. Parties’ Contentions A. Complainant
In addition to the aforementioned trademark registrations, Complainant relies on its international notoriety at the time Respondent registered the Domain Names. Searches in search engines using the combination “heidelberg” and “equipment” result in Complainant’s products, as do searches using “heidelberg” plus “printing”.
The dominant part of the Domain Name is comprised of Complainant’s HEIDELBERG Mark in its entirety, which is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. Combining the HEIDELBERG Mark with the generic Top-Level Domain (gTLD) “.equipment”, which serves to categorize websites specialized in equipment, tools, or machinery and which belongs to the lexical field of Complainant’s activity, increases the likelihood of confusion between the Domain Name and the Mark. The Domain Name combines the HEIDELBERG Mark with the word “printing” which clearly relates to the specific goods that Complainant’s trademark is registered and used for, thereby further and clearly strengthening the impression that Respondent had full knowledge of Complainant’s prior rights.
Respondent does not appear to own any registered trademarks or trade names corresponding to the Domain Names. Consequently Respondent may not claim any rights established by common usage. Also, Complainant has not given Respondent a license or authorization of any kind to use the HEIDELBERG Mark in a domain name. Nor is Respondent an authorized dealer of Complainant’s products. In pre-complaint communication between Respondent and Complainant’s representative, Respondent explained that “We sell used Heidelberg presses and have done so for many years including buying used Heidelberg equipment direct from Heidelberg or their customers […] We will not comply to your request.…” Saying that, Respondent acknowledges to have been aware of Complainant’s rights.
Respondent is not using the Domain Names in connection with a bona fide offering of goods or services. Whereas the Domain Name is redirected through “masked forwarding” to Respondent’s website “www. ”dedicated to the supply of printing and binding equipment including sales of HEIDELBERG brand machines and sales of competitive machines, the Domain Name is redirected to a parking page with links connected to Complainant’s field of business with the mention “the site is under construction” at the top of the webpage. Respondent appears to be offering Complainant’s products for sale, as well as the competitive products of others, which may be considered as a “bait and switch” operation - previous Panels have considered this as a non-legitimate use. Further, there is only one sentence at the bottom of Respondent’s “home” page, in small light green characters, that states “All Logo and trademarks used in this site are property of their prospective owners and may be subject to copyright laws. D & D Printing Equipment Inc. is in no way affiliated with part or all of the manufacturing companies herein, and reserves itself as an independent equipment dealer.” This cannot be considered as an accurate disclosure of Respondent’s lack of relationship with Complainant. Respondent is not an authorized reseller and does not disclose the lack of relationship between it and Complainant, thus Respondent conveys the false impression that it is authorized to use the Mark. Further there is no evidence that Respondent has been using the Domain Names as a company name or has any other legal right in the Mark.
The HEIDELBERG Mark is well known throughout the whole Community of related professionals. In response to Complainant’s cease and desist letter regarding the Domain Name , Respondent was aware of Complainant’s Mark, explaining that they “have been selling used Heidelberg equipment for years” and in another email received the same day declared “We will not comply to your request”. Complainant pointed out that all domain names incorporating the HEIDELBERG Mark need to be centralized to Complainant according to its domain name policy. Respondent did not mention the additional registration of the Domain Name . Complainant discovered this registration later on. It is obvious that Respondent knew of Complainant’s rights at the time of registration and that it registered the Domain Names knowing that the registrations would infringe upon third party rights. The Domain Names are designed to attract Internet users who are looking for Complainant’s products to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark and taking advantage of Complainant’s renowned trademark and notoriety. By using the Domain Names, Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for its own commercial gain. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques,WIPO Case No. D2000-0004. Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, paragraph 4(a) of the Policy requires that Complainant prove each of the three elements set forth therein to obtain a decision that the Domain Names should be cancelled or transferred. A. Identical or Confusingly Similar
It is uncontested that Complainant has established rights in its HEIDELBERG Mark long before Respondent registered the Domain Names on May 22, 2014. These rights were established by Complainant’s long-term use and by virtue of the various trademark registrations mentioned earlier.
