Complainant is Das Telefonbuch Zeichen-GbR of Frankfurt am Main, Germany, represented by Bird & Bird LLP, Germany.
Respondent is Domain Name, Privacy Protection Service INC d/b/a PrivacyP of Nobby Beach, Australia / Samet Sensoy of Kabel, Afghanistan. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
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 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 Complainant on March 30, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 4, 2017.
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 Respondent of the Complaint, and the proceedings commenced on April 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 28, 2017.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on May 4, 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
Complainant is a German company in which the trademark rights of its shareholders are bundled. The principle shareholders of Complainant are DeTeMedien, Deutsche Telekom Medien GmbH and its publishing partners. DeTeMedien, in co-operation with its publishing partners, publishes the German phone directory "Das Telefonbuch," which has a yearly circulation of around 28 million copies. Complainant is the legal successor of the name rights for the name "TELEFONBUCH" as well as the trade name "TELEFONBUCH" in Germany and the European Union. Complainant is the registrant of the domain name which has been used by DeTeMedien to offer its phone directory services online since 1997 and which currently receives 25 million visitors per month.
Complainant is the owner of a number of word/figurative trademarks in Germany and in the European Union for the following:
The German word-/figurative mark for , Registration Number DE302010033311, registered on January 4, 2011; and
The German word-/figurative mark , Registration Number DE302010033308, registered on January 4, 2011.
The disputed domain name was registered on or about December 3, 2016. The disputed domain name has resolved to a website that provided listings and addresses for various companies. 5. Parties' Contentions A. Complainant
Complainant asserts that the TELEFONBUCH mark and name is well-known in Germany and that the marks TELEFONBUCH and DASTELEFONBUCH have acquired distinctiveness as to the online service of providing access to the addresses and contact information of companies.
Complainant contends that the disputed domain name is confusingly similar to Complainant's TELEFONBUCH mark because it contains the TELEFONBUCH mark in its entirety. Complainant also contends that disputed domain name is confusingly similar to Complainant's TELEFONBUCH and DASTELEFONBUCH mark because the use of the generic prefix "der" is one of three articles used in the German language for labelling a specific singular thing. The two other articles are "das" and "die". While all three articles translate into English as the word "the", in German all three are used in connection with words of a specific gender ("die" for feminine nouns, "der" for masculine nouns and "das" for neutral nouns). Consequently, Complainant argues that because DERTELEFONBUCH is grammatically incorrect in German ("der" should be "das") it is an example of typosquatting on DASTELEFONBUCH, and consumers are likely to mistake the disputed domain name as related to Complainant and its services.
Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name, is not in any way affiliated with or licensed by Complainant, and has never had a business relationship with Complainant or been an authorized distributor of Complainant's products or services. Complainant also argues that Respondent has not used the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent has apparently used the disputed domain name for profit by generating web traffic to a website that features advertising and contains pro forma content that purports to provide address information (in German) for some companies. Complainant contends that this type of website is often used for scamming purposes.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since Respondent must have known of Complainant's well-known TELEFONBUCH and DASTELEFONBUCH trademarks, given that Respondent used the disputed domain name with a German language website and given that a simple search of the Internet for "dertelefonbuch" or "der telefonbuch" would have readily informed Respondent of Complainant's rights in TELEFONBUCH and DASTELEFONBUCH. Complainant also asserts that bad faith registration and use is established by Respondent's use of the confusingly similar disputed domain name with a pro forma website that creates the impression that legitimate services are being provided when, in fact, the website is full of advertisements and sponsored links that generate income to Respondent. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states: >
"Does failure of a respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?
Consensus view: A respondent's default does not automatically result in a decision in favor of the complainant … the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding."
