The Complainant is Freistaat Bayern, Munich, Germany, represented by Bettinger Scheffelt Kobiako von Gamm, Germany.
The Respondent is Pugach Andrey Vladimirovich/Пугач Андрей Владимирович, Krivoy Rog, Ukraine. 2. The Domain Name and Registrar
The disputed domain name (the “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 November 15, 2016. On November 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 16, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 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 amended Complaint on November 22, 2016.
The Center verified that 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, and the proceedings commenced on December 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2016.
The Center appointed Olga Zalomiy as the sole panelist in this matter on January 3, 2017. 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, the German Federal State of Bayern, owns several trademark registrations for the NEUSCHWANSTEIN mark, such as International trademark registration No. IR811198 dated July 22, 2003 (based on the German trademark registration No. 30303175).
The Domain Name was registered on July 5, 2016. On or about November 15, 2016, the Domain Name used to resolve to what appeared as an online magazine offering one article of clothing for sale under different prices. Later the website was amended to augment its assortment and later the website was disabled. Currently, the Domain Name does not direct to any website. 5. Parties’ Contentions A. Complainant
The Complainant contends that it is a German federal state, which owns the famous royal castle NEUSCHWANSTEIN. The Complainant contends that it owns rights in the name NEUSCHWANSTEIN pursuant to provisions of the German Civil Code. The Complainant alleges that it registered the NEUSCHWANSTEIN trademark in numerous countries. The Complainant claims that the Domain Name is identical to its NEUSCHWANSTEIN trademark because the subdomain part of the Domain Name exactly reproduces the Complainant’s mark without the addition of any text, the removal of characters, or the misspelling of any words.
The Complainant further claims that the Domain Name is confusingly similar to its combined trademarks consisting of the word NEUSCHWANSTEIN and design.
The Complainant alleges that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant claims that its rights in the NEUSCHWANSTEIN trademark precede the Respondent’s registration of the Domain Name by many years. The Complainant contends that it has not licensed or otherwise permitted the Respondent to use its trademarks or to apply for the Domain Name. The Complainant argues that there is no evidence of the Respondent’s use or preparations to use the Domain Name in connection with a bona fide offering of goods or services. The Complainant alleges that there is no evidence that the Respondent is commonly known by the Domain Name.
The Complainant claims that the Domain Name was registered and is being used in bad faith. The Complainant argues that it is inconceivable that the Respondent registered the Domain Name without knowledge of the Complainant’s rights in the NEUSCHWANSTEIN trademark because the trademark is famous and because the word NEUSCHWANSTEIN is an invented word, which was given to the castle belonging to the Complainant many years ago. The Complainant claims that the Respondent’s registration of the Domain Name with the knowledge of the Complainant’s rights is evidence of bad faith registration.
The Complainant alleges that the Domain Name is being used to direct to a fake website offering for sale one article of clothing under various brands. The Complainant argues that by promoting its business using the Complainant’s trademark, the Respondent has attempted to commercially benefit from the goodwill associated with the Complainant’s trademark. The Complainant alleges that the Respondent’s use of the Domain Name to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, qualifies as bad faith use under the UDRP. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. 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.”
Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. However, the Complainant requested that the language of the proceeding be English. The Complainant argues that the Respondent can communicate in English because the website, to which the Domain Name resolves, contains text in English. The Complainant contends that the Respondent will suffer no prejudice if the proceeding will be conducted in English.
The Panel accepts the Complainant’s arguments. It is established practice to make a decision regarding the language of the proceeding that ensures fairness to the parties and maintains an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. See, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593. Here, the Center advised the Respondent in both English and Russian about an opportunity to object to the Complainant’s request for English or to request Russian to be the language of the proceeding, but the Respondent failed to do so. Therefore, it would not be unfair to the Respondent if the Panel proceeds to this decision in English. In turn, to require the Complainant to translate the documents in this case into Russian will lead to an undue and unnecessary burden. The Panel, therefore, grants the Complainant’s request that English be the language of this proceeding. 6.2. General discussion
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). A. Identical or Confusingly Similar
Under the first UDRP element, the Complainant is required to prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has established its rights in the NEUSCHWANSTEIN trademark by submitting evidence of its registrations.
