The Complainant is MenschDanke GmbH of Berlin, Germany, represented by Baker Tilly Roelfs Rechtsanwaltsgesellschaft GmbH, Germany.
The Respondents are Constantin Piffer of Kassel, Germany and Domain ID Shield Service Co. Limited of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2015. On March 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 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 23, 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 amended Complaints on March 25, 2015 and on April 1, 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 Respondents of the Complaint, and the proceedings commenced on April 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2015.
The Center appointed Dr. Alexander Duisberg as the sole panelist in this matter on May 12, 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 offers bargain deals and prices inter alia under the domain names , , and . The domain has been registered on March 13, 2008. The Complainant owns the German trademark DE302012016977
registered on July 18, 2012 in classes 35, 36, 38, and 41 inter alia for services such as advertising, issuing of vouchers over the Internet, electronic transmission and exchange of news and entertainment.
The disputed domain name was registered on February 2, 2015.
Currently, there are no contents available under the disputed domain name . 5. Parties’ Contentions A. Complainant
The Complainant holds that the disputed domain name is identical or at least confusingly similar to Complainant’s figurative trademark SCHNÄPPCHENFUCHS.COM. The Complainant argues that it is well-known for its services in the field of providing bargain deals to customers.
According to the Complainant, until recently the disputed domain displayed information about bargain deals and prices. The website at the disputed domain name used the figurative element of the trademark SCHNÄPPCHENFUCHS.COM.
According to the Complainant, the Respondents have never been known, commonly or otherwise, by the disputed domain name or by the trademark or by any name corresponding to it, prior to the registration of the disputed domain name. The Complainant claims that the Respondents are merely using the SCHNÄPPCHENFUCHS.COM trademark to attract attention and Internet traffic to the website “www.”.
The Respondent Constantin Piffer was mentioned in the imprint of the website at the disputed domain name. Upon receipt of a warning letter from the Complainant the Respondent denied to be responsible for the contents of the website at the disputed domain and filed a criminal charge for fraud. The Complainant claims that the website was obviously used in a criminal context.
The Complainant requests that the Panel orders the disputed domain name to be transferred to the Complainant. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(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.
The Panel acknowledges the consensus view - as set forth in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) - that the Respondents’ default to respond to the Complaint does not automatically result in a decision in favor of the Complainant. The Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. Although a panel may draw appropriate inferences from the Respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in the UDRP proceeding.
It is established case law, however, that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden of production of evidence to the Respondent (see inter alia, Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s service mark SCHNÄPPCHENFUCHS.COM and thus establishes the requirement of paragraph 4(a)(i) of the Policy to be met, notwithstanding the low degree of distinctive character of the trademark in question. The overall impression suffices to cause a confusing similarity between the relevant part of the disputed domain name “schnaeppchenfuchs” and the relevant textual element of Complainant’s trademark “schnäppchenfuchs”.
When assessing the confusing similarity it is well established that the top-level suffixes such as “.com” and “.biz” can be ignored for this purpose (see paragraph 1.2 WIPO Overview 2.0). Equally, the figurative element in the Complainant’s trademark cannot be taken into account either, when assessing the similarity. Such assessment can only be based upon the alpha-numeric components of the domain name and the dominant textual components of the relevant mark, whereas a figurative element is not capable of representation in a domain name (see also paragraph 1.11 WIPO Overview 2.0). The Panel acknowledges that the remaining textual element of the Complainant’s trademark is of very low distinctiveness since it is highly descriptive for the services the trademark is registered for. However, the Panel holds that such the remaining textual element “schnäppchenfuchs” does not lack any distinctiveness at all. Already minor changes to possible generic terms might suffice to establish a low degree of distinctiveness (see Canadian Hockey Association v. Mrs. Jello, LLC,WIPO Case No. D2005-1050). By way of example, a possible generic term for the services in question rather would be “schnäppchenjäger”, in slight, but noticeable difference to “schnäppchenfuchs”. In the absence of any assertions of the Respondents the Panel has to presume that the term “schnäppchenfuchs” is not generic(see Laerdal Medical Corporation vs. Locks Computer Supply,WIPO Case No. D2002-0063; TPI Holdings Inc. v. JB Designs,WIPO Case No. D2000-0216 ().
Moreover, any weight which might be accorded to a finding of a low degree of distinctiveness is compensated by the fact that the disputed domain name is taking over identically the remaining textual element of Complainant’s trademark. A likelihood of confusion has been confirmed even when only parts of a rather generic trademark were incorporated in the domain name (Islamic Bank of Britain Plc v. Ifena Consulting, Charles Shrimpton,WIPO Case No. D2010-0509). This applies even more when the trademark is completely incorporated into the domain name.
The mutation “ä” is in German language commonly used and written as “ae”. The pronounciation is identical. Hence, the different spelling of “ä” and “ae” does not cause any different assessment (see also Auchan v. Oushang Chaoshi,WIPO Case No. D2005-0407). B. Rights or Legitimate Interests
The Respondents have no rights or legitimate interest in respect of the disputed domain name.
None of the Respondents have been commonly known by the disputed domain name or have used the disputed domain name prior to this dispute in connection with a bona fide offering of goods. The Respondents have not brought forward any proof for a noncommercial fair use either. In fact, the disputed domain name has been registered long after the Complainant registered the domain name and started its business under this domain name in 2008 and long after the trademark SCHNÄPPCHENFUCHS.COM was registered in 2012. C. Registered and Used in Bad Faith
The disputed domain name has been registered and used in bad faith.
Internet users may assume a commercial link between the Complainant and the Respondents which actually does not exist due to the likelihood of confusion between the disputed domain name and Complainant’s trademark. Hence, by registration and use of the disputed domain name, the Respondents intended to attempt to attract Internet users for commercial gain to their own website (see paragraph 4(b)(iv) of the Policy).
This applies even more given that the screenshots of the disputed domain name submitted by the Complainant show the use of the figurative element of Complainant’s trademark at the top of each website. This is a strong indication for a registration and a use of the disputed domain name in bad faith in the view of the Panel.
The Panel acknowledges that there is currently no active website available under the disputed domain name. The current lack of active use does not, however, alter the assessment with regards to a bad faith use.
The Panel recognizes, in general terms, that mere passive holding of the disputed domain name could possibly exclude use in bad faith, to the extent it would be possible to use such domain name in the future for other services than the services the respective trademark SCHNÄPPCHENFUCHS.COM has been registered for. That said, however, a passive holding of the disputed domain name does not prevent the establishment of bad faith (see inter alia August Storck KG v. Tony Mohamed, WIPO Case No. D2000-0196; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). This applies even more in the case at hand, given that passive use has not been the case ever since; the disputed domain name has clearly been used in bad faith at an earlier stage. The Panel rather holds that the prior bad faith use of the disputed domain indicates and causes the risk of repeating the same use in the future. In the absence of indications to the contrary, the current passive use is therefore sufficient to be deemed a continuation of use in bad faith, in the given circumstances. 7. Decision
The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy.
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.
Alexander Duisberg
Sole Panelist
Date: May 29, 2015
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