The Complainant is Weber-Stephen Products LLC of Palatine, Illinois, United States of America, represented by Niro McAndrews, LLC, United States of America.
The Respondents are Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America and Hieu Vu Quang of Ha Noi, Vietnam. 2. The Domain Names and Registrar
The disputed domain names , and (the "Disputed Domain Names") are registered with N LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 18, 2015. On June 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On June 22, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the original Complaint. The Center sent an email communication to the Complainant on June 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 an amended Complaint on June 24, 2015.
The Center verified that the original 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 July 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on July 23, 2015.
The Center appointed John Swinson as the sole panelist in this matter on July 31, 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 Weber-Stephen Products LLC of Palatine, Illinois. It is an international company which designs, manufactures and sells outdoor grills and grilling accessories.
The Complainant owns a number of registered trade marks and service marks in the United States for WEBER (or which incorporate the term "weber"), SPIRIT and GENESIS in respect of barbecue grills and associated grill accessories, as well as catering services and restaurant services. The earliest of these was registered on July 19, 1966. The Complainant also holds a number of registered domain names which incorporate the trade marks, including and .
The first Respondent is the privacy service, Whois Privacy Protection Service, Inc; the second Respondent is Hieu Vu Quang of Ha Noi of Vietnam.
The Respondents did not file a Response, and consequently little additional information is known about the second Respondent.
The Disputed Domain Names were registered as follows:
- on July 22, 2013;
- on January 16, 2014; and
- on January 16, 2014.
At the date of this decision, there is no active website associated with any of the Disputed Domain Names. 5. Parties' Contentions A. Complainant Identical or Confusingly Similar
The Disputed Domain Names are identical or confusingly similar to the Complainant's trade marks. The Disputed Domain Names all incorporate at least one of the Complainant's trade marks, which have a wide reputation in the outdoor grills products sector.
Each of the Disputed Domain Names has been specifically chosen for its confusingly similar text and appearance to the Complainant's trade marks and the Complainant's domain name . Rights or Legitimate Interests
The Respondents have no rights or legitimate interests in the Disputed Domain Names. The Respondents are not using the Disputed Domain Names in connection with any bona fide offering of goods or services. They are not generally known by the Disputed Domain Names, and have not acquired any trade mark rights in respect of the Complainant's trade marks.
As the Complainant's brands are well-known, it is unlikely that the Disputed Domain Names were selected by accident, and instead they were aimed at intentionally creating ambiguity with the Complainant's trade marks. The Complainant has outlined and provided evidence of the websites previously hosted at the Disputed Domain Names, for example, those displaying a Weber copyright notice and containing numerous references to the Complainant's trade marks. Registered and Used in Bad Faith
Given the Complainant's reputation, the Respondents must have been aware of the Complainant and its trade marks. The Respondents have attempted to take benefit of the Complainant's trade marks and reputation and create confusion in the market. Even if the Respondents were unaware of the Complainant's trade mark rights, the Respondents could have conducted a basic trade mark registration search that would have notified the Respondents of the Complainant's trade marks.
The Respondent has used a privacy service to register the Disputed Domain Names, which can be a factor to indicate bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark 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 Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondents have not filed any formal Responses. A. Procedural Issues
A respondent's failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan/PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent's default. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to one of the Complainant's trade marks.
The Disputed Domain Names are confusingly similar to the Complainant's trade marks. In all of the Disputed Domain Names, the WEBER trade mark has been wholly incorporated. In the domain names the SPIRIT and GENESIS trade marks have also been incorporated (respectively). In each case, the Complainant's trade marks have been combined with descriptive terms (i.e., "grill", "coupons", "review/s"). Given the Complainant is an outdoor grills manufacturing and retailing company, these descriptive terms can be readily associated with the Complainant and its business.
It is more likely than not that a person would interpret the descriptive words "grill" or "coupons" or "review/s" as subordinate to one of the Complainant's trade marks, which is the dominant and distinctive part of the Disputed Domain Names (see, e.g., Statoil ASA v. N/A Alex,WIPO Case No. D2013-0713).
In light of the above, the Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondents lack rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
Neither of the Respondents has used, or made demonstrable preparations to use, any Disputed Domain Name in connection with a bona fide offering of goods or services. There is currently no active website at any of the Disputed Domain Names. Prior content hosted at the Disputed Domain Names show (at different times) a Weber copyright notice, numerous references to the Complainant's trade marks and even offers to sell grills identical in design to the Complainant's WEBER grills, thereby creating a false impression of association or affiliation with the Complainants. In the circumstances, such use is not bona fide.
The Respondents have not been commonly known by the Disputed Domain Names.
The Complainant has not authorized or licensed any Respondent to use the Complainant's trade marks.
The Respondents have not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain.
The Respondents had the opportunity to demonstrate their rights or legitimate interests, but did not do so. In the absence of a Response from the Respondents, the prima facie case established by the Complainant has not been rebutted.
In light of the above, the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondents registered and used the Disputed Domain Names in bad faith.
The Complainant commenced operating in the 1950s. The Complainant is famous in the outdoor grill marketplace. It has held registered trade marks for WEBER since 1966, for GENESIS since 1987 and for SPIRIT since 1996. It holds a number of domain names which incorporate the WEBER trade mark. The Complainant's official website is hosted at a domain name which is, aside from the Respondents' use of certain descriptive terms and (in one instance) the generic Top-Level Domain ".net", identical to the Disputed Domain Names. The Complainant has evidently spent a great deal of time and money on protecting its brands.
In light of the significant reputation of the Complainant and its trade marks, it is likely that the Respondents had knowledge of both the Complainant and the relevant trade marks at the time the Disputed Domain Names were registered. This conclusion is reinforced by the fact that two of the Disputed Domain Names contain two of the Complainants trade marks, thus eliminating the likelihood of a coincidence. In some circumstances, where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909 and cases cited therein). Here, the Panel can reasonably infer that the Respondents sought to make use of the reputation of the Complainant and registered the Disputed Domain Names in bad faith.
Further, while the Disputed Domain Names do not currently resolve to a website, there is evidence that they all have been at one time linked to a prior website to display unauthorized Weber copyright notices, references to the Complainant's trade marks and offers to sell grills identical in design to the Complainant's WEBER grills. This constitutes bad faith use.
The Panel concludes that the Respondents have used the Disputed Domain Names to intentionally attract, for commercial gain, Internet users to the Respondents' website/s by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the Respondents' website/s (paragraph 4(b)(iv) of the Policy).
Under these circumstances, the use of a privacy service also supports a finding of bad faith (see, e.g., The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyP, Domain Admin, ID # 10760,WIPO Case No. D2012-0924 and cases cited therein).
The Panel finds that the Complainant has succeeded on the third element 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 Names, , and , be transferred to the Complainant.
John Swinson
Sole Panelist
Date: August 14, 2015
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