The Complainant is Kaufland Warenhandel GmbH & Co. KG of Neckarsulm, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Privacy Protection of Kiev, Ukraine / Stepanov Ilya, Степанов Илья of Kiev, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with Hosting Ukraine LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2016. On September 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 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. The Center sent an email communication to the Complainant on September 21, 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 amendment to the Complaint on September 22, 2016.
On September 21, 2016, the Center notified the Parties in both English and Russian that the language of the Registration Agreement in this case was Russian. The Complainant requested English to be the language of the proceedings on September 22, 2016. The Respondent did not reply.
The Center verified that the Complaint together with the amendment to 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 September 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2016.
The Center appointed Irina V. Savelieva as the sole panelist in this matter on October 28, 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 notes the Complainant’s request that the language of the proceedings should be English and the Center’s reply of September 27, 2016 stating that given the provided submissions and circumstances of the case, it would accept the Complaint as filed in English; accept a Response in either English or Russian; and appoint a Panel familiar with both languages mentioned above, if available. 4. Factual Background
The Complainant belongs to the group of companies known under the name of Kaufland. The Complainant is a major European retail chain residing in Germany operating since 1984. It operates - mostly by independent affiliated companies - over 1,000 Kaufland supermarkets in Germany, Czechia, Slovakia, Poland, Croatia, Romania and Bulgaria. The Complainant is the centralized purchasing company for the Kaufland supermarkets and owner of all trademarks KAUFLAND which it licenses to the Kaufland supermarkets.
The Complainant is the owner of various national and international trademark registrations for KAUFLAND in various jurisdictions, including Ukraine on February 1, 1996, May 26, 2010 and June 12, 2006. Due to large number of stores in Germany, Czech Republic, Slovakia, Poland, Croatia, Romania and Bulgaria the trademarks KAUFLAND are well-known and have a strong reputation in the supermarkets industry. The Complainant promotes its trademarks KAUFLAND internationally through websites in numerous languages under the domain names , , , and .
The Respondent, being a Ukrainian individual, registered the disputed domain name on July 27, 2016. The Respondent did not file any response and was consequently declared in default by the Center. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is similar to the Complainant’s trademark. The Complainant refers to well established practice that the specific top level of a domain such as “.com”, “.org”, “.tv” or “.net” does not affect the domain name for the purpose of determining the identity or similarity of a domain name and a trademark. This also applies for new gTLD (see WIPO, Audi AG, Automobili Lamborghini Holding S.p.A., Skoda Auto a.s., Volkswagen AG v. JUS TIN Pty Ltd.,WIPO Case No. D2015-0827). Accordingly, the domain name is identical to Complainant’s trademarks KAUFLAND.
The Complainant further contends that the Respondent does not have any rights or legitimate interests to the disputed domain name for the following reasons:
(a) the Complainant has established its prima facie case and the Respondent has the burden of proof and he failed to present any response,
(b) the Respondent has not demonstrate any bona fide offering of goods and services,
(c) the Respondent is not known under the disputed domain name,
(d) the Respondent’s noncommercial or fair use of the domain name is not cognizable.
In particular, Respondent did not reply to the cease and desist letter of the Complainant and has not shown any demonstrable preparations to use the disputed domain name.
The Complainant contends finally that the disputed domain name was registered and used in bad faith due to the following reasons:
(a) the Respondent knew or should have known about the Complainant’s trademarks,
(b) the Respondent’s failure to respond to the cease and desist letter,
(c) the Respondent failure to lift the privacy shield to reveal the true identity of the beneficial owner itself,
(d) the Respondent’s passive holding of the disputed domain name.
In particular, the lack of any conceivable plausible actual or contemplated active use as noted in, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 been considered when determining the Respondent’s bad faith. There is no conceivable legitimate use of the disputed domain name by the Respondent. Any commercial use of the disputed domain name would infringe Complainant’s trademarks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Respondent was given notice of this proceeding in accordance with the Rules both in Russian and English.
However, the Respondent failed to file a response to the Complaint and has not sought to answer to the Complainant’s assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case and finds no exceptional circumstances why it could not do so; and the Panel will proceed to a decision based on the Complaint in accordance with paragraph 5(f) of the Rules. Prior to that the Respondent failed to respond to the Complainant’s cease and desist letter.
