The Complainant is Trodat GmbH of Wels, Austria, represented by Salomonowitz | Horak, Austria.
The Respondent is Robert Tylka, Tylka / Emma Rogers of Scottsdale, Pennsylvania, United States of America (“United States”) / Emma Rogers. 2. The Domain Names and Registrar
The disputed domain names , , and (the “Disputed Domain Names”) are registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2016. On October 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 7, 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 October 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2016. No formal Response was filed with the Center. On November 2, 2016 the Center informed the Parties, that pursuant to paragraph 6 of the Rules the Center would proceed to Panel Appointment.
The Center appointed John Swinson as the sole panelist in this matter on November 11, 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 Trodat GmbH of Austria. According to the Complaint, the Complainant has been manufacturing stamps since the early 20 century. The Complainant now has more than 35 international subsidiaries and more than 1,300 employees worldwide. The Complainant is the market leader for self-inking stamps and is the leading manufacturer of computer-controlled laser machines for laser engraving, laser cutting and laser marking. In 2015, the Complainant’s group of companies had total revenue of EUR 216.1 million.
The Complainant first introduced its PRINTY self-inking stamp in 1976. According to the Complaint, the Complainant has now sold more than 200 million PRINTY stamps worldwide.
The Complainant owns trade marks for the words TRODAT and PRINTY (the “Trade Marks”). The Complainant has provided evidence of the following registrations for the Trade Marks:
- International trade mark registration number 484432 for TRODAT, registered on March 30, 1984;
- European Union Community trade mark registration number 003082773 for TRODAT (stylized), registered on May 6, 2005;
- Austrian trade mark registration number 166890 for PRINTY, registered on October 30, 1996; and
- International trade mark registration number 790964 for PRINTY, registered on October 4, 2002.
The Complainant’s primary website is at a domain name which incorporates one of the trade marks, being .
The Respondent did not file a formal Response, and consequently little information is known about the Respondent.
The Disputed Domain Names were registered on May 25, 2016. The websites at the Disputed Domain Names each resolve to a website which contains only the following text in the upper left corner: “Hi, How are you 3110?”, along with the relevant domain name. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions.
Identical or Confusingly Similar
The Disputed Domain Names use the Trade Marks in their entirety. The only additional elements are a random number and letter, ranging from “01a” to “05a”. These are not capable of eliminating the likelihood of confusion between the Disputed Domain Names and the Trade Marks. The combination of two of the Complainant’s trade marks intensifies customer confusion. The overall impression left by the Disputed Domain Names is that they are associated with the Complainant.
As such, the Disputed Domain Names are confusingly similar to the Trade Marks.
Rights or Legitimate Interests
The Complainant has not granted any license or other right to the Respondent to use the Trade Marks, or to register any domain name which incorporates the Trade Marks.
The Respondent has no legitimate interests in respect of the Disputed Domain Names. The Trade Marks are both fanciful marks. As such, it is inconceivable that the Respondent would use these terms unless seeking to create an impression of association with the Complainant.
Registration and Use in Bad Faith
The trade mark TRODAT has a longstanding leading position in the market and extensive distribution throughout the world, and as such, it is certain that the Respondent was aware of the Complainant’s reputation in this trade mark at the time she registered the Disputed Domain Names. It is not possible to conceive of any reason to legitimately register the Disputed Domain Names.
Further, the Respondent has registered a total of 56 domain names which combine the Trade Marks and add a random letter and number, all of which were registered on May 25, 2016. The websites at these domain names contain identical content to those at the Disputed Domain Names.
Due to this pattern of conduct, it is obvious that the Respondent registered the Disputed Domain Names to prevent the owner of the Trade Marks from reflecting the Trade Marks in corresponding domain names, and/or to disrupt the Complainant’s businesses.
