The Complainant is Haas Food Equipment GmbH, of Vienna, Austria, represented by Preslmayr Rechtsanwälte OG, Austria.
The Respondent is Mirosław Kościerski, of Złotów, Poland. 2. The Domain Name and Registrar
The disputed domain name is registered with NetArt Sp. z o.o. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2016. On February 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 2, 2016, 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.1 The Center sent an email communication to the Complainant on February 10, 2016 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 February 15, 2016.
The Complaint was submitted in English. As confirmed by the Registrar, the language of the Registration Agreement is Polish. The Center sent an email communication to the Parties, in both English and Polish, regarding the language of the proceeding on February 4, 2016. On the same date, the Complainant submitted a request for the language of the proceeding to be English. The Respondent did not comment on the language of proceeding by the specific due date. The Center proceeded in English and Polish.
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 and 4, the Center formally notified the Respondent of the Complaint (in both English and Polish), and the proceedings commenced on February 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2016.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on March 14, 2016. 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 a family-owned Austrian company, headquartered in Vienna (Wien in German), which for more than 40 years has been operating worldwide in the field of mechanical engineering.
It owns the trademark registration No. 78533933 for the trademark HAAS before the United States Patent and Trademark Office (“USPTO”), registered on November 16, 2004 (“the Mark”). The Complainant is the registrant of the domain name .
The disputed domain name was created on October 30, 2015 and while active, redirected to the Complainant’s domain name and corresponding website. The disputed domain name is currently inactive. 5. Parties’ Contentions A. Complainant
(i) The Complainant submits that the disputed domain name reproduces the Mark in which the Complainant has rights and is confusingly similar to the Mark.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith as it is using the disputed domain name with the fraudulent intent to lure Internet users into the mistaken belief that the Respondent is, or is associated with, the Complainant, in effect faking the identity the Complainant.
(iv) The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Procedural Aspects A. 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”.
As noted above, the Complaint was filed in English. The Registrar confirmed that the language of the Registration Agreement of the disputed domain name is Polish.
The Complainant requested that the proceeding take place in English. The Respondent submitted no comment in this regard, despite having been given the opportunity, in both English and Polish, to do so by the Center.
In adopting a language other than that of the Registration Agreement, the Panel has to exercise discretion in the spirit of fairness to both parties, which pursuant to Paragraph 10(b) of the Rules have to be treated with equality, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.
Considering the lack of a response from the Respondent, as well as the fact that using English, rather than Polish, would not create an undue advantage for the Complainant (an Austrian company), and having to ensure pursuant to paragraph 10(c) of the Rules that the administrative proceeding takes place with due expedition, the Panel, who is conversant in both English and Polish, determines pursuant to paragraph 11(a) of the Rules to accept the Complaint in English and to proceed to the decision in English. B. Failure to Respond
The Respondent is formally in default pursuant to paragraphs 5(f) and 14(a) of the Rules because no Response was received from the Respondent within the time limit set by the Policy and the Rules.
Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is still the complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even when the respondent is in default.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith. 6.2 Requirements of Paragraph 4(a) of the Policy A. Identical or Confusingly Similar
In comparing the disputed domain name with the Mark, the Panel finds that the Mark is replicated entirely in the disputed domain name, the latter simply adding the word “wien”, which is a geographical location.
The consensus view of UDRP panels is that the addition of generic or descriptive terms does not generally serve to distinguish a domain name from a registered trademark. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor,WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank,WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu,WIPO Case No. D2006-0318.
In this case, the Panel finds that the dominant component of the disputed domain name is “haas”, and that the inclusion of “wien”, the name in German of the capital of Austria (German being Austria’s official language), which is also the city where the Complainant is headquartered, only serves to increase the confusion.
It is also well established that the generic Top-Level Domain, such as “.com”, does not generally affect the assessment of a domain name for the purpose of determining identity or confusing similarity.
Consequently, the Panel finds that the similarity between the disputed domain name and the Mark is such as to create confusion for Internet users.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Although a complainant bears the burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that, with regard to paragraph 4(a)(ii) of the Policy, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of a right or legitimate interest in a domain name once the complainant has made a prima facie showing, as the Panel finds the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
By not submitting a Response, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name or uses a corresponding name in a business.
The website associated with the disputed domain name apparently resolved to the domain name and website of the Complainant.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
On the contrary, the Complainant has credibly argued that the Respondent: (i) has no rights or legitimate interests in the disputed domain name and (ii) has registered the disputed domain name with the intent to use it fraudulently.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name. C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion with the Complainant and the Mark for the purposes of committing fraud.
It has been established in prior UDRP decisions that the registration of a domain name confusingly similar to a trademark by any entity that has no relationship to that trademark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA,WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin,WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Research In Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492.
In this case, the Panel notes that it is close to impossible that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board,WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs,WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092.
Where a respondent knew or should have known of a trademark prior to registering a domain name containing this Mark, such conduct may also suggest bad faith. See Weetabix Limited v. Mr. J. Clarke,WIPO Case No. D2001-0775.
In addition, the Panel notes that many UDRP decisions have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf,WIPO Case No. D2001-0148), considering the specificity of the activity.
The Complainant has also argued and provided evidence that the disputed domain name may be fraudulently used to divert Internet users, for commercial gain, through a scam (in the present case, the Complainant was alerted to the scam by a forged fax reproducing the Mark and its own stationary). The Panel notes further that the Complainant has been the target of various criminal activities concerning other domain names that are confusingly similar to trademarks owned by the Complainant, and that in several other UDRP cases, domain names were transferred to the Complainant. See Haas Food Equipment GmbH v. Usman ABD, Usmandel,WIPO Case No. D2015-0285; Haas Food Equipment GmbH v. Andrea Rocco / Khan Arif,WIPO Case No. D2015-1210 and Haas Food Equipment GmbH v. VistaPrint Technologies Ltd,WIPO Case No. D2015-2050.
Moreover, the Panel notes that the Respondent used a privacy shield service and under the present circumstances considers this fact as corroborative of bad faith. See Gaylord Entertainment Company v. Nevis Domains LLC,WIPO Case No. D2006-0523.
Finally, some UDRP decisions have held that, in certain circumstances, persons who are registering domain names have an affirmative duty to abstain registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer,WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex,WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141.
The Panel finds that the evidence submitted supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is satisfied in this case. 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.
Louis-Bernard Buchman
Sole Panelist
Date: March 18, 2016
1 The Complaint named the privacy shield that had been employed by the Respondent.
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