1.1 The Complainant is Wolf Oil Corporation N.V. of Hemiksem, Belgium, represented by Novagraaf Belgium NV/SA, Belgium (the "Complainant").
1.2 The Respondent is Timothy Kiara of Nairobi, Kenya (the "Respondent"). 2. The Domain Name and Registrar
2.1 The disputed domain name (the "Disputed Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 28, 2017. On March 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 29, 2017, 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.
3.2 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").
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 3, 2017.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on May 8, 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, a company incorporated in Belgium is said to be the owner of several trademark registrations for the word and figurative mark CHAMPION and variations thereof world-wide. The Complainant has attached a number of Trademark registration certificates in support of the Complaint namely those for:
- i) European Union Trademark Registration No. 000171843 for the word mark CHAMPION, with registration date August 17, 1999;
- ii) International Trademark Registration No. 663507 for the word mark CHAMPION, with registration date October 14, 1996;
- iii) International Trademark Registration No. 1059799 for the figurative mark CHAMPION, with registration date October 12, 2010;
- iv) Congo, Trademark Registration No. 15718 Bis/2010 for the figurative mark CHAMPION, with registration date August 27, 2010;
- v) African Intellectual Property Organization ("OAPI") Registration No. 67844 for the figurative mark CHAMPION, with registration date November 30, 2011; and
- vi) African Regional Intellectual Property Organization ("ARIPO") Registration No. AP/M2011/001166 for the figurative mark CHAMPION, with registration date March 27, 2013.
4.2 The Complainant's trademark registrations for the word and figurative mark CHAMPION and variations thereof is said to cover all goods in the automotive field in Classes 1,3,and 4 as follows:
i) Class 1 - Antifreeze and antifreeze compounds included in this class.
ii) Class 3 - Cleaning, polishing, scouring and abrasive products; soap, oils for cleaning purposes, stain removers; polishing paper; windshield washers.
iii) Class 4 - Industrial oils and greases; lubricants; dust collecting products fuels including motor spirit.
4.3 The Respondent according to the WhoIs records is known as Timothy Kiara and is based in Nairobi Kenya. The Respondent is recorded as creating the Disputed Domain Name on September 22, 2016. According to the evidence provided, the Disputed Domain Name resolves to a website which solely contains the wording "Index of /cgi-bin/". 5. Parties' Contentions A. Complainant
5.1 The Complainant refers to previous case law to assert that the extension ".com" in the Disputed Domain Name is of no consequence when conducting a confusing similarity examination between a disputed domain name and a complainant's trademark. The Complainant therefore contends that the Disputed Domain Name is confusingly similar to the Complainant's word mark CHAMPION, it being the most dominant word in the Complainant's figurative marks and explains that the word "oil" is merely descriptive of the products sold by the Complainant while the word "ltd" is merely indicative of the limited liability status of the Complainant. It is further asserted that these descriptive words cannot prevent a confusing similarity finding as the word "oil" only reinforces the risk of confusion due to the reference to the products that are of interest to the Complainant. Reliance is placed on a previous decision in Federal-Mogul Corporation v. Domain Hostmaster, Customer ID: 56529003522890; Domain Hostmaster, Customer ID: 57529003555658; Whois Privacy Services Pty Ltd / Bryan Stapp,WIPO Case No. D2014-1595 in relation to the domain names and . In addition, it is said that the Complainant is the owner of various domain names containing the trademark CHAMPION and combined with other words indicative of the main goods of interest to the Complainant such as "lubes" and "oils". In support reference is made to a list of domain name registrations with several extensions worldwide for champion lubes and champion oil including domain names such as , and .
5.2 The Complainant asserts that it is for the Complainant to make a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name, taking into account specific aspects of the Policy at paragraph 4(c) thereof. Therefore, it is submitted on behalf of the Complainant that the Respondent has no trademark rights in the Disputed Domain Name nor is there any indication that the Respondent is commonly known by the Disputed Domain Name nor does the Disputed Domain Name correspond in any way with the Respondent's name or company name. It is further asserted that the Respondent does not have any connection or affiliation with the Complainant and has not received any license or consent, express or implied to use the trademark CHAMPION whether or not in combination with descriptive elements in a domain name or in any other manner. It is also said that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods and services as the Disputed Domain Name as at the commencement of the current proceedings resolved to a website without content and without any indication of use for oils. Finally, it is argued that there is no indication that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark.
5.3 On the question of registration and use in bad faith the Complainant identifies several circumstances demonstrating that the Respondent has registered and is using the Disputed Domain Name in bad faith. Firstly, it is said that the Respondent registered the Disputed Domain Name with the Complainant's trademark in mind, with the intention of preventing the Complainant from reflecting its trademarks in corresponding domain names. Secondly, it is argued that it is very unlikely that the Respondent, a Kenyan individual, would have an interest in acquiring a domain name containing a trademark of a well-known Belgium based lubricants company. Thirdly, the Complainant's cease and desist letter dispatched to the Respondent and its previous registrar on December 7, 2016 drawing attention to the earlier registration of the Complainant's trademark and suggesting an amicable settlement in order to transfer the Disputed Domain Name to the Complainant has not received a substantive reply. This is despite the receipt of an acknowledgment from the Respondent twice and once from the Registrar on January 27, 2017.Fourthly, it is said that the Respondent's change of registrar of the Disputed Domain Name to "GoD, LLC" is further evidence of bad faith use. Fifthly, the Complainant refers again to the fact that the Disputed Domain Name revolves to a website without available content which solely contains the wording "Index of /" and without any indication of use for "oils". B. Respondent
5.4 The Respondent did not reply to the Complainant's contentions. Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent's default. 6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding the Complainant must prove that: (i) the Disputed Domain Name is identical or confusingly similar to the trademark or service mark of the Complainant; (ii) the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith.
