The Complainant is Beiersdorf AG of Hamburg, Germany, represented by Crowell & Moring, LLP, Belgium.
The Respondents are Richard Trainor, Houghton Richards of Perth, Australia and WHOIS Limited of Wellington, New Zealand (both together referred to herein as the “Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2015. On March 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 20, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 24, 2015.
The Center verified that the Complaint together with 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 the Respondent of the Complaint, and the proceedings commenced on April 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2015.
The Center appointed Knud Wallberg as the sole panelist in this matter on May 8, 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
The Complainant is the holder of the registered trademark NIVEA in a number of countries around the world in classes 5, 29 and 30 and which has been used in relation to Complainant’s skin care products business since 1905.
The Complainant uses the NIVEA trademark in its external communication and branding, e.g. on its company websites accessible through “”.
The disputed domain name was registered on December 10, 2014.
The disputed domain name has been passively held. 5. Parties’ Contentions A. Complainant
The disputed domain name incorporates the Complainant’s NIVEA trademark in its entirety. It is well established that the addition of generic Top-Level Domains (gTLDs) can be disregarded when comparing the similarities between a domain name and a trade mark. Therefore, the “.club” gTLD does not prevent a finding of confusing similarity under the Policy. On the contrary, given the generic meaning of the word “club”, the addition of the “.club” gTLD adds to the confusion as the Internet user could easily link the disputed domain name to some kind of customer club related to the Complainant’s business.
The Respondent’s use and registration of the disputed domain name was not authorized by the Complainant, and the Complainant further contends that Respondent has no rights or legitimate interests in nor is commonly known by the disputed domain name.
At the time the Respondent registered the disputed domain name, the Respondent must have known the Complainant and its trademarks. The Complainant’s NIVEA trademark is well-known all over the world, and has no generic or descriptive meaning, and a simple trademark search at the time of the registration of the disputed domain name would have revealed the Complainant’s trademark registrations. As to use in bad faith the Complainant claims that by registering the disputed domain name the Respondent prevents the Complainant from reflecting its mark in a corresponding domain name. Although the disputed domain name does not appear to be actively used it is recognized under the UDRP that the passive holding of a domain name can amount to bad faith registration inter alia since it is impossible to imagine any plausible legitimate use of the disputed domain name by the Respondent. Finally, the Complainant contends that the fact that the Respondent has used a privacy service to conceal his identity is an indication of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(1) that the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark because it contains the mark NIVEA in its entirety. The gTLD “.club”, does not dispel a finding of confusing similarity where it otherwise exists, as it does in the present case. In that context the Panel thus concurs with the Complainant’s claim that the addition of the gTLD “.club”, may even add to the confusing similarity between the Complainant’s trademark and the disputed domain name since Internet users may easily link the disputed domain name to a customer club related to the Complainant’s business.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not rebutted this by way of a formal response or otherwise and the way that the Respondent has been “using” the disputed domain name, see immediately below under C, does not support a finding of rights or legitimate interests.
Consequently the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b)(i) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case and in particular the extent of use of the Complainant’s trademark and the distinctive nature of the mark, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The disputed domain name is not actively used instead a message indicating that the webpage is unavailable appears. However, as first stated in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and repeated in many subsequent decisions under the UDRP: “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith.”
The Panel finds that the Respondent’s lack of bona fide use of this disputed domain name is likely to disrupt the business of the Complainant since it prevents the Complainant from reflecting their reputed trademark in a corresponding “.club” domain name. Further, given the world-wide fame of the Complainant’s NIVEA mark, it is immediately inconceivable that the Respondent will be able to use the disputed domain name for any purpose that would not be infringing the Complainant’s rights, just as the Respondent’s use of a privacy service under these circumstances gives rise to an inference of bad faith use and registration. See, e.g., Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753.
Noting that the disputed domain name incorporates the particular trademark, NIVEA, together with the gTLD “.club”, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Knud Wallberg
Sole Panelist
Date: June 12, 2015
Full & Egal Universal Law Academy