The Complainant is Wort & Bild Verlag Konradshöhe GmbH & Co. KG of Baierbrunn, Germany, internally represented.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Peer Haussmann of Neuhausen, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2018. On May 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 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 May 3, 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 amended Complaint on May 3, 2018.
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 of the Complaint, and the proceedings commenced on May 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2018. The Center received email communication from the Respondent on June 7, 2018. Following an email sent to the Parties by the Center on June 8, 2018 regarding possible settlement, the Complainant replied on June 11, 2018 requesting that the Panel proceed to a decision on the merits.
The Center appointed Kaya Köklü as the sole panelist in this matter on June 7, 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 publisher of a German magazine called “Apotheken Umschau”, which is provided for free to customers of pharmacies since many years.
The Complainant is the owner of the German Trademark Registration No. 993964 for the word and figurative trademark APOTHEKEN UMSCHAU covering protection for printed materials in International Class 16. The registration dates back to the year 1979.
The Complainant also owns and operates the domain names and .
The Respondent seems to be an individual located in Neuhausen, Germany.
The disputed domain name was registered on November 13, 2016.
The screenshots, as provided by the Complainant in Annex 8 of the Complaint, show that in the past, the disputed domain name resolved to a website which promoted an active substance for the treatment of various physical complaints by prominently using the APOTHEKEN UMSCHAU mark without publishing any visible disclaimer describing the non-existent relationship between the Parties. At the time of the decision, the disputed domain name does not resolve to an active website.
The Respondent indicated in its email communication of June 7, 2018 that he is prepared to possibly settle the dispute. However, the Complainant requested that the case proceed to a determination on the merits. 5. Parties’ Contentions A. Complainant
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is identical to its APOTHEKEN UMSCHAU trademark and differs only with regard to the generic Top-Level Domain (“gTLD”) “.tips”.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not provide any substantive response to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint’s contentions. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the WIPO Overview 3.0. A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfied the threshold requirement of having relevant trademark rights in APOTHEKEN UMSCHAU. As evidenced in the Complaint, the Complainant is the owner of a German trademark registration, which dates back to the year 1979.
The disputed domain name is identical to the Complainant’s APOTHEKEN UMSCHAU trademark as it incorporates the Complainant’s trademark in its entirety without any additions or amendments.
In the Panel’s view, the mere addition of a gTLD like “.tips” has no distinguishing effect and, as a general principle, may be disregarded when assessing identity or confusing similarity between a domain name and a trademark (in line with prior UDRP panels concerning the use of a gTLD within a domain name, cf. V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962; Google Inc. v. Nijat Hassanov,WIPO Case No. D2011-1054).
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s APOTHEKEN UMSCHAU trademark within the disputed domain name.
As noted below, the Complainant’s evidence shows that the Respondent has used the disputed domain name, being identical to the trademark of the Complainant, in order to attract Internet users to its website by creating a misleading impression that it is the Complainant, or associated with the Complainant. Such use is not a bona fide use of the disputed domain name within the meaning of the Policy.
In the absence of a substantial Response by the Respondent, there is also no indication in the record that the Respondent was or is commonly known by the disputed domain name.
As a conclusion, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel notes the reputation and wide recognition of the Complainant’s APOTHEKEN UMSCHAU trademark in Germany. The Panel is convinced that the Respondent must have had the Complainant’s trademark in mind when registering the disputed domain name.
In the Panel’s view, it appears that the Respondent has registered and used the disputed domain name for the purpose of creating an association with the Complainant. Registering and using the disputed domain name, which is identical to the APOTHEKEN UMSCHAU trademark of the Complainant, apparently targets the diversion of Internet traffic from the Complainant’s site to the Respondent’s site. This is particularly the case, as the record suggests, that the Respondent has operated a website in the past linked to the disputed domain name with confusingly similar content to that provided by the Complainant.
The Panel finds this a valid indication for bad faith registration and use under paragraph 4(b)(iii) of the Policy.
Furthermore, the Panel finds that the Respondent’s failure to respond substantively to the Complaint also supports the conclusion that it has registered and is using the disputed domain name in bad faith. The Panel believes that, if the Respondent did in fact have legitimate purposes in registering and using the disputed domain name, it would have probably responded.
The fact that the disputed domain name is currently inactive does not prevent a finding of bad faith.
Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop.
The Panel concludes that the disputed domain name was registered and is used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, 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.
Kaya Köklü
Sole Panelist
Date: June 20, 2018
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