6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in any administrative proceeding. A. Identical or Confusingly Similar
6.3 This Panel accepts that the Complainant is the registered owner of several trademark registrations for the word and figurative mark, CHAMPION, world-wide and in the oils and lubricants industry. The Panel finds without any hesitation that the Disputed Domain Name is confusingly similar to the Complainant's well-known CHAMPION trademark. Clearly, the Disputed Domain Name wholly incorporates the Complainant's trademark CHAMPION and the addition of the generic Top-Level Domain: ".com" does absolutely nothing to preclude a finding of confusingly similarity. The Panel is therefore satisfied that where as in this case a disputed domain name incorporates a complainant's trademark, the specified condition of confusingly similarity would be established. See Deceuninck NV v. William Vaughan,smtm investments ltd,WIPO Case No. D2007-1911; and easyGroup IP Licensing Limited v. wang tao,WIPO Case No. DCO2012-0001.See also the detailed discussion on the test for confusing similarity at paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). In the same vein, the addition of the descriptive words "oil" and the abbreviated form of Limited, "ltd" equally cannot prevent a confusing similarity finding see also Federal - Mogul Corporation v.DomainHostmaster, Customer ID: 56529003522890; Domain Hostmaster, Customer ID: 57529003555658; Whois Privacy Services Pty Ltd / Bryan Stapp, supra, in relation to the disputed domain name . As reasoned in this case, instead, those descriptive words can cause further confusion in the minds of Internet users by the reference to 'oil', a product in which the Complainant has interests.
6.4 The Panel therefore finds that the Complainant has established that the Disputed Domain Name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
6.5 The Panel also notes that the Respondent has failed to adduce any evidence or circumstances to establish that there exists any rights or legitimate interests in the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy. In line with the Complainant's contentions the Respondent has not been authorized or licensed by the Complainant to utilize or register the Disputed Domain Name nor is there any evidence that the Respondent has ever been commonly known by the Disputed Domain Name or ever been associated or affiliated with the Complainant. In this regard see Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272. As held in previous UDRP provisions the burden of production lies on the Respondent to establish the existence of any rights or legitimate interests in the Disputed Domain Name, once a prima facie case has been established by the Complainant. See generally, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Furthermore, the Panel finds that there is no indication that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name without the intention to derive financial gain from misleadingly diverting consumers or to tarnish the Complainant's trademark. See in this regard, the principles as stated in Oki Data Americas, Inc v. ASD, Inc.,WIPO Case No. D2001-0903.
6.6 Accordingly, the Panel is satisfied that the Complainant has established that the Respondent does not possess any rights or legitimate interests in the Disputed Domain Name as stipulated in paragraph 4(a) (ii) of the Policy. C. Registered and Used in Bad Faith
6.7 On the question of bad faith registration and use the Panel equally finds that the Respondent registered the Disputed Domain Name in bad faith and has continued to engage in bad faith use. From the Complainant's unchallenged contentions and the evidence adduced on behalf of the Complainant, the Panel has taken into account a number of irrefutable factors to conclude that bad faith registration and use has been firmly established by the Complainant. In the first instance the Panel finds that the addition of the descriptive word "oil" and "ltd" (acronym of "limited") to the Disputed Domain Name is a clear indication that the Respondent registered the Disputed Domain Name with the Complainant's trademark in mind. In this regard the Panel accepts as contended by the Complainant, that it is very unlikely that the Respondent, a Kenyan based national, would have any legitimate interest in acquiring a domain name containing a trademark of interest to a well-known Belgium company engaged in the manufacture and sale of lubricants. Secondly, the Respondent's failure and or refusal to respond substantively to the Complainant's cease and desist letter dated December 7, 2016 is further evidence of bad faith. Thirdly, as argued by the Complainant, the fact that at the initiation of these proceedings the Respondent elected to change its registrar to GoD, LLC confirms the continued bad faith use by the Respondent. Fourthly, the Disputed Domain Name resolves to a website without available content except the words "Index of/cgi-bin" and although, the Respondent has been made aware of the trademark infringement, the Respondent continues to prevent the Complainant from reflecting its trademark CHAMPION in a corresponding domain name. Fifthly, as indicated in paragraph 5.4 above the Panel has drawn adverse inferences from the failure of the Respondent to rebut the contentions of the Complainant in this matter.
6.8 The Panel is therefore satisfied that the Respondent registered the Disputed Domain Name in bad faith and has continued to engage in bad faith use. 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 Disputed Domain Name be transferred to the Complainant forthwith.
Ike Ehiribe
Sole Panelist
Date: May 29, 2017
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