The Respondent intends to mislead Internet users as to the origin of the website at the Disputed Domain Names. The use of the Disputed Domain Names by the Respondent is disrupting the Complainant’s business and causing substantial confusion to the public. B. Respondent
The Respondent did not file a formal Response, but in a number of email communications to the Center stated that he or she selected the Disputed Domain Names at random, and was not aware of the Trade Marks or the Complainant at the time she registered the Disputed Domain Names. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a response. A. Procedural Issues – Informal Response / identity of Respondent
The Center received a number of email communications from two different individuals in relation to this proceeding. One individual identified herself as Emma Rogers. The email address from which her email communications were received was that listed in the WhoIs information for the Disputed Domain Names. The other identified himself as R Tylka or Bob T. This name matches the registrant name in the WhoIs information for the Disputed Domain Names.
Ms. Rogers stated in her emails that she bought the Disputed Domain Names at random from a reseller, and was not aware of the Complainant.
Mr. Tylka stated that he does not own, and has never registered, the Disputed Domain Names.
The Center advised both individuals that, according the paragraph 1 of the Rules, the Respondent to this proceeding is the holder of the relevant domain names against which a complaint is initiated, and as such, Mr. Tylka would be included in the proceeding so that the Center could fulfil its administrative duties.
The Panel agrees with the approach taken by the Center, but considers that the true registrant of the Disputed Domain Names is likely to be the individual who identified herself as Emma Rogers. Ms. Rogers stated that she purchased the Disputed Domain Names from a reseller. The Panel will proceed on the basis that Ms. Rogers is a Respondent in this proceeding.
The Panel notes that the email communications which the Center received from Ms. Rogers do not constitute a formal Response, as these communications do not address the elements of the Policy. The Panel has not taken these communications into account in reaching its decision. Even if it did, these communications would not change the Panel’s decision. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Mark.
As submitted by the Complainant, the Disputed Domain Names wholly incorporate the Trade Marks and add a general number and letter combination. This addition does not assist to reduce the confusing similarity. The fact that the Respondent has registered five domain names which combine two of the Complainant’s trade marks serves to increase the confusing similarity.
The Disputed Domain Names are confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent has not used or made demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services. The websites at the Disputed Domain Names only contain the message “Hi, How are you 3110?” along with the relevant Disputed Domain Name. In the circumstances, this is not a bona fide use of the Disputed Domain Names under the Policy.
- The Panel accepts the Complainant’s submission that the Complainant has not authorized or otherwise given the Respondent permission to use the Disputed Domain Names.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Names, or has registered or common law trade mark rights in relation to any of these names.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. There is no content on the websites at the Disputed Domain Name to support a finding of fair use.
The Respondent had the opportunity to demonstrate her rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
The Complainant has used its trade mark TRODAT for stamps for almost 70 years. It has also used this trade mark as its company name for almost 50 years. The Complainant has used its trade mark PRINTY for 40 years. The Disputed Domain Names were registered on May 25, 2016.
Given the number of domain names registered by the Respondent which incorporate the Trade Marks, and the Complainant’s longstanding use of the Trade Marks, the Panel finds it inconceivable that the Respondent was not aware of the Trade Marks at the time she registered or acquired the Disputed Domain Names. The Panel finds that the Respondent registered the Disputed Domain Names in bad faith.
The Panel notes that, while the Complaint only relates to five domain names, the Complainant has provided results of Who Is searches for a total of 56 domain names, each of which incorporates the Trade Marks, and each of which have identical contact details to those of the Disputed Domain Names. It is unclear to the Panel why the remaining domain names were not included in the Complaint.
The Panel considers that the Respondent has engaged in a pattern of conduct of registering domain names to prevent the Complainant from reflecting the Trade Marks in those domain names. This is an indicator of bad faith registration and use under paragraph 4(b)(ii) of the Policy. This pattern of conduct is evident both from these proceedings (which relate to five different domain names), and from the additional domain names referred to in the Complaint.
In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third 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 the Complainant.
John Swinson
Sole Panelist
Date: November 24, 2016
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