Complainant is Blaufergnugen, Inc. of Manitowoc, Wisconsin, United States of America (“United States”), represented by Ceres Patent & Technology, LLC, United States.
Respondent is Alexsey S Melnikov of Rostov-On-Don, Russian Federation, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2018. On December 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 5, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2018. The Center received a number of informal communications from Respondent between December 11, 2018 and February 28, 2019. Upon request of Complainant, the proceeding was suspended from December 17, 2018 to January 16, 2019, pursuant to the Rules, paragraph 17. The proceeding was further suspended until February 15, 2019. Upon request of Complainant, the proceeding was reinstituted on February 15, 2019, with a due date for Response of March 1, 2019. On February 23, 2019, the Center received a supplemental filing from Complainant. Respondent did not submit a formal Response, but did submit a communication on February 24, 2019 addressing some substantive issues and other points regarding the settlement process. The Parties were informed of the commencement of the Panel appointment process on March 4, 2019.
The Center appointed Clive L. Elliott QC (Presiding), Lynda M. Braun, and Irina V. Savelieva as Panelists in this matter on March 27, 2019. The Panel finds that it was properly constituted. Each member of 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
According to the publicly available WhoIs information, the Domain Name was registered on January 9, 2017. Currently, the disputed domain name does not resolve to an active website, but previously resolved to a website apparently selling after-market vehicle parts.
Complainant is an independent family-owned European parts specialist business and is the registered owner of the trademark “BLAUPARTS”, under U.S. no. 4114029, from March 20, 2012 (“Complainant’s Mark”). 5. Parties’ Contentions A. Complainant
Complainant states that it has been using Complainant’s Mark since 2004 in association with the sale of after-market vehicle parts for European vehicle brands (i.e. Volkswagen, Mercedes, BMW). Complainant also states that it is the owner of the domain name where its products are advertised and sold.
Complainant contends that the Domain Name is confusingly similar, phonetically, visually and in its product class, with Complainant’s Mark and domain name. Complainant asserts that its customers could be misdirected by the similar domain names and confused by the similar marks and product listings. Complainant notes that products listed on the Domain Name website are closely related to products sold under Complainant’s Mark.
Complainant states that information contained in the Domain Name website indicated that it was run by an Austrian business entity named BLAUPART Automotive GBMH (“Blaupart Automotive”), but upon further research, it would appear that this business entity does not exist in either Austria or Germany. It would also appear that the mailing address listed on the website lacked a postal location or contact phone number. Further, the email address provided on the website goes to a nonexistent web address and a search of ICANN WhoIs shows that no such domain name exists.
Complainant argues that Respondent is cybersquatting on the Domain Name for purposes of perpetrating fraud and confusion in the market but with no real intent to engage in legitimate or legal commercial dealings. Complainant further suggests that Respondent has committed corporate identity theft of the BLAUPARTS brand.
Complainant submits that Respondent’s alleged infringement and identity theft has caused irreparable harm to Complainant, including tarnishing Complainant’s brand and confusing Complainant’s customers.
Complainant states that it has also discovered potential additional fraud committed by those associated with Respondent regarding Complainant’s Mark by way of a Twitter page relating to Respondent that claims federal trademark registration of the mark BLAUPART. Complainant goes on to state that it has found no such registration in the United States. B. Respondent
Respondent made no formal reply to Complainant’s contentions, but generally stated that the Domain Name was created as a project to identify the consumer market, that there was no mention of any relationship to Complainant, that the items on the Domain Name website are not similar to Complainant’s products, that an offer to sell the domain name is not impermissible, and that the Respondent desires to voluntarily transfer the Domain Name to Complainant. C. Complainant’s Supplemental Filing
Complainant submitted a supplemental filing after the reinstitution of the proceedings but before the Respondent’s informal submission, largely addressing issues which arose during the Parties’ settlement discussions.
The Panel found little of substance or assistance in the submission, and while read by the Panel, it has not been accorded any weight in its Decision. The Panel now proceeds to address the Complaint and informal Response as follows. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has established to the satisfaction of the Panel that Complainant’s Mark has been used and registered (relevantly in the United States) and that Complainant has been using Complainant’s Mark since 2004 in association with the sale of after-market vehicle parts for European vehicle brands.
Complainant contends that the Domain Name is confusingly similar, phonetically, visually and in its product class, with Complainant’s Mark. It is of course identical apart from the absence of the letter “s”. The removal of the letter “s” does nothing to avoid a finding of confusing similarity between Complainant’s Mark and the Domain Name.
There is clear merit in Complainant’s submissions and in the absence of any attempt to refute them it is found that:
a) Complainant has rights in respect of Complainant’s Mark.
b) The Domain Name is not identical to but for the reasons set out above confusingly similar to Complainant’s Mark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met. B. Rights or Legitimate Interests
In terms of whether Respondent has rights or legitimate interests in the Domain Name, Complainant argues first that Respondent has no such rights or interests. Instead, Complainant alleges that Respondent holds itself out as Austrian business entity named BLAUPART Automotive GBMH (“Blaupart Automotive”), but no evidence of the existence of commercial entity has been located.
Complainant argues that Respondent is cybersquatting on the Domain Name for purposes of perpetrating fraud and confusion in the market but with no real intent to engage in legitimate or legal commercial dealings. This suggests that Respondent is not actively offering automotive or other parts for sale on its website, which does not provide Respondent with any rights or legitimate interests in the Domain Name.
While the position is not entirely clear, Respondent makes no effort to refute any of the allegations/arguments raised by Complainant. Absent any response or explanation, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met. C. Registered and Used in Bad Faith
Given Complainant’s use and registration of Complainant’s Mark, and its trading in the vehicle parts business since 2004, the Panel infers that Respondent knew of Complainant’s Mark when registering the Domain Name. Further, Complainant asserts that it is the owner and has used the domain name where its products are advertised and sold.
Given Respondent appears to hold itself out as an entity involved in the European automotive industry, the Panel considers that the holding, or use of the Domain Name in connection with a website or blog involved in the automotive industry in Europe, is likely to suggest a connection between the two entities. Indeed, the Domain Name consists of Complainant’s Mark, minus the letter “s”. As a result, Internet users might reasonably but wrongly believe that the Domain Name is somehow associated with or endorsed by Complainant.
Further, the Panel infers that Respondent had at least constructive knowledge of Complainant when registering the Domain Name and registering or conducting a business under the alleged Blaupart Automotive name.
The Panel thus finds that the third limb of the Policy has been met. 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 Domain Name be transferred to Complainant.
Clive L. Elliott
Presiding Panelist
Lynda M. Braun
Panelist
Irina V. Savelieva
Panelist
Date: April 10, 2019
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