The addition of a generic Top-Level Domain (“gTLD”) suffix such as “.pro” is to be generally disregarded under the confusing similarity test (as gTLD is a technical requirement of registration)1 . Thus, the inquiry here under paragraph 4(a)(i) of UDRP is only whether the “neuschwanstein” subdomain is identical or confusingly similar to the Complainant’s mark NEUSCHWANSTEIN. Here, the subdomain “neuschwanstein” is identical to the Complainant’s well-known NEUSCHWANSTEIN mark.
Thus, the Panel holds that the first element of the UDRP has been proved. B. Rights or Legitimate Interests
Under the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent2 . Once the Complainant has made out the prima facie case, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name3 . Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.4
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant claims that it has not licensed or otherwise permitted the Respondent to use its NEUSCHWANSTEIN mark trademark, nor has it allowed the Respondent to apply for or to use any domain names incorporating the NEUSCHWANSTEIN mark. The Complainant alleges that there is no evidence suggesting that the Respondent is commonly known by the Domain Name.
The Complainant claims that there is no evidence of the Respondent’s use, or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The Complainant argues that the Domain Name directs to a website, which offers for sale one article of clothing under different brands at different prices. The Complainant alleges that the Respondent’s website is a mere fake website.
The Panel finds that it is more likely than not that the Complainant’s contentions are true because the Respondent did not dispute the Complainant’s allegations and there is no evidence to the contrary. Specifically, the evidence on file shows that the Respondent has not been commonly known by the Domain Name and he is not making legitimate commercial or fair use of the Domain Name because currently the Domain Name does not resolve to any website. The Domain Name used to direct to the website offering clothing for sale, but after commencement of the current proceeding the website was disabled.
Therefore, the Panel holds that the second element of the UDRP has been satisfied. C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
It is well-established, that the registration of a well-known mark as a domain name is clear indication of bad faith in itself, even without considering other elements. See The Gap, Inc. v Deng Youqian,WIPO Case No. D2009-0113. Prior UDRP panels held that the Complainant’s NEUSCHWANSTEIN trademark is famous and connected to the Complainant and its castle.5
Moreover, the word NEUSCHWANSTEIN is an invented word, which was given to the castle that Complainant owns in 1886. The word NEUSCHWANSTEIN has no other meaning except as the name of the castle. Therefore, it is inconceivable that the Respondent did not know about the Complainant’s trademark at the time of the Domain Name registration. Such knowledge is evidence of bad faith registration.
The Complainant claims that the Respondent is using the Domain Name in bad faith because it intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating likelihood of confusion with the Complainant’s mark as to the affiliation or endorsement of either the Respondent or its website. Currently, the Domain Name does not resolve to a website. However, the evidence on file shows that the Respondent used to use the Domain Name incorporating the Complainant’s mark to direct to the website, which first offered for sale one article of clothing under different prices and later was amended to sell different articles of clothing. As one UDRP panel held in similar circumstances: ”the presence of the Domain Name in the hands of the Respondent represents, in the view of the Panel, an abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered by the Respondent at any time) and therefore a continuing abusive use”.6 Similarly, the Panel holds that the Respondent’s current passive holding of the Domain Name amounts to bad faith use of the Domain Name.
Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith. The third element of the UDRP has been proved. 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.
Olga Zalomiy
Sole Panelist
Date: January 13, 2017
1 Paragraph 1.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
2 Paragraph 2.1, WIPO Overview 2.0.
3 Id.
4 Id.
5 Freistaat Bayern v. Jim van Dijk,WIPO Case No. D2009-0723.
6 Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited, WIPO Case No. D2014-1564.
Full & Egal Universal Law Academy