The Complainant is Stulz GmbH of Hamburg, Germany, represented by Harmsen Utescher, Germany.
The Respondent is Andrei Silaev of Moscow, Russian Federation, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2018. On January 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2018, 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.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2018. The Respondent did not submit a formal response by the due date. However, the Center received informal email communications from the Respondent between February 6, 2018 and March 4, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on March 1, 2018. 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 is a producer of humidifying, refrigerating, heating, ventilating and air conditioning apparatus, based in Hamburg, Germany. It has, for many years, traded in Germany, Europe and elsewhere, under the brand STULZ. The Complainant is the owner of number of trademarks for STULZ, registered in the class which covers the various products which it manufactures and supplies, including the following:
- German trademark No. 1104503 for STULZ (word mark) registered on April 6, 1987, in class 11;
- International trademark no. 496662 for STULZ (word mark) registered on September 3, 1985, in class 11;
- German trademark No. 302010053797 for STULZ (figurative mark) registered on October 22, 2010, in class 11;
- International trademark registration No. 1073809 for STULZ (figurative mark) registered on March 9, 2011, in class 11.
The Respondent is an individual based in the Russian Federation. The disputed domain name was registered by him on November 8, 2013.
The website resolved to by the disputed domain name features, across the central portion of the home page, a heading; “Federal distributor of Stulz equipment on the territory of the Russian Federation”. The Complainant’s figurative mark is prominently displayed on the left hand side of the home page. Centrally positioned on the home page is a box containing text which is headed: “Why should you work with us?” Ten responses are provided in answer to this question such as: “We work directly with the factory without intermediaries” and “Currently certified equipment Stulz”. There are then various products displayed for sale which purport to be those of the Complainant. Further into the website, at the foot of one of the web pages, is a copyright notice: “© 2004-2018 Federal distributor of Stulz on the territory of Russia. Official site”. The Complainant’s trademarks and photographs of the Complainant’s products are liberally used throughout the Respondent’s website. 5. Parties’ Contentions A. Complainant
The Complainant says the disputed domain name is identical to its STULZ trademarks, details of which are set out above. It says that the addition of the Top-Level Domain “.pro” is purely descriptive. The home page of the website resolved to by the disputed domain name purports to offer identical goods to those offered by the Complainant and features the Complainant’s STULZ figurative trademark. Moreover, the Respondent’s use of the phrases: “Federal distributor of Stulz equipment on the territory of the Russian Federation” and “Currently certified equipment Stulz” on its website, as well as the use of photographs, the copyright in which belongs to the Complainant and which are used without its consent, create the misleading impression that the Respondent’s website is operated by the Complainant or is under its control.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. It says that once it has made out a prima facie case in this respect, it is for the Respondent to provide evidence to the Panel demonstrating his right or legitimate interests.
The Complainant says that the Respondent is not entitled to any trademark, trade name or any other right in the name “Stulz”. There is no relationship between him and the Complainant and it has never authorized or licensed the Respondent to use its trademarks or photographs, or to register the disputed domain name. The Respondent has not registered or used the disputed domain name for a bona fide reason.
The Respondent is using the disputed domain name for commercial purposes to create the erroneous impression that the website resolved to by the disputed domain name is operated by the Complainant. In addition, the Respondent infringes its copyright and trademarks, by using its photographs and trademarks without permission.
Lastly, the Complainant says that the disputed domain name was both registered and is being used in bad faith. The disputed domain name was registered for the sole purpose of exploiting the Complainant’s reputation, trademarks and trade name “Stulz”. The Respondent is deliberately using the disputed domain name to resolve to a website, the form of which deliberately misleads Internet users searching for the Complainant into believing that the disputed domain name is either operated by, or with the approval of, the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions within the due date for a Response. However, by an email dated February 6, 2018, he contacted the Center with questions relating to the Complaint. A number of further emails were exchanged between the Respondent and the Center, although the only communication material to these proceedings is an email from the Respondent to the Center dated February 21, 2018 in which the Respondent asserted; “The website is dedicated to promoting the company’s products of STULZ and does not discredit it. There were spent considerable finances for the development, development [sic] and promotion in the search engines. Are you considering the purchase and full transfer of this domain name ? If so, how much are you willing to offer?”.
