The Complainant is Kaufland Dienstleistung GmbH & Co. KG of Neckarsulum, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Identity Protection Shield, K of La Rioja, Spain / Kaufland of Neckarsulm, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Arsys Internet, S.L. dba NICLINE.COM (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2018. On April 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 25, 2018, 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 the Complainant on April 26, 2018 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 amendment to the Complaint on April 27, 2018.
Pursuant to the Complaint submitted in English and the registrar verification dated April 25, 2018 stating that Spanish is the language of the registration agreement of the disputed domain name, on April 26, 2018, the Center sent a request in English and Spanish that the Parties submit their comments on the language of the proceeding. On April 27, 2018, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
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 the Respondent in English and Spanish of the Complaint, and the proceedings commenced on May 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2018. The Respondent did not submit any response. The Respondent submitted an informal communication in English on April 30, 2018 but did not submit any formal Response. Accordingly, the Center notified the Parties on April 23, 2018 that it would proceed to the Panel appointment.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on June 4, 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 the registered owner of several trademark registrations for and/or including the term KAUFLAND, in particular verbal European Union trademark KAUFLAND (no. 008717837) registered on September 14, 2010 for services in classes 35, 37, 38, 39, 40, 41, 42, 43 and 44.
It results from the Registrar verification that the disputed domain name was registered by the Respondent on April 11, 2018 and that the language of the registration agreement is Spanish. Furthermore, the Respondent used the Complainant’s name and trademark KAUFLAND as Registrant’s name for the purposes of registering the disputed domain name.
It results from the Complainant’s documented allegations that no true content is displayed on the website to which the disputed domain name resolves and that the latter was used in connection with a fraudulent email scheme.
The informal email sent by the Respondent to the Center on April 30, 2018 basically contained the wording of the Complainant’s email dated April 26, 2018 (including the name of the Complainant’s attorney). 5. Parties’ Contentions A. Complainant
According to the Complainant’s undisputed allegations, it belongs to the Kaufland group, a major European retail chain. It operates more than 1000 supermarkets in Germany and other European Union Member States mostly through independent affiliated companies. The Complainant contents his mark KAUFLAND to have a reputation.
The Complainant further contends that the disputed domain name is identical and/or confusingly similar to the Complainant’s trademarks, since it incorporates the trademark KAUFLAND in full, combining it with the suffix “.com” and the generic and descriptive word “group” which suggests a connection between the disputed domain name and the Complainant.
The Complainant ascertains that the Respondent has no prior rights or legitimate interests in the disputed domain name. There is no information to suggest a legitimate right to use the Complainant’s KAUFLAND trademarks by the Respondent. In addition, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, according to the Complainant’s non-contested allegations and evidence, the disputed domain name currently resolves to a holding page, from which the Complainant reasonably infers that the disputed domain name was registered solely for the purpose of hosting an email address from which is being used for scam/phishing emails. In fact, the Complainant provided three emails respectively sent on April 13, 16 and 17, 2018 to third party companies and signed with the name of the Complainant’s former Chief of international procurement on behalf of the Complainant. Furthermore, Complainant has not licensed or authorised the Respondent to use the KAUFLAND trademark.
Finally, the Complainant contends that the disputed domain name was registered and/or is being used in bad faith. In particular, it is used for a major Internet fraud, i.e. for sending unsolicited phishing and scam emails which are intended to mislead the recipient into believing that they are corresponding with the Complainant’s former Chief of international procurement when this is not the case. The Respondent, by using the disputed domain name, has intentionally attempted to create a likelihood of confusion with the Complainant’s KAUFLAND trademark as to the source of the domain name and/or any emails sent from associated email addresses. Furthermore, the Complainant ascertains that Respondent knew or should have known of the registration and use of the Complainant’s trademark KAUFLAND, that it used a privacy services to conceal its true identity and no legitimate use of the disputed domain name by the Respondent is actually conceivable. B. Respondent
The Respondent did not submit a formal response nor did it reply to the Complainant’s contentions in its email communication of April 30, 2018. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. 6.1. Language of the Proceeding
Pursuant to paragraph 11 of the UDRP Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, which is Spanish in the case at hand.