The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must prove that the three following elements are satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Pursuant to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply. A. Language of Proceeding
Paragraph 11 of the Rules states that the language of the proceeding shall be the language of the Registration Agreement subject to the authority of the Panel determines otherwise. The Registrar has confirmed that the Registration Agreement is in Russian. The Complainant has requested English as the language of proceeding. The Complainant brought forward arguments in support of its request in the Complaint. The Panel notes that the Complainant is located in Germany and has no knowledge of Russian. The Complainant will incur undue hardship and delay the proceeding if it was required to translate the Complaint into Russian. The Respondent has not objected to the Complainant’s language request. In the present circumstance, the Panel finds it fair to accept the Complainant’s Complaint filed in English, while allowing the Respondent to respond in Russian. Given that the Respondent has not filed any submission, the Panel proceeds to a decision in English. B. Identical or Confusingly Similar
The Complainant has registered the KAUFLAND trademark in numerous jurisdictions, including Ukraine. The Complainant submits that the disputed domain name is identical or confusingly similar to its trademark. The disputed domain name incorporates the KAUFMAN trademark in its entirety.
The Panel refers to a number of past UDRP decisions, which confirm that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd.,WIPO Case No. D2000-0802).
In relation to the incorporation in the disputed domain name the gTLD “.site,” as the Panel finds that the inclusion of a generic element together with a trademark does not distinguish the disputed domain name from a registered trademark and does not avoid a finding of confusing similarity in this case as the gTLDs are generally not considered when assessing confusing similarity under the Policy.
Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s trademark KAUFLAND.
The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.
Even though the Respondent has not filed a response to the Complaint and has not contested the Complainant’s assertions, the Panel will need to consider whether the Respondent’s use of the disputed domain name would indicate the Respondent’s rights or legitimate interests in the disputed domain name.
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.
A respondent may show its rights or legitimate interests, non-exhaustively, by producing evidence to support the circumstances under paragraphs 4(c)(i)-(iii) of the Policy.
By not responding to the Complainant’s contentions, the Respondent in this proceeding has not attempted to demonstrate its rights or legitimate interests.
The Panel further notes that there is no evidence that before any notice of the dispute with the Complainant, that the Respondent was using the disputed domain name for a bona fide offering of goods or services as the disputed domain name linked to a parking website indicating that it is ready for use and does not resolve to an active site.
The above described use of the dispute domain name, in the Panel’s view, prove that the Respondent was not involved in bona fide offering of goods and services in respect of the disputed domain name under paragraph 4(c)(i) of the Policy.
As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.
The Panel recalls that the Respondent registered the disputed domain name in 2016. The Complainant asserts that the activity under the KAUFLAND trademark has continued since the 1980s and KAUFLAND has been registered as a trademark since in 1996 in a number of jurisdictions, including Ukraine, and is widely known and recognized as a trademark within its industry.
Therefore, as the disputed domain name has been registered more than twenty years after the registration of the Complainant’s trademark, it is totally inconceivable that the Respondent known as Stepanov Illya, has been commonly known by the disputed domain name as provided in paragraph 4(c)(ii) of the Policy.
There is no further evidence that the Respondent is making or has made legitimate noncommercial or fair use of the disputed domain name. The Respondent is using the disputed domain name for a parking site which could be construed as in anticipation of future sell for profit. Therefore, paragraph 4(c)(iii) of the Policy does not apply.
The Panel finds the Complainant has established its prima facie case to show that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.
The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name has been registered with the Respondent’s knowledge of the Complainant’s trademark and reputation. In particular, the fact that the Respondent registered the disputed domain name not in Cyrillic but in Latin transcription.
It is the Panel’s view, under the present circumstances, that the Respondent most likely registered the disputed domain name with full awareness of the Complainant’s trademark as well as the goodwill associated with it.
The Complainant asserts that the term “kaufland” is a coined term, composed of “kauf” (“purchase” in German) and “land” (“country” in German) and does not have a meaning other than as it relates to the Complainant. It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain name could be directly associated with the Complainant’s trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327).
The Complainant further contends that the disputed domain name was registered primarily for the purpose of further selling or profiting from the Complainant’s well-know trademark.
The Panel finds that the Respondent’s registration of the disputed domain name shows the Respondent’s intent to rely on a risk of confusion with the Complainant’s activity and trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name and website associated with it.
The fact that the disputed domain name currently resolves to an inactive website, in the Panel’s view, does not preclude a finding of bad faith under the present facts. Lack of any conceivable plausible actual or contemplated active use may suggest the Respondent’s bad faith.
The Panel is not aware of the Respondent conducting any legitimate business activity using the disputed domain name. These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith.
The Panel also draws inferences of bad faith from the lack of any response from the Respondent to the Complaint as well as the cease and desist letter, which could be a separate argument for the bad faith circumstances according to WIPO practice (see America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460).
The fact that the Respondent had used a privacy shield to hide his true identity should be treated as further suggestive of bad faith in the present circumstances.
The Panel finds the Complainant has satisfied paragraph 4(a)(iii) of the Policy, that the Respondent registered and used the disputed domain name in bad faith. 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.
Irina V. Savelieva
Sole Panelist
Date: November 21, 2016
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