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 2.0, paragraph 1.1. Complainant has provided evidence that it owns a number of registrations in Germany and the European Union for TELEFONBUCH and DASTELEFONBUCH as word/figurative marks. Whether those registrations provide protection for the words TELEFONBUCH or DASTELEFONBUCH standing alone (apart from the design elements) may be arguable, given that "telefon buch" and "das telefon buch" in German simply translate to "telephone book" and "the telephone book" in English. Nevertheless, the Panel notes that while Complainant's registrations for the TELEFONBUCH and DASTELEFONBUCH marks are for figurative (i.e. stylized) marks, prior panels have noted that a "design is irrelevant in the context of domain names". Casa Editorial El Tiempo, S.A. v. Montanya Ltd,WIPO Case No. D2009-0103. Indeed, "as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark". WIPO Overview 2.0, paragraph 1.11. Thus, for purposes of the analysis under the first element, the Panel concludes that Complainant has established sufficient rights in TELEFONBUCH and DASTELEFONBUCH.
The remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain ("gTLD") ".com") is identical or confusingly similar to Complainant's mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. As the threshold for satisfying this first element is a fairly straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name, panels have generally found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold. WIPO Overview 2.0, paragraph 1.2.
Here, the Panel concludes that the disputed domain name is confusingly similar to Complainant's TELEFONBUCH and DASTELEFONBUCH marks as it fully incorporates Complainant's claimed TELEFONBUCH mark in its entirety. Moreover, the disputed domain is confusingly similar to Complainant's DASTELEFONBUCH mark as the use of the article "der" at the head of the disputed domain name does not distinguish the disputed domain name from Complainant's DASTELEFONBUCH. Given that the articles "der" and "das" are gender-specific in German and both translate to the article "the" in English, it is likely that consumers will perceive the disputed domain name as a grammatically incorrect rendition or misuse of Complainant's DASTELEFONBUCH mark. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in showing that the disputed domain name is identical or confusingly similar to Complainant's claimed TELEFONBUCH and DASTELEFONBUCH marks. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent has used the disputed domain name in connection with a German language website that purports to provide address and other contact information for some companies - a service that Complainant has provided under its DASTELEFONBUCH and TELEFONBUCH marks for many years. Given that Respondent's website is in German, that the services offered through the website are similar to those offered by Complainant, and that the disputed domain name is likewise in German, it is inconceivable that Respondent was not aware of Complainant, its services and the use of DASTELEFONBUCH and TELEFONBUCH for such services. Indeed, a simple Internet search would have readily revealed Complainant's use of DASTELEFONBUCH and TELEFONBUCH as well as Complainant's website at "www.". If anything, the evidence provided, none of which is contested by Respondent, shows that Respondent registered the disputed domain name as a grammatically incorrect variation of DASTELEFONBUCH and used such to direct web traffic to a German language website that purported to offer the same or related services of Complainant in order to deliver advertisements and sponsored links for Respondent's own profit. Such evidence shows that Respondent's actions do not constitute a legitimate interest or a bona fide or fair use of the disputed domain name.
Given that Complainant has established with sufficient evidence that it owns rights in word/figurative marks for TELEFONBUCH and DASTELEFONBUCH, and given Respondent's above noted actions and failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith
The Panel finds that Respondent's actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
"(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."
In the present case, Respondent has registered the confusingly similar disputed domain name for use with a German language website that includes address listings for companies along with advertisements and sponsored links for third party products unrelated to Complainant. Under these circumstances, it appears more likely than not that Respondent was well aware of Complainant and its services when Respondent registered the disputed domain name, which is basically a misuse or grammatically incorrect rendition of DASTELEFONBUCH, and used the disputed domain name for profit. Such registration of a form of typo domain name, along with its use for a German language website providing address listings, creates a likelihood of confusion that the disputed domain name relates to Complainant's services in Germany or that the disputed domain name and associated website are somehow related to Complainant. Given the uncontroverted evidence and the fact that Respondent has failed to submit any response, the Panel concludes that Respondent targeted Complainant and its DASTELEFONBUCH mark, and has done so in bad faith and for profit.
Accordingly, the Panel finds that Complainant succeeds under this 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 name be transferred to Complainant.
Georges Nahitchevansky
Sole Panelist
Date: May 16, 2017
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