The Complainant is Ralph Anderl of Berlin, Germany, represented by Habermann, Hruschka & Schnabel, Germany.
The Respondent is guoren xie, renyuan of Putian, China; Hidden by Privacy Protection of Registrar of Nobby Beach, Queensland, Australia. 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 June 29, 2015. On June 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 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 July 2, 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 amendment to the Complaint on July 2, 2015.
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 the Respondent of the Complaint, and the proceedings commenced on July 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default July 31, 2015.
The Center appointed Jonathan Agmon as the sole panelist in this matter on August 13, 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 managing director of a German company ic! berlin brillen GmbH, a company that specializes in designer spectacles and sunglasses which are marketed and sold under the brand IC! BERLIN.
The Complainant owns numerous worldwide trademark registrations for the mark IC! BERLIN and/or IC!. For example, United States Trademark Registration No. 2,611,684 - IC! BERLIN, registered on September 13, 2000; Chinese Trademark Registration No. 3466723 – IC! BERLIN, registered on July 21, 2004; International Trademark Registration No. 818325, registered on January 9, 2004 and IC!, Community Trademark Registration No. 001245174, registered on September 18, 2000, and many more.
The Complaint is also the owner of the domain name .
The disputed domain name was registered on May 28, 2015. The disputed domain was resolved to a website that offers for sale what appear to be counterfeit goods bearing the Complainant's IC! BERLIN mark, while displaying the IC! BERLIN trademark and logo. 5. Parties’ Contentions A. Complainant
The Complainant is the owner of numerous IC, IC!, IC! BERLIN and IC!-BERLIN trademarks, which are well-known worldwide.
The Complainant argued that the disputed domain name is confusingly similar and nearly identical to the Complainant’s IC! BERLIN trademark since it reproduces the IC! BERLIN trademark, absent the exclamation mark, adding the word “dubai”, which does not cause the disputed domain name to be distinguishable from the Complainant’s trademarks. The term “dubai” is misleading since Dubai is a well-known as a trade place for luxury goods, and apart from only denoting the city name it leaves the impression of highly priced designer goods.
The Complainant further argued that it has not authorized the Respondent to register or to use its IC! BERLIN trademarks. The Respondent is not in any way related to the Complainant’s business, is not one of its distributors and the Respondent does not carry out any activity for the Complainant nor does it have any business with it.
The Complainant further argued that the absence of legitimate interests is evidenced by the fact that Respondent uses the disputed domain name to resolve to a website that sells what appear to be counterfeit IC! BERLIN spectacles. The Respondent does not use the disputed domain name in connection with a bona fide offer of goods or services.
The Complainant also argued that the disputed domain name was clearly registered with the only purpose to mislead possible consumers. The Complainant further argued that the disputed domain name was registered in bad faith with the purpose to disrupt the business of the Complainant’s company and to mislead possible consumers for the Respondent’s commercial gain from selling counterfeit spectacles to consumers.
Finally, the Complainant argued that the disputed domain name resolved to a website whose design is very close to the design of the Complainant’s website under the domain name . The disputed domain name is therefore registered and used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant owns numerous worldwide trademark registrations in his name for the mark IC! Berlin and/or IC!. .
The Complainant also owns domain names with the trademark IC! BERLIN, such as.
The disputed domain name is identical to the registered trademark IC! BERLIN apart from the addition of a hyphen, the absence of an exclamation mark after the letters “ic”, and the addition of “dubai”.
The term “dubai” is likely to be associated with a trade place for luxury goods and is also a geographical location. As such, and under the circumstances of this case, the term “dubai” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s IC! BERLIN trademark. The combination of the Complainant’s trademark absent the exclamation mark, with the addition of a hyphen and the name of the city Dubai is insufficient to distinguish the disputed domain name from the Complainant’s mark because the dominant part of the disputed domain name is “icberlin” which is nearly identical to the Complainant’s registered mark IC! BERLIN.
