The Complainant is Vogel Germany GmbH & Co. KG of Kevelaer, Germany, represented by Schoenen, Patent Attorney, Germany.
The Respondent is Daniel Havoger, Ha Wo Qi Guo Ji Mao Yi Shang Hai You Xian Gong Si of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on August 29, 2017. On August 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 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. On September 1, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on September 4, 2017 and filed an amended Complaint in response to the Center's request on the same date. The Respondent did not comment on the language of the proceeding by the specified due date.
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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on September 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 29, 2017.
The Center appointed Francine Tan as the sole panelist in this matter on October 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.
The Panel issued a Panel Order on October 4, 2017 requesting, firstly, clarification from the Complainant whether it has a trade mark registration for the plain word "vogel" and, secondly, for the Complainant to provide evidence pertaining to the alleged copying by the Respondent of the look and feel of the Complainant's website.
The Complainant filed its response on October 5, 2017, with which it provided extracts from the Complainant's and the Respondent's websites. The Respondent did not file any response by the deadline of October 12, 2017. 4. Factual Background
The Complainant is a German company which is in the business of designing, manufacturing and selling measuring tools and hand tools. It is the owner of the European Union Trade Mark No. 000229567 for a stylized, figurative mark comprising the word "vogel" appearing over the word "Germany" ("the VOGEL trade mark"). The VOGEL trade mark filing date is April 16, 1996, the registration date is February 2, 1999, and covers "hand tools and measuring tools". The Complainant stated in its response to the Panel Order of October 4, 2017 that it does not have a trade mark registration for the plain word, "vogel".
The Complainant owns the domain name from which it operates its website.
The disputed domain name was registered on July 12, 2012. 5. Parties' Contentions A. Complainant
The disputed domain name is identical or confusingly similar to the Complainant's mark as it comprises the Complainant's VOGEL trade mark in its entirety, together with a non-distinctive geographical indicator, "-de" which represents Germany. The disputed domain name is also confusingly similar to the Complainant's domain name .
The Respondent has no rights or legitimate interests in the disputed domain name, which resolves to a website which copies the look and feel of the Complainant's website. The Respondent's website reproduces the VOGEL trade mark and a photograph from the Complainant's catalogues. It promotes and offers for sales products in competition with those of the Complainant.
The disputed domain name was registered and is being used in bad faith for the earlier-mentioned reasons. Further, the Complainant has not authorized, licensed or permitted the Respondent to register or use the disputed domain name or to use the Complainant's VOGEL trade mark. There is no evidence that the Respondent has been commonly known by the disputed domain name or that he is making a legitimate noncommercial or fair use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Language of the Proceeding
The language of the Registration Agreement is Chinese. The Complainant requested that English apply as the language of the proceeding because the Respondent has an English name and apparently operates internationally, with places of business in Shanghai, China and Koenigssee, Germany; English is the international business language; and the Respondent's website is in English.
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".
The Panel believes there are grounds to believe that the Respondent is comfortable and familiar with English. Bearing in mind the need to ensure that the administrative proceeding takes place with due expedition (per paragraph 10(c) of the Rules), the Panel determines that it would be appropriate for English to be the language of the proceeding. The disputed domain name comprises non-Chinese characters but a known German word for "bird", which is also a known surname amongst English speakers, in combination with letters of the Latin alphabet, "de", signifying Germany. The Panel does not believe that the Respondent would be prejudiced if English were the language of the proceeding. Requiring the Complainant to translate all the documents and evidence into Chinese would be excessive in the circumstances and delay the proceeding. The Respondent could have, but did not, object when given the opportunity to.
The Panel therefore determines that English is to be adopted as the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar
The Complainant has established it has rights in the figurative trade mark containing the words "Vogel Germany". Paragraph 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") states, inter alia, that:
"Panel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element."
Hence, the Panel may disregard the figurative or stylized elements in the Complainant's VOGEL trade mark. A comparison of the textual elements in the VOGEL trade mark (i.e. "Vogel Germany") with the disputed domain name leads to a finding of confusing similarity under paragraph 4(a)(i) of the Policy. This is because the distinctive textual portion of the Complainant's trade mark, which is the word "vogel", is reproduced in its entirety in the disputed domain name. The additions of the hyphen and short-form reference to Germany, i.e. "-de" do not serve to distinguish the disputed domain name from the textual elements of the Complainant's VOGEL trade mark. "de" is widely understood to signify "Germany", and therefore anyone looking at the disputed domain name would find the disputed domain name to be confusingly similar to "Vogel Germany" in which the Complainant has trade mark rights.
The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that "any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the Respondent has] acquired no trade mark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent did not file any response and thereby failed to invoke any of the circumstances which could demonstrate his rights to and/or legitimate interests in the disputed domain name. Notwithstanding the Respondent's default, the Complainant has to establish each of the elements stipulated under paragraph 4(a) of the Policy.
The Panel concludes that a prima facie case has been established by the Complainant, that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence that the Complainant had at any time granted a license or permitted the Respondent to use the Complainant's VOGEL trade mark or to apply for any domain name incorporating the word "vogel". Additionally, there is no evidence that the Respondent is known by the disputed domain name nor that the Respondent is using the disputed domain name in connection with a legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Respondent's website is clearly designed and intended to mislead Internet consumers into thinking that the Respondent's website is an authentic website of the Complainant's or is otherwise connected with or endorsed by the Complainant.
Hence, in the absence of evidence to the contrary, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that "the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith":
(i) circumstances indicating that the respondent registered or 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
The reproduction of elements taken from, and the imitation of the look of, the Complainant's website on the Respondent's website is a clear tell-tale sign that the Respondent was well aware of the Complainant, and of the Complainant's products and VOGEL trade mark. The VOGEL trade mark appears prominently on the Respondent's website; the Respondent's website is virtually identical to the Complainant's. Internet users seeing the Respondent's home page (which reflects at the bottom the Complainant's German address) would be easily duped into thinking that the Respondent's website is that of the Complainant or otherwise related to or approved by the Complainant.
The Panel finds that the circumstances fall within those described in paragraph 4(b)(iv) 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 the Complainant.
Francine Tan
Sole Panelist
Date: October 13, 2017
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