Both of the Domain Names and consist of Complainant’s HEIDELBERG Mark in its entirety and the gTLD suffix “.equipment”. It is an accepted principle that the addition of suffixes such as “.equipment”, being a gTLD, is typically not a distinguishing factor. Consequently, the Panel finds that the Domain Name is identical to Complainant’s Mark and the Domain Name is confusingly similar to the Mark. Respondent’s use of the descriptive word “printing” does not avoid confusion. To the contrary, it increases the likelihood of confusion to consumers because the word “printing” is descriptive of the products and services advertised and sold by Complainant and promoted by Respondent using the Domain Name. As a result, an Internet user interested in a HEIDELBERG brand product or service may well be confused into believing that Respondent’s website is related to or affiliated with Complainant.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is undisputed that Complainant has not licensed or otherwise permitted Respondent to use the HEIDELBERG Mark for any purposes, and that Respondent has not been commonly known by the Domain Names. Complainant argues that Respondent is not making a legitimate noncommercial use of the Domain Names without intent for commercial gain to misleadingly divert consumers because Respondent is using one of the Domain Names () to redirect the public to its own website where it sells Complainant’s equipment as well as Complainant’s competitors’ equipment. Furthermore, Complainant argues that Respondent is using the other Domain Name () to redirect the public to a parking page with links connected to Complainant’s field of business with a note at the top of the webpage that “the site is under construction”. As mentioned above, the website connected to the Domain Name () now connects the public to a landing page with ubiquitous use of the HEIDELBERG Mark and sponsored links. Complainant also argues that Respondent’s use of, or demonstrable preparations to use, the Domain Names was not in connection with a bona fide offering of goods or services because Respondent is not an authorized reseller and does not disclose the relationship, or lack thereof, between it and Complainant. Although Respondent has a disclaimer (at the bottom of the page in small light green type), it does not clearly establish the lack of relationship between the parties and using the HEIDELBERG Mark as the address of the website, creates the impression of a commercial relationship between the two.
Complainant has raised a prime facie presumption of Respondent’s lack of rights or legitimate interests in the Domain Names, and Respondent has failed to rebut that presumption. The Panel is therefore satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Names within the meaning of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel concludes, on the evidence submitted by Complainant, that Respondent has registered and used the Domain Names in bad faith. Complainant’s long-standing rights in the HEIDELBERG Mark are uncontroverted, as is the fact that Respondent registered the Domain Names long after Complainant established their rights in the Mark worldwide. Respondent registered the Domain Names, which are identical or confusingly similar to Complainant’s well-known HEIDELBERG Mark, without any rights or legitimate interests in the Domain Names. Furthermore, the evidence demonstrates that Respondent knew of Complainant and its rights in the HEIDELBERG Mark when it registered the Domain Names insofar as: Respondent sells Complainant’s goods on the website associated with the Domain Name , it uses the HEIDELBERG Mark repeatedly on the landing page of the website associated with the Domain Name ; and Respondent acknowledged in his responses to Complainant’s cease and desist letters that “We sell used Heidelberg presses and have done so for many years including buying used Heidelberg equipment direct from Heidelberg or their customers”.
With regard to bad faith use of the Mark, Respondent is using the Domain Name , which is identical to Complainant’s Mark, to host a site that advertises and sells not only Complainant’s products but those of Complainant’s competitors. Also, he is using the other Domain Name with a site that uses Complainant’s Mark repeatedly on the landing page in conjunction with topical links that take the public to a page of sponsored links. The Panel therefore concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to both sites by creating a likelihood of confusion with the Mark as to the source, sponsorship, affiliation or endorsement of such sites or the products or services advertised on such sites, within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel therefore holds that Complainant has satisfied 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 Domain Names and be transferred to Complainant.
Harrie R. Samaras
Sole Panelist
Date: March 4, 2015
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