The Complainant is dm-drogerie markt GmbH & Co. KG of Karsruhe, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is PrivacyG of Arizona, United States of America (“United States”) / Louane Severins of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2018. On October 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 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 October 31, 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 October 31, 2018.
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 of the Complaint, and the proceedings commenced on November 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2018.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on November 27, 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 operates a chain of drugstores across Europe. In its sector, the Complainant is the largest retailer in Germany with a revenue of EUR 10.3 billion in 2017. As of September 2016, Complainant had 3,349 stores located in 12 European countries and close to 60,000 employees.
The Complainant owns numerous trademarks consisting of the term “dm” that were registered in numerous classes of products and services, such as the international trademark no. 924429, registered on March 9, 2007.
The Complainant promotes its activities online via the website and also owns domain names such as , , and .
The Respondent registered the disputed domain name on October 4, 2018. The disputed domain name does not lead to any active website. 5. Parties’ Contentions A. Complainant
The Complainant first argues that the disputed domain name is confusingly similar to its DM trademark, since it entirely incorporates the trademark with the addition of descriptive terms.
The Complainant then affirms that the Respondent does not own any rights nor legitimate interests in the disputed domain name. The Complainant argues that the Respondent is not commonly known under disputed domain name, has not been authorized by the Complainant to use the DM trademark and does not offer any actual bone fide offering of goods and services. Rather, the Complainant argues that the disputed domain name redirects users to third party websites fraudulently offering Internet users the chance to win smartphones by calling premium phone numbers.
The Complainant finally considers that the disputed domain name was registered and is being used in bad faith. The Complainant argues that the Respondent was clearly aware of the Complainant’s trademark when it registered , evidenced by the addition of the term “drogerie”, which is descriptive of the Complainant’s business and cannot be mere coincidence. Furthermore, the Complainant argues that it is inconceivable that the Respondent is using the disputed domain name in good faith due to the commercial nature of the redirection and, coupled together with the use of a privacy service and the passive holding of the domain name, these elements are indications of a use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a 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. A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant holds several trademarks in jurisdictions throughout the world consisting of the term “dm”.
WIPO UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the disputed domain name is identical or confusingly similar to a registered trademark for purposes of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises,WIPO Case No. D2007-1629). Such happens to be the case here.
This is all the more true when the inserted trademark consists of the dominant part of the disputed domain name, and the added elements are merely descriptive.
Such happens to be the case. The applicable Top-Level Domain (“gTLD”) suffix, in the present case “.store”, is usually disregarded under the confusing similarity test and the addition of merely descriptive term such as the term “drogerie” does not avoid confusing similarity (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd,WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life,WIPO Case No. D2002-0363).
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent WIPO UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the Complainant is the owner of several DM trademarks that enjoy a strong reputation in its sector industry. The Complainant has no business or other relationship with the Respondent. The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
Absent any Response, the Respondent did not rebut this prima facie showing.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled. C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the respondent to be aware of the complainant’s trademarks. In the present case, there is no doubt that the Respondent was well aware of the Complainant’s DM trademarks when it registered the disputed domain name as the addition of the word “drogerie” is descriptive of the category of stores in which the Complainant carries out its activities and cannot be a mere coincidence.
Furthermore, in this Panel’s view, it is inconceivable that the Respondent would have chosen for some legitimate purposes a domain name such as the disputed domain name and use it in good faith. The choice of the disputed domain name by the Respondent is a clear demonstration of trademark infringement, which makes it hard to conceive any legitimate use that the Respondent could have engaged in under the disputed domain name. Having not participated in this case, the Respondent did not prove otherwise and failed to bring any evidence that may have demonstrated a use in good faith. Absent such demonstration, the Panel is convinced that such a registration and use took place in bad faith.
Consequently, the Panel is of the opinion that the disputed domain name has been registered and is being used in bad faith under the 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.
Philippe Gilliéron
Sole Panelist
Date: December 6, 2018
Full & Egal Universal Law Academy