However, the Panel establishes the proceedings be conducted in English language for the following reasons:
The Complainant has submitted a motivated request that the proceedings be conducted in English language. On one hand, the Respondent did not reply to this request and did not insist on further proceeding in the language of the Registration Agreement. In addition, the Panel takes the informal email sent on April 30, 2018 as evidence showing that the Respondent can actually write in and understand English language. The Panel considers this submission by the Respondent and its lack to react to the request for a change of the language of proceedings after having been given a fair chance to comment as particularly relevant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.5.1. and 4.5.2.). Furthermore, the domain name includes the English term “group”, which is also an indication that the Respondent is actually familiar with the English language. The Panel is therefore satisfied of the Respondent’s ability to understand the language of the Complaint.
On the other hand, the Complainant is located in Germany and is not familiar with Spanish language. It would therefore have to translate the Complaint through an external translator which would result in additional costs and a loss of time.
Therefore, the Panel, while ensuring both that the Parties are treated with equality, and that each Party is given a fair opportunity to present its case, establishes the case to proceed in the English language. 6.2. Substantive Issues A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of several trademarks for and/or including the term KAUFLAND. Reference is made in particular to verbal European Union trademark KAUFLAND (no. 008717837) registered on September 14, 2010 for services in classes 35, 37, 38, 39, 40, 41, 42, 43 and 44. This trademark largely predates the creation date of the disputed domain name, which is April 11, 2018.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Elliot Elliot,WIPO Case No. D2018-0213; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainS,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademark KAUFLAND is fully included in the disputed domain name.
In addition, the disputed domain name combines the Complainant’s registered trademark KAUFLAND as its distinctive element with the generic term “group”. The addition of this descriptive term to the distinctive trademark is insufficient in itself and it does not serve to distinguish the disputed domain name from the trademark (see e.g. KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; Deutsche Lufthansa AG v. Kudakwashe Musunga / PrivacyP, WIPO Case No. D2009-1754; Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, WIPO Case No. D2015-1320).
In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. In the Panel’s view, based on the undisputed allegations and evidence referred to above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
According to the Complainant’s allegations, which have remained unchallenged, the Complainant has not authorized the Respondent’s use of the trademark KAUFLAND through the registration of the disputed domain name consisting of a reproduction of said trademark in its entirety. In addition, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy.
In addition, it results from the undisputed evidence before the Panel that the disputed domain name is used for phishing and scam activities. UDRP panels have categorically held that the use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent (see WIPO Overview 3.0 at section 2.13.1 with further references). In the case at hand, the Complainant submitted substantial evidence of such illegal activities by providing email correspondence sent from an email account under the disputed domain name. These emails have been signed in the name of the Complainant’s former Chief of international procurement on behalf of the Complainant. The Panel considers this evidence as sufficient to support the Complainant’s credible claim of illegal Respondent activity.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any substantial allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
One of those circumstances is the one specified in paragraph 4(b)(iv), i.e. where the domain name is used to intentionally attempt 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.
This Panel approves the approach taken by previous UDRP panels following which the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers (see WIPO Overview 3.0 at section 3.4). As explained above, it results from the undisputed evidence submitted by the Complainant that the disputed domain name has been used for phishing and email scam purposes in the name of the Complainant by using the name of its former Chief of international procurement and its company name. In addition, this use of the disputed domain name in such an illegal scheme additionally demonstrates that the Respondent not only knew of the Complainant, its business and marks, but also attempted to pass itself off as the Complainant (see Virgin Enterprises Limited v. Registration Private, Domains by Proxy, LLC / Name Redacted,WIPO Case No. D2018-0645).
Finally, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith. In fact, (1) the Respondent originally used a privacy service hiding its identity, (2) used the Complainant’s name and trademark KAUFLAND for purposes of registering the disputed domain name and (3) did not provide any formal response with conceivable explanation of its behavior so that no legitimate use of the disputed domain name by the Respondent is actually conceivable for the Panel.
Consequently, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. The Complainant is therefore deemed to also have satisfied the third element, paragraph 4(a)(iii) 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.
Tobias Malte Müller
Sole Panelist
Date: June 21, 2018
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