The Complainant is Staedtler Mars GmbH & Co. KG of Nuremberg, Germany, represented by Bettinger Rechtsanwälte, Germany.
The Respondent is Maryna Kobielieva of Schwerin, Germany, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2015. On even date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2015, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 26, 2015. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 13, 2015. On February 10, 11 and 13, 2015, the Respondent submitted informal communications to the Center (one of them in German) asking about the language of the proceedings and requesting a brief extension to file a Response. Noting the Complainant’s consent to extend the date to file a Response until February 18, 2015, the Center sent an email communication on February 13, 2015 granting the mentioned extension. The Response was filed with the Center on February 18, 2015.
The Center appointed Brigitte Joppich as the sole panelist in this matter on February 23, 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 paragraph 7 of the Rules.
The Center received a supplemental submission from the Complainant on February 23, 2015. 4. Factual Background
The Complainant was founded in Nuremberg in 1835 and is one of the leading international suppliers of writing, coloring, drawing and creative products, in particular clay. It is Europe’s largest manufacturer of wood-cased pencils, OHP pens, erasers, mechanical pencil leads, and modelling clays, with over 2,000 employees worldwide, more than 1,300 of them in Germany alone, and world-wide distribution partners in more than 150 countries, including 21 subsidiaries and 6 production sites.
The Complainant is the producer of FIMO, a polymer clay used by hobbyists and professionals for many purposes, the origins of which can be traced to 1939. The Complainant won many awards for its FIMO product. The Complainant’s recent sales revenue related to FIMO products was in excess of EUR 12 million worldwide in 2012, including notable sales in Germany and Russia together with Estonia.
The Complainant owns numerous FIMO trademarks around the world, including German trademark registration no. 905498 of May 17, 1973; International trademark registration no. 399781 of June 9, 1973; and Community trademark registration no. 5778469 of April 21, 2008 (hereinafter referred to as the “FIMO Marks”). In addition, the Complainant owns further trademark registrations for FIMOAIR and NORIS CLUB.
The disputed domain name was registered on July 3, 2014 and is not used in connection with an active website. The Respondent used to sell FIMO products in the Ukraine using inter alia the domain name and asserts to intend to use the disputed domain name to establish a virtual club “for those who truly love FIMO”. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The disputed domain name is identical or at least confusingly similar to the FIMO Marks, as the generic Top-Level Domain name (“gTLD”) is generally disregarded in the determination of confusing similarity under the Policy and is normally held not to create a distinction between a trademark and a domain name incorporating that trademark, and as the gTLD “.club” serves to enhance, and not to diminish, confusing similarity between the disputed domain name and the FIMO Marks because Internet users interested in the Complainant by virtue of its well-known trademark could well believe or anticipate the existence of an authentic “Fimo Club” operated by or legitimately associated with the Complainant.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the disputed domain name does not appear to have been actively used by the Respondent since its registration; that the mere registration of a domain name does not establish rights or legitimate interests in the domain name; that the Respondent selected the disputed domain name in order to impermissibly capitalize on the goodwill and reputation of the FIMO Marks through the creation of Internet user confusion; that the Respondent deliberately targeted the Complainant when she registered the disputed domain name; that the Complainant did not authorize the Respondent to use its trademark in connection with the disputed domain name and that the Respondent is not otherwise affiliated with the Complainant; that the Respondent has not made any use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the domain name; and that there is no indication that the Respondent is commonly known by the disputed domain name.
(3) The disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant contends that the Respondent registered the disputed domain name with knowledge of the Complainant and its marks as the disputed domain name features the well-known FIMO Marks in their entirety without any additional distinguishing elements, as the Respondent herself states on a social media website that her favorite material is the “polymer clay FIMO”, and as the Respondent is domiciled in Germany, where the Complainant is headquartered and in 2013 had sales in excess of EUR 2.45 million. With regard to bad faith use, the Complainant argues that the Respondent’s passive holding of the disputed domain name in the present case constitutes bad faith use for the purposes of the Policy as the Complainant’s FIMO Marks are long-established and widely known, especially in the Respondent’s location, as there is no evidence of any actual or contemplated good faith use of the disputed domain name which is available, and as the disputed domain name is not susceptible to use in a generic sense.
In reply to the Response in its supplemental filings, the Complainant stresses the fact that neither the Respondent nor “Fimo-Kiev” have been authorized to act by the Complainant and that the Respondent has utilized the Complainant’s trademarks without seeking any authorization for her own illegitimate commercial purposes. The Complainant further argues that the activity under the domain name is unauthorized and constitutes an infringement of the Complainant’s rights since the website is featuring FIMO branded products with advertisements for unrelated classes and the services of freelance interior decorators and artists, and as the Respondent/FIMO-Kiev did not accurately and prominently disclose the (non-existent) relationship between herself and the Complainant on the relevant websites, and attempted to corner the market with the registration of domain names identical to the FIMO trademark. B. Respondent
The Respondent contends that she has legitimate rights in the disputed domain name. She states that she has known the FIMO Marks since 2008, that she sold Fimo products in her creative “shop Kyiv”, and that she is the registered owner of the domain name . Such domain name is related to a company named “Fimo-Kiev”, established in the Ukraine in 2012 and selling only FIMO products, which became a leading company on the Ukrainian market in retail and wholesale selling of FIMO products. In addition, “Fimo-Kiev” organized a contest named “Fimo Polymer Clay Techniques” in 2012. The project “Fimo-Kiev” was put on hold for various reasons in 2013 and the online shop was completely shut down in 2014.
