The Complainant is Frey Wille GmbH & Co. KG of Vienna, Austria, represented by Salomonowitz Horak, Austria.
The Respondent is Kabir S Rawat of Haryana, India. 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 August 24, 2018. On August 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 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 September 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2018.
The Center appointed Marilena Comanescu as the sole panelist in this matter on October 19, 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 Frey Wille GmbH & Co. KG is an Austrian producer of luxury artistic jewelry, decorations and accessories, known internationally for its limited production of enamel and gold jewelry and exclusive distribution. The Complainant is operating more than 100 flagship boutique-stores worldwide, most of them owned by itself, some of them being authorized partner stores.
The Complainant owns several trademark registrations, such as the International trademark registration no. 824396 of August 25, 2003 for FREY WILLE, covering goods in classes 3, 14, 16, 18 and 25 and being registered in many countries worldwide.
Previous UDRP panels have found the Complainant’s mark well known or with reputation. See for example Frey Wille GmbH & Co. KG v. Zhuang Yong Xing,WIPO Case No. D2018-0050; Frey Wille GmbH & Co. KG v. dong wu / wu dong,WIPO Case No. DCC2017-0005; Frey Wille GmbH & Co KG v. Zhuang Yong,WIPO Case No. D2014-1840; Frey Wille GmbH & Co KG v. Li ning,WIPO Case No. D2013-2178; and Frey Wille GmbH & Co. KG v. Steve Haiter,WIPO Case No. D2012-1451.
The disputed domain name was registered on May 27, 2018 and at the time of filing the Complaint, it resolved to a webpage displaying sponsored links to third party websites and offering it for public sale.
On August 3, 2018, the Respondent contacted the Complainant’s CEO, on his personal email address which is not publicly available, in order to offer to sell the disputed domain name for the amount of USD 2,500.
The Respondent is apparently active in the business of buying and selling domain names, as provided in Annex 15 to Complaint, it holds approximately 645 domain names.
The Respondent was involved in another UDRP procedure decided against it, see Cantor Fitzgerald Securities v. Kabir S Rawat,WIPO Case No. D2013-1257. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its well known trademark FREY WILLE, the Respondent has no rights or legitimate interests in the disputed domain name , and the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar
The Complainant holds rights in the FREY WILLE trademark.
The disputed domain name reproduces the Complainant’s trademark FREY WILLE in its entirety and without any addition or alteration.
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.info”, “.site”, “.org”) is a technical requirement that may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name is identical to the Complainant’s trademark FREY WILLE, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant asserts that it has given no license or other right to use or register its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “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”. See section 2.1 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting the Respondent has ever been commonly known by the disputed domain name.
The Respondent is using the disputed domain name in relation to sponsored listings for third parties’ goods and services unrelated to the Complainant and its trademark; this activity does not constitute a bona fide offering of goods or services or a legitimate noncommercial use.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Complainant holds trademark rights for FREY WILLE since at least 2003. The disputed domain name was created in May 2018 and completely reproduces the Complainant’s mark.
According to the records in the file, the Respondent has used the disputed domain name in relation to a website listing sponsored links and is offering the disputed domain name for public sale. The commercial activities for pay-per-click pages and the business of buying and selling domain names can be legitimate activities particularly when they involve dictionary word domain names, but it does not necessarily confer rights to use for that purpose a domain name identical or confusingly similar to another party’s trademark.
In the present case, the Respondent has registered the disputed domain name incorporating the Complainant’s distinctive and well-known mark in the luxury jewelry sector, provided false contact information in the WhoIs and has not participated in the present proceeding to put forward arguments in its support, therefore the Panel concludes that the provision of paragraph 4(b)(iv) of the Policy which provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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” applies in the present case and is evidence of registration and use in bad faith. Internet users searching for the Complainant would acces the website corresponding to the disputed domain name considering it belongs or is somehow associated with or endorsed by the Complainant.
Furthermore, before commencing the present proceeding the Respondent voluntarily contacted the representative of the Complainant, on his private address, offering to sell the disputed domain name for an amount exceeding the out of pocket costs related to the registration of the disputed domain name. As provided in paragraph 4(b)(i) of the Policy “the circumstances that you (respondent) have registered or you (respondent) have 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 complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name” constitute evidence of registration and use of a domain name in bad faith.
Last but not least, the Respondent was involved in another UDRP dispute which was decided against it. Together with all the other facts in the present file, this may constitute another inference of bad faith, listed under paragraph 4(b)(ii) of the Policy, stipulating the situation in which the panel finds circumstances confirming that the respondent 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.
For all the above reasons, the Panel finds 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.
Marilena Comanescu
Sole Panelist
Date: October 29, 2018
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