WIPO Domain Name Decision D2015-1115 for icberlins-eyewear.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Ralph Anderl v. Xuan Yu Case No. D2015-1115 1. The Parties

The Complainant is Ralph Anderl of Berlin, Germany, represented by Habermann, Hruschka & Schnabel, Germany.

The Respondent is Xuan Yu of Beijing, China. 2. The Domain Name and Registrar

The disputed domain name is registered with B, Inc. (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 confirming that the Respondent is listed as the registrant and providing the contact details.

On July 2, 2015, the Center sent an email communication to the parties regarding the language of the proceeding in both Chinese and English. On July 3, 2015, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 in both Chinese and English, and the proceedings commenced on July 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2015.

The Center appointed Jonathan Agmon as the sole panelist in this matter on August 10, 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. Language of the Proceeding

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of the proceeding should be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

a) The disputed domain name consists of Latin-script letters, rather than Chinese characters;

b) The disputed domain name includes the Complainant’s mark, as well as the English name of the city Berlin and the English word “eyewear”;

c) The disputed domain name resolved to a website in the English language;

d) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English. 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 26, 2015. The disputed domain resolved to a website that offers for sale, what appears 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, and adding the English word “eyewear,” which is insufficient to distinguish the disputed domain name from the Complainant’s trademarks. Moreover, the Respondent also uses ic! berlin GmbH’s logo and Complainant’s pictures on the website to which the disputed domain name resolves, which increases the likelihood of confusion.

The Complainant further argued that the Complainant has never given authorization or permission to 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 appears 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 single 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 resolves to a website whose design is very close to the design of the Complainant’s website under the domain name . The Complainant therefore summarized that 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 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 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 “-” and the additional letter “s”, the absence of the exclamation mark after the letter “ic” and the English term “eyewear”. The disputed domain name integrates the Complainant’s trademark IC! Berlin in its entirety, as a dominant element.

The addition of a hyphen “-” and the absence of the exclamation mark are considered to be non-significant elements and the addition of the term “eyewear” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s IC! BERLIN trademark, as it is a common term in the Complainant’s field of business.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not serve to sufficiently differentiate a domain name from a trademark: “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.” (see 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:“The 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 (Yahoo! Inc. vs. Blue Q Ltd., Romain Barissat,WIPO Case No. D2011-0702). Furthermore, the addition of the English term ‘outlet’ strengthens Internet user’s confusion with the Complainant’s business under the brand IC! BERLIN”.

Previous UDRP panels have ruled that the mere addition of a not sufficiently differentiating element in the domain name does not avoid a finding of confusing similarity with trademark: “the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).

Also, the addition of a 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 the domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed 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 indicate 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.

Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(ii) of the Policy. 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 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 sufficient 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 SWAROVSKIor that the Domain Names 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 registration and use of the disputed domain name. It was held by previous UDRP panels 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 disputed domain name leads Internet users to a website that engages in the marketing of prima facie what the Complainant is describing as counterfeit 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”.

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 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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