The Complainant is Trodat GmbH of Wels, Austria, represented by Salomonowitz Horak, of Vienna, Austria.
The Respondent is Domain Admin, WhoIs Privacy Corp. of New Providence, Bahamas. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with TLD Registrar Solutions Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2016. On February 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 19, 2016, 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.
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 the Respondent of the Complaint, and the proceedings commenced on February 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2016.
The Center appointed Lynda M. Braun as the sole panelist in this matter on March 23, 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.
The Panel has determined that the language of the proceeding is English. 4. Factual Background
The Complainant, incorporated under Austrian law and located in Wels, Austria, is the world’s largest manufacturer of self-inking rubber stamps. The Complainant has manufactured stamps since 1912. After a period of vast worldwide expansion, the Complainant currently includes more than thirty international subsidiaries, with more than 1,150 employees worldwide.
The Complainant owns numerous trademarks for the word and design marks TRODAT (collectively, the “TRODAT Mark”) in several jurisdictions in Europe, including Austria, France, the United Kingdom of Great Britain and Northern Ireland and the European Union, with its earliest registration apparently dating back to 1958 in Austria. The Complainant has been using “Trodat” as its business name since 1968.
The Complainant registered the domain name in 1998 and has used it continuously since that time to promote its goods and services through its official website at “www.”.
The Respondent registered the Disputed Domain Name on May 14, 2015. Prior to the time the Complainant commenced this proceeding, the Disputed Domain Name resolved to a web page that purported to be the official website of the Complainant’s French subsidiary. The website displayed the Complainant’s logos and the Complainant’s products that could be purchased online. The Complainant submitted screen shots of these pages as an annex to its Complaint.1
After becoming aware of the Disputed Domain Name and website to which it resolved, an employee of the Complainant’s French subsidiary wrote to the Respondent on several occasions to demand that the Respondent cease the use of and transfer the Disputed Domain Name to the Complainant. The Respondent did not respond to these communications, although the content of the aforementioned website has since been removed. As described in footnote 1, supra, the Respondent continues to use the Disputed Domain Name, although it now resolves to a webpage indicating that the website is under construction. 5. Parties’ Contentions A. Complainant
The following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i)-(iii)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the TRODAT Mark based on longstanding use as well as its trademark registrations for the TRODAT Mark in many countries. The Disputed Domain Name consists of the TRODAT Mark in its entirety, followed by the generic Top-Level Domain (“gTLD”) “.xyz”.
It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy. Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795. The Disputed Domain Name consists of the Complainant’s TRODAT Mark followed by the gTLD “.xyz”, a recently-introduced gTLD made available to the public in 2014.
Since the addition of a gTLD such as “.xyz” in a domain name may be technically required, such element may generally be disregarded when assessing whether a domain name is confusingly similar to a trademark. See Volkswagen AG v. Fawzi Sood,WIPO Case No. D2015-1483; Philip Morris USA Inc. v. Alex Newton,WIPO Case No. D2015-0568. Therefore, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s TRODAT Mark under the Policy.
Accordingly, the first element of paragraph 4(a) has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant has not authorized, licensed or otherwise permitted the Respondent to use its TRODAT Mark. There is no evidence that the Respondent is commonly known by the Disputed Domain Name, nor does the Complainant have any type of business relationship with the Respondent. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case.
Accordingly, the second element of paragraph 4(a) has been met by the Complainant. C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, the registration of a domain name that is confusingly similar to a registered trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith).
Second, the Panel finds that the Respondent registered and used the Disputed Domain Name in bad faith when the Disputed Domain Name resolved to a website that purported to be the official website of the Complainant’s French subsidiary, offering for sale products purporting to be those of the Complainant. Thus, the Respondent attempted to disrupt the Complainant’s business by attracting, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s TRODAT Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainant and its TRODAT Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy.”).
Third, bad faith may be found where the Respondent knew or should have known of the registration and use of the Complainant’s trademark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name after the Complainant obtained its numerous trademark registrations for the TRODAT Mark. Further, the use by the Respondent of the Disputed Domain Name that resolved to a website that was confusingly similar to the Complainant’s official website makes it disingenuous for the Respondent to claim that he was unaware of the Complainant’s trademark rights. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights in the complainant’s trademark).
Finally, the Respondent’s bad faith can also be inferred from its lack of reply to the cease and desist communications sent by the Complainant’s employee prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210.
In all the above circumstances, that the Disputed Domain Name currently resolves to a website under construction (akin to being passively held) does not prevent a finding of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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.
Lynda M. Braun
Sole Panelist
Date: March 29, 2016
1 As of the writing of this decision, the Disputed Domain Name resolves to a page stating “Site en maintenance”, “merci de repasser un peu plus tard, le site est en maintenance” and “Under Maintenance”. Thus, the Disputed Domain Name is currently passively held.
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