The Complainant is Paul Hartmann AG of Heidenheim, Germany, represented by Stumpf Patentanwaelte PartGmbB, Germany.
The Respondent is Lee Yong Won of Seoul, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Gabia, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2018. On August 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 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 of the registrant. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on August 16, 2018.
On August 13, 2018, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On August 16, 2018, the Complainant requested 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 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 Korean of the Complaint, and the proceedings commenced on August 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2018.
The Center appointed Andrew J. Park as the sole panelist in this matter on October 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 German company that manufactures high-performance products in the areas of advanced and traditional wound management, incontinence management, and sports medicine. The Complainant started its activities in 1818, and as a leading manufacturer of medical and hygiene products, the Complainant is committed to partnering with healthcare professionals across the continuum of care to go further for health. The HARTMANN Group has been developing and implementing novel product solutions to promote healing, increase efficiencies, and improve quality of life for nearly 200 years.
The Complainant runs offices and affiliate companies in over 30 countries around the world, and its products under its house mark/trade mark HARTMANN are available in approximately 100 countries through a network of distributors.
The Complainant owns many trademark registrations for HARTMANN, HARTMANN HEALTH & CARE and HARTMANN ACTIVE CARE predating the July 6, 2012 creation date of the disputed domain name, including the following:
- International Registration 666941 for HARTMANN (device) dated on February 8, 1996, enjoying protection in many countries inter alia in class 5.
- South Korean Trademark Registration 311284 for HARTMANN (device) dated on April 11, 1995 in Int. class 3, duly renewed.
- South Korean Trademark Registration 373874 for HARTMANN (device) dated on September 1, 1997 in Int. class 5, duly renewed.
- South Korean Trademark Registration 318345 for HARTMANN (device) dated on July 25, 1995 in Int. class 16, duly renewed.
- European Union Trademark 2279420 for HARTMANN HEALTH & CARE (and device) dated on October 3, 2002, registered for goods in classes 3, 5 and 10.
- European Union Trademark 3968641 for HARTMANN ACTIVE CARE dated on October 18, 2005, registered for goods in classes 5, 10 and 25.
- International Registration 547280 for MOLIMED dated on October 24, 1989, registered for incontinence products in class 5.
- International Registration 484737 for MOLICARE dated on January 28, 1984, registered for incontinence products in class 5.
- German Trademark 302014062736 Going Further for Health dated February 6, 2015, registered in classes 1, 3, 5, 9, 10, 25, 39, 41, 42, 43 and 44.
The Respondent did not submit a response.
The disputed domain name was registered by the Respondent on July 6, 2012 with Gabia Inc. (the “Registrar”). 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name should be transferred to the Complainant because:
1) the disputed domain name is identical and confusingly similar to the Complainant’s trademark in which the Complainant has rights. The first element “hartmann” in the portion that precedes the top-level in the disputed domain name is identical with the Complainant's trademark HARTMANN and the distinctive part of the company name “Paul Hartmann AG”. The second element “care” is merely descriptive with respect to the main activity of the Complainant. Furthermore, the trademark HARTMANN is registered in combination with this word element “care” by the Complainant.
2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent does not own any registered rights on the term “Hartmann” which comprises part of the disputed domain name. The Complainant has not given its consent for the Respondent to use its registered trademark in a domain name registration and has never authorized the Respondent to use the trademark HARTMANN. The Respondent has no evidence of the use of the disputed domain name in connection with a bona fide offering of goods and services and furthermore, the website with the disputed domain name shows the Complainant’s brand “Hartmann/Going further for health” in a dominant position and it also displays various incontinence products of the Complainant designated under the trademarks MOLIMED and MOLICARE which are also the Complainant’s registered trademarks. This evokes the impression that there is a business relationship between the owner of the website and the Complainant, or that the parties are affiliated companies which is not the case.
3) the disputed domain name was registered and is being used in bad faith. The Complainant claims that the Respondent has exhibited conduct that fits into bad faith registration and use by the intentional registration of the disputed domain name to capitalize on the Complainant’s goodwill. The Respondent must have been aware of the Complainant’s rights in the HARTMANN trademark which is the distinctive part and family name of the Complainant. The Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and displaying the Complainant’s house mark HARTMANN (device), and the claim “Going Further for Health” and the product marks MOLIMED and MOLICARE on the Respondent’s website. As such, the Respondent’s registrations and use of the disputed domain name is in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are: (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 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 has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules. A. Language of Proceedings
The registration agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, 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, i.e., Korean.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;
2) The disputed domain name resolves to a website which is in English;
3) The Complainant and the Respondent use different languages, and neither of them understands the language of the other party. The Complainant is German and the Respondent is Korean. Therefore English would be the fair language for both Parties.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; and (2) issue a decision in English. B. Identical or Confusingly Similar
This element consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established registered rights in the marks HARTMANN, HARTMANN HEALTH & CARE and HARTMANN ACTIVE CARE, and that the disputed domain name is confusingly similar to the Complainant’s trademarks. The disputed domain name incorporates the Complainant’s trademark HARTMANN in its entirety, and adding the term “care” does nothing to avoid a finding of confusing similarity to the Complainant’s trademark. The addition of the generic Top-Level Domain (“gTLD”) extension “.com” in domain names may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. C. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has 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 trademark or service mark or to a competitor of that the 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 has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has 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 online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(iv). The Respondent has created a disputed domain name that is confusingly similar to the Complainant’s trademark, HARTMANN with the knowledge of the Complainant’s world‑wide famous brand and its business. The Complainant insists that the fact that the website with the disputed domain name shows the Complainant’s brand “Hartmann/Going further for health” in a dominant position and that it also displays various incontinence products of the Complainant designated under the trademarks MOLIMED and MOLICARE, which are also the Complainant’s registered trademarks, create the impression that there is a business relationship between the owner of the website and the Complainant, or that the parties are affiliated companies, neither of which is the case.
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University,WIPO Case No. D2000‑0944).
The Panel finds that the Complainant’s trademark, HARTMANN, is well known, that it has been used for more than 200 years since 1818. The disputed domain name is identical and confusingly similar to the Complainant’s trademark and the Panel confirms that there is no evidence whatsoever that the Respondent is currently using the disputed domain name with a bona fide purpose or commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name or the name “Hartmann”. The Panel also finds that the Respondent registered the disputed domain name with the knowledge of the Complainant’s famous brand and its business given not only the Respondent’s identical use of the Complainant’s trademark as part of the subject domain name, but also the Respondent’s use, on its website, of (1) the Complainant’s brand “Hartmann/Going further for health”; and (2) various incontinence products of the Complainant which were designated under the trademarks MOLIMED and MOLICARE, which are also the Complainant’s registered trademarks.
Accordingly, the evidence shows that the Respondent likely knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademark in violation of paragraph 4(b)(iv) of the Policy.
As the conduct described above falls squarely within paragraph 4(b)(iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii). 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.
Andrew J. Park
Sole Panelist
Date: October 15, 2018
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