Previous UDRP panels have ruled that the mere addition of a non-significant element to a trademark does not sufficiently differentiate a domain name from that mark: “The only difference between the disputed domain name and the BOSS mark is the addition of the generic words ‘onlinesale’. It is a well-established principle that generic or descriptive terms or phrases are not sufficient to remove the confusion between a domain name in dispute and a trade mark. The BOSS mark is clearly identifiable within the disputed domain name and anyone looking at the disputed domain name would expect that it probably resolves to a website where Internet users can find information pertaining to and/or purchase apparel or other goods of the Complainants. The phrase ‘onlinesale’ in this instance therefore adds to the confusion with the Complainants’ BOSS marks.” Hugo Boss AG, Hugo Boss Trade Mark Management GmbH & Co. KG v. Dzananovic Enis,WIPO Case No. D2014-2216.
Also See Ralph Anderl v. Lin Ling / YinSi BaoHu Yi KaiQi,WIPO Case No. D2015-0654: “[t]he addition of the English term ‘outlet’, a hyphen and the gTLD ‘.com’ cannot distinguish the Disputed Domain Name from the Complainant’s IC! BERLIN trademark: The only distinctive part of the Disputed Domain Name is ‘icberlin’, which contains the Complainant’s trademark entirely except for the exclamation mark. However, the omission of the exclamation mark would not sufficiently differentiate the Complainant’s IC! BERLIN trademark and the Disputed Domain Name…Furthermore, the addition of the English term ‘outlet’ strengthens Internet users’ confusion with the Complainant’s business under the brand IC! BERLIN”.
The addition of the generic Top-Level Domain (“gTLD”) “.com” to the disputed domain name does not typically avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is typically without legal significance since use of a gTLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain name. See Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the IC! BERLIN trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
Further, even if the goods sold on the website under the disputed domain name are authentic, there is nothing on this website disclosing the Respondent’s (lack of) relationship with the Complainant. The Respondent therefore cannot claim rights or legitimate interests in the disputed domain names as a reseller of the Complainant’s goods under the principles set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)).
Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the IC! BERLIN trademark in China since at least the year 2000. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant provided evidence to demonstrate its trademark’s goodwill. “It is very unlikely that the Respondent would have registered the Domain Names unless he knew either the existence of the trademark SWAROVSKI or that the Domain Name at issue might be of some type of economic advantage” (see Swarovski Aktiengesellschaft v. James Johnson,WIPO Case No. D2012-0080). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or online location to which the disputed domain name resolves, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location to which the disputed domain name resolves.
The disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels have ruled that “[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent’s use of the highly distinctive trademarks, logos and pictures of the Complainant on the website under the disputed domain name is also suggestive of the Respondent’s bad faith. It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with a longstanding reputation is intended to make an impression of an association with the Complainant (see Swarovski Aktiengesellschaft v. fan wu,WIPO Case No. D2012-0065).
See also Ralph Anderl v. Xie Ling,WIPO Case No. D2015-0730: “The Respondent uses the IC! BERLIN trademarks and images from the Complainant’s company’s website on the website to which the Disputed Domain Name resolves. The screenshots of the website show that the website sells spectacles as well as sunglasses which are also displayed in the Complainant’s website under the domain name . These features make the website under the Disputed Domain Name appear to be an official website of the Complainant or sponsored or endorsed by the Complainant. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion. The Panel therefore concludes that the Disputed Domain Name is being used in bad faith.”
The Complainant provided evidence showing that the disputed domain name lead Internet users to a website that engages in the marketing of what seems to be IC! BERLIN goods. The Respondent’s use of the trademark IC! BERLIN and logos to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making in its IC! BERLIN trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith".
Finally, the Respondent was using a privacy protection service to hide his real name and address. While the use of a privacy protection service, in and of itself, is not an indication of bad faith, under the circumstances of this case, it is a factor indicating bad faith registration and use of the disputed domain name. See paragraph 3.9, WIPO Overview 2.0 and the cases cited therein.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the Complainant’s trademark in the disputed domain name and the similarity between the disputed domain name and the Complainant’s mark, the use of the Complainant’s trademark to operate a web site selling similar goods to those made by the Complainant under the trademark, and the use of a privacy protection service, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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 disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: August 23, 2015
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