The Panel is enabled, under paragraph 10(a) of the Rules, to conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and the Rules. It is obliged under paragraph 10(b) of the Rules to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. With these provisions in mind, the Panel treats the Respondent’s email of February 21, 2018 as its informal, if late, response to the Complaint. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided details of its STULZ trademarks, as set out above, and thereby established that it has rights in STULZ.
In considering whether a domain name is identical or confusingly similar to a complainant’s trademarks, it is established that the applicable generic Top Level Domain (“gTLD”) suffix (that is “.pro” in the case of the disputed domain name) should be disregarded, as it is a technical requirement of registration.
The Domain Name System is not case sensitive and the remaining element of the disputed domain name, “stulz”, is identical to the Complainant’s STULZ trademarks. The Panel accordingly finds that the disputed domain name is identical to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:
(i) before any notice of the dispute, it can show 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) it can show that it has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Dealing with these grounds in reverse order, the use of the disputed domain name to point to a website purporting to offer goods for sale is plainly not noncommercial in character. Nor is there any evidence that might suggest that the Respondent is commonly known by the disputed domain name.
As to whether the use to which the disputed domain name is being put might amount to a bona fide offering of goods and services, the Respondent has claimed that “the website is dedicated to promoting the company’s products of STULZ and does not discredit it”. However, the Respondent’s website does not simply promote (genuinely or otherwise) products of the Complainant but, having regard to the features outlined above, purports to be that of an authorized distributor of the Complainant. No evidence of any type has been supplied by the Respondent in support of his assertion that he is actually selling the Complainant’s products, nor has he answered the Complainant’s assertion that, as part of his attempts to mislead Internet users, the Complainant’s trademarks and photographs have been used without its permission.
How paragraph 4(c) of the Policy is usually applied in practice is explained at section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the burden of production therefore shifts to the Respondent to show that he does have such rights or interests. A claim, unsupported by any particularity or evidence, to be a distributor of the Complainant’s products for the territory of the Russian Federation is insufficient to discharge the Respondent’s burden of production.
Moreover, in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, the panel set out a number of criteria, widely followed by subsequent panels, if a distributor or reseller is to be found to be providing a bona fide online offering of the Complainant’s goods or services. One of those criteria is that the registrant’s website must accurately and prominently disclose its relationship with the trademark owner. The Respondents’ website does not do this; the clear and misleading impression, from the various features of the website described earlier, is that the Respondent’s website is operated with the authority or approval of the Complainant. Accordingly, the Respondent does not fall within the Oki Data criteria.
For these reasons, the Panel finds that the Respondent does not have any rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The disputed domain name contains the Complainant’s STULZ trademark. Having regard to the use to which the Respondent has put the disputed domain name following registration and his acknowledgement of his awareness of the Complainant’s business, the Panel finds that the disputed domain name was registered by the Respondent in order to establish the website to which the disputed domain name points and thereby to take advantage of the Complainant’s reputation and its trademarks.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances set out in paragraph 4(b)(iv) of the Policy are if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The Respondent’s conduct falls within these provisions. The disputed domain name is confusingly similar to the Complainant’s trademarks and it points to a website which makes liberal use of the Complainant’s STULZ trademarks and photographs as well as written content intended to confuse Internet users into believing that the Respondent is an official distributor, agent or is otherwise affiliated or connected with the Complainant. As the panel explained in Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227; “Anyone who sells genuine products that bear the trademark of another is to some degree or other seeking to profit from and/or exploit another’s trademark. In this Panel’s view, that activity is not from the point of view of the Policy per se abusive. However, there is likely to be abusive use where the mark is used in a domain name so as to either, firstly, impersonate the trademark owner (so as to benefit from initial interest confusion created by the domain name itself) or, secondly, promote the sale of competing or unrelated products. It is these sorts of unfair exploitation of another’s trademark that are precluded by the Policy”.
The Panel accordingly finds that the disputed domain name was registered and is being used in bad faith. 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.
Antony Gold
Sole Panelist
Date: March 15, 2018
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