The Respondent states that she used to be the registered owner of a number of additional domain names related to FIMO to be used for company development purposes, inter alia , , , , , , and .,
The Respondent further states that there are a number of third parties using “Fimo” within their company name and/or domain name as well as numerous third party trademark registrations for “Fimo”, one of which even predates the Complainant’s earliest trademark registration for FIMO. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(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. Unsolicited supplemental filings
The first point to be dealt with is the admissibility of the Complainant’s supplemental submission. The Rules do not allow the parties to file supplemental submissions on their own volition, and paragraph 12 of the Rules provides that a panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence. Grounds justifying new submissions are generally those regarding the existence of new pertinent facts that did not arise until after the complaint was filed. In the present case, the Respondent refers to a legitimate interest in the disputed domain name and to previous business activities with regard to the Complainant’s FIMO products in the Ukraine. In the view of the Panel, the Complainant was not able to refer to such circumstances in its Complaint. Therefore, the Panel elects to accept the Complainant’s supplemental submission and has relied on it in reaching this decision. B. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s FIMO Marks and is identical to such marks. It is well established that the specific generic Top-Level Domain name (“gTLD”) is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374). The Panel finds that the present case does not give reason to digress from this principle, as the new gTLD “.club” is comprised of a generic term. In this regard, the Panel wishes to point out that it is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words. The Panel assumes that the combination of a trademark as second level of a domain name together with a generic term on the first level fits in this system and should not be handled differently.
Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent refers to her own rights or legitimate interests in the disputed domain name based on the intended use of the disputed domain name in connection with a virtual club “for those who truly love FIMO”. However, mere assertions are typically not sufficient to lead to rights or legitimate interests in the disputed domain name under paragraph 4(c)(iii) of the Policy. The provision of paragraph 4(c)(iii) of the Policy does not refer to any kind of future use of the disputed domain name but only to its actual use. As a result, the defense is only available to respondents whose present use of the domain name is either noncommercial or fair.
In any event, in view of its finding under the third element of the Policy, the Panel is not required to make a finding under this element of the Policy. D. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant’s FIMO Marks as she herself stated that she was engaged in selling FIMO products in Ukraine in the past. However, the Panel notes that no evidence was submitted of the Respondent’s alleged role as such (unauthorized) reseller.
As the disputed domain name is not actively used by the Respondent, the Panel has to decide whether or not the Respondent’s current (non-)use of the disputed domain names may be considered as bad faith under the Policy.
It is consensus view that the lack of an active use of a domain name does not as such prevent a finding of bad faith. In such cases the panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include: a) a complainant having a widely known trademark with strong reputation; b) no response to the complaint; c) concealment of true identity; d) provision of false contact details; and e) the impossibility of conceiving a good faith use of the domain name (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131). The first and fifth prongs of the test carry the greatest weight and are generally conclusive on the issue of abusive registration: a respondent cannot hide its motivation for registering a domain name in the absence of a conceivable non-infringing use of such domain name. However, the material scope of “passive holding” as first established in Telstra Corporation Limited v. Nuclear Marshmallows is typically limited to cases, where a trademark is well-known and enjoys a broad scope of protection, or where the overall circumstances of the case clearly indicate that the domain name was registered for blocking purposes targeting a complainant. Passive holding by itself does not invariably amount to bad faith use but must be seen in the light of the individual circumstances of each case.
The Panel is confident that, based on its longstanding use, the Complainant’s FIMO Marks are well-established and the Respondent had knowledge of the Complainant’s trademark (a fact she readily admits). However, the Respondent replied to the Complaint, did not provide false contact details and did not try to conceal her identity. Because of the above mentioned facts and the Respondent’s submissions in this matter, the Panel finds that the Complainant has failed to prove registration and use in bad faith.
The Panel, on balance, finds that the facts of this case might allow for an active use of the disputed domain name by the Respondent in good faith. If the Respondent started using the disputed domain name as outlined in the Response, such use might result in rights or legitimate interests in the disputed domain name (cf. Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross,WIPO Case No. D2001-1042; 2001 White Castle Way, Inc. v. Glyn O. Jacobs,WIPO Case No. D2004-0001; Estate of Francis Newton Souza v. ZWYX.org Ltd.,WIPO Case No. D2007-0221). The Respondent’s activities with regard to the Ukrainian company (i.e that of an unauthorized distributor) and the previous domain name registrations containing the FIMO Marks (especially ) do not imply that any use of the disputed domain name by the Respondent would necessarily be illegitimate. The Panel finds on balance that the Respondent presented plausible arguments as to its contemplated use of the disputed domain name, which is enough – by a small margin – to lead the Panel to conclude that the Complainant has not met its burden of showing bad faith use.
Since it is conceivable that the Respondent will use the disputed domain name without seeking to unfairly profit from the goodwill attached to Complainant’s FIMO Marks, the Panel finds in the specific circumstances of this case that the Complaint was brought prematurely. Should the Respondent in the future use the disputed domain name in bad faith, the Complainant may file a complaint on the basis of new circumstances at such time.
Accordingly, the Panel finds that the Complainant has at present failed to establish bad faith use as required under the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Brigitte Joppich
Sole Panelist
Date: March 20, 2015
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