Complainant is AutoHansa AB of Stockholm, Sweden, represented by Adaris Avocats, France.
Respondent is Whoisguard Protected of Panama, Panama / Ciprian Tonoiu of Gravesend, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain names and are registered with 1&1 Internet AG and eNom (the "Registrars"), respectively. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 26, 2015. On October 27, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 28, 2015, the Registrars transmitted by email to the Center their verification responses confirming that Respondent Ciprian Tonoiu is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on November 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 30, 2015.
The Center appointed Richard Hill as the sole panelist in this matter on December 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
Complainant owns the mark AUTO HANSA and uses it to market automobiles throughout Europe, including in Poland.
Complainant's registration of its mark dates back to 2010.
The disputed domain names were registered in 2015.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
One of the disputed domain names is not being used.
The other disputed domain name points to a web site that appears to offer cars for sale, but that is in reality used to obtain information from customers so as to be able to send them false invoices and to perpetrate fraud. 5. Parties' Contentions A. Complainant
Complainant states that it was founded in 2009 and is specialized in the automotive industry. It buys vehicles, mainly by negotiated lots, in all European Union countries and then resells them. It has subsidiaries in Sweden, France and Poland, and has developed a network of small and medium-sized dealers in various locations around Europe.
Complainant states that it owns registered trademarks for AUTO HANSA in various jurisdictions, with rights dating back to 2010.
According to Complainant, the disputed domain names are confusingly similar to its trademark because they fully incorporate the mark and add the geographically descriptive term "polska", which means Poland in Polish, and a hyphen between "auto" and "hansa" in one of the disputed domain names. Complainant cites UDRP precedents to support its position.
Further, says Complainant, it has exclusive rights in its trademark, whose registration precedes the registration of the disputed domain names. There is no connection or affiliation between Complainant and Respondent, who has not received any license or been otherwise authorized to use Complainant's mark. Respondent is not known by the disputed domain names.
Complainant alleges that one of the disputed domain names, , is not used. Thus Respondent does not appear to have any rights or legitimate interests therein since there is no evidence of use or preparations to use it in relation with a bona fide offering of goods or services. Nor is Respondent making a legitimate noncommercial or fair use of that disputed domain name.
According to Complainant, the other disputed domain name, , resolves to a web site where a so-called "Autohansa Polska" company presents the services of a car dealership. However, this company is not related in any way to Complainant or its dealer in Poland.
Complainant alleges that the existence of the cited company is doubtful. The web site has been plagiarized from another, unrelated, web site. The address mentioned on the web site is the address of Complainant's official subsidiary in Poland. There is no evidence of actual commercial activity related to this web site. It appears to be a façade for a fraudulent business.
In any case, says Complainant, the web site is misleading and is used to confuse consumers. Thus Respondent has no rights or legitimate interests in the disputed domain name , either.
Further, alleges Complainant, both of the disputed domain names have been registered and used in bad faith. Complainant cites UDRP precedents to support its contention that a domain name can be considered to be used in bad faith even if it is not actively used.
According to Complainant, the disputed domain name resolves to a web site that attracts users for commercial gain and misleads them, by creating a likelihood of confusion as to the source, affiliation and endorsement of Respondent's web site. Worse, the web site is used to interact with customers who then receive fake invoices which constitute fraud. A police investigation is currently ongoing in Poland to determine the scale of the fraud and its perpetrators. This manifestly constitutes registration and use in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain names incorporate Complainant's mark in its entirety and add the geographic description "polska", meaning Poland in Polish. One of the disputed domain names adds a hyphen in the middle of Complainant's mark. Neither addition is sufficient to avoid a finding of confusing similarity between the disputed domain names and Complainant's mark. See Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; see also Harrods Limited v. John Griffin,WIPO Case No. D2002-0641; Guinness UDV North America, Inc. v. UKJENT,WIPO Case No. D2001-0684.
The Panel finds that Complainant has satisfied its burden of proof for this element of the Policy. B. Rights or Legitimate Interests
Respondent has not been licensed or otherwise authorized to use Complainant's mark. There is no evidence in the file to indicate that Respondent is commonly known by the disputed domain names.
One of the disputed domain names is not being used. Thus the Panel finds that Respondent does not have rights or legitimate interests in that disputed domain name.
The other disputed domain name is being used to resolve to a web site that purports to sell cars, but that is in reality used to obtain information from customers so as to send them fraudulent invoices. This is not a legitimate or bona fide use of the disputed domain name. Thus the Panel finds that Respondent does not have rights or legitimate interests in that disputed domain name.
Furthermore, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods or services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan,WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian,WIPO Case No. D2000-0937.
The Panel finds that Complainant has satisfied its burden of proof for this element of the Policy. C. Registered and Used in Bad Faith
Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for his use of Complainant's mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
As noted above, one of the disputed domain names is used to obtain information from customers in order to send them fraudulent invoices. Thus the Panel finds that Respondent has registered and is using that disputed domain name to take advantage of the confusing similarity between the disputed domain name and Complainant's mark in order to profit from the goodwill associated with the mark in bad faith under paragraph 4(b)(iv) of the Policy. See E, Inc. v. Ult. Search, Inc.,WIPO Case No. D2001-1319; ACCOR v. Steve Kerry / North West Enterprise, Inc.,WIPO Case No. D2006-0649; Terex Corporation v. Texas International Property Associates - NA NA,WIPO Case No. D2008-0733.
The other disputed domain name is not being used. According to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, "[p]anels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa."
In the present case, the disputed domain name which is not actively used, , was registered through a privacy service that hid Respondent's identity and contact details. That is, Respondent concealed his identity. There has been no response to the Complaint. The Registrars have confirmed that the same person registered both of the disputed domain names. Given the bad faith use of the other disputed domain name, and the circumstances mentioned above, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel finds that Complainant has satisfied its burden of proof for this 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 Complainant.
Richard Hill
Sole Panelist
Date: December 9, 2015
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