1.1 The Complainant is Weber-Stephen Products LLC of Palatine, Illinois, United States of America ("United States"), represented by Rickert Rechtsanwaltsgesellschaft mbH, Germany.
1.2 The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Daniela Gebauer, Kitchenhelpers GmbH of Bochum, Germany. 2. The Domain Name and Registrar
2.1 The disputed domain name (the "Domain Name") is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 20, 2017. At the time that the Complaint was registered the WhoIs details for the Domain Name, identified WhoisGuard, Inc as the registrant of the Domain Name. WhoisGuard, Inc. would appear to be the name of the operator of the "privacy service" provided by the Registrar.
3.2 On January 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 24, 2017, the Registrar transmitted by email to the Center its verification response disclosing the underlying registrant and contact information recorded for the Domain Name behind the privacy shield. The Center sent an email communication to the Complainant on January 25, 2017 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 in this respect on January 30, 2017.
3.3 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").
3.4 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 21, 2017.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 2, 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
4.1 The Complainant is a company based in the United States that manufactures grills and barbecue appliances and accessories under the "Weber" brand. The products are distributed worldwide including from a website operating from the domain name.
4.2 The Complainant is the owner of various registered trade marks that comprise or incorporate the term "Weber". They include:
(i) United States registered trade mark no. 0811229 registered on July 19, 1966 for the word mark WEBER in class 11; and
(ii) European Union trade mark no. 12056396 filed on August 9, 2013 and registered on December 13, 2013 for the word mark WEBER in classes 4, 6, 9, 16, 17, 20, 21, 29, 30, 31, 32 and 33.
4.3 The name of the Respondent suggests that it is a company incorporated in Germany, but there is a question as to whether this company has ever existed.
4.4 The Domain Name was registered on January 8, 2017. It has been used since registration for a website that has offered for sale products from the Complainant's "Genesis" range of grills and which copies the design and overall appearance of the websites of the Complainant and its subsidiaries.
4.5 The "Impressum" page of the website operating from the Domain Name declares that this is the website of Weber-Stephen Deutschland GmbH, which is a company in the same group as the Complainant. However, the website is neither operated nor authorised by that company.
4.6 No website is operating from the Domain Name as at the date of this decision. 5. Parties' Contentions A. Complainant
5.1 The Complainant describes its activities and marks and how the Domain Name has been used since registration. It refers to the fact that the website contains pages which solicits payments for the products offered for sale the website. It goes on to contend that it "is obvious that this is a case of cybercrime". However, it is not entirely clear whether the criminal activity alleged is the fraudulent impersonation of a company within the Complainant's, or whether the allegation is also that the Respondent is obtaining payments for goods that it does not actually supply.
5.2 The Complainant contends that the Domain Name is confusingly similar to its registered trade marks, with the term "grills" in the Domain Name merely describing the Complainant's products. It contends that the Respondent has no rights or legitimate interests in the Domain Name given, inter alia, the Respondent's "criminal activity". It further contends that the registration and use of the Domain Name was in bad faith. B. Respondent
5.3 No response was filed by the Respondent. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark 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)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall "draw such inferences therefrom as it considers appropriate". A. Identical or Confusingly Similar
6.4 The Panel accepts that the Domain Name is confusingly similar to the Complainant's registered trade marks. The Domain Name incorporates the entirety of the Complainant's WEBER word marks in combination with the word "grill" and the ".net" Top-Level Domain. Further, the word "grill" is descriptive of the Complainant's products.
6.6 In the circumstances the Complaint has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests and Bad Faith Registration and Use
6.7 It is normal for panel's under the Policy to consider the issues of rights or legitimate interests and registration and use in bad faith in turn. However, in a case such as this it is more convenient to consider those issued together.
6.8 As has already been described, the Panel accepts that the Domain Name has been, used without the Complainant's consent by as part of a broader scheme to falsely impersonate a company in the Complainant's group of companies. The name of the registrant (once the "privacy shield" was lifted), appeared to be the name of a German company, but it is questionable whether that company ever existed. A search of the German Common register portal of the German federal states suggests that no company has been registered in Germany under the name Kitchenhelpers GmbH. The Panel also notes that the courier was unable to deliver the Written Notice of the Complaint in these proceedings to the address forming part of the WhoIs registration for the Domain Name.
6.9 However, regardless of whether Kitchenhelpers GmbH exists, it is undisputed that it operated a website purporting to be operated by Weber-Stephen Deutschland GmbH, when that was not true.
6.10 The exact reason for that deception is not entirely clear. The Complainant appears to suggest that this may be to obtain payment for products that are not provided, but elsewhere in the Complaint suggests that the purpose of the deception is to promote the sale of the Complainant's products. However, whichever is the case, it does not matter. Either way, there is no right or legitimate interest in a domain name that is being used in this fashion and the registration and use of a domain name for such a purpose (false impersonation) also constitutes bad faith registration and use.
6.11 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. 7. Decision
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, , be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Date: March 13, 2017
Full & Egal Universal Law Academy