The Complainant is Covestro Deutschland AG of Leverkusen, Germany, represented by BPM Legal, Germany.
The Respondent is VistaPrint Technologies Ltd of Hamilton, Bermuda. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2019. On February 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, 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 February 12, 2019, 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 February 15, 2019.
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 February 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2019.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on March 26, 2019. 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 one of the world’s largest polymer companies and a leader in research and production. The Complainant operates around 30 production sites in Europe, Asia and the United States of America with a total number of some 15,600 employees. The Complainant was listed on the German DAX in September 2015, until when it was part of Bayer AG.
The Complaint owns several trademarks for COVESTRO (the “Trade Marks”), inter alia:
- European Union trademark No. 013701412 for COVESTRO, registered on July 28, 2015;
- International trademark registration No. 1272950 for COVESTRO, registered on May 15, 2015.
The Respondent registered the Domain Name on January 12, 2018. It is currently used in connection with a pay-per-click (“PPC”) website 5. Parties’ Contentions A. Complainant
According to the Complainant, the word “Covestro” is an invented portmanteau word and is made up of “collaboration”, “invest“, and “strong”. To the best of the Complainant’s knowledge, the word is solely connected to the Complainant and not used in commerce by any third party.
The Complainant submits that the Domain name fully incorporates the mark COVESTRO and is confusingly similar to the Trade Marks as it is a consensus view that an additional letter is not considered an obstacle to a finding that the domain name in dispute is confusingly similar to the trade mark in question.
The Complainant states that it has not licensed or otherwise permitted the Respondent to use the Trade Marks and has not permitted the Respondent to apply for or use any domain name incorporating the Trade Marks. Furthermore, the Complainant submits that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The Complainant points out that the website at the Domain Name is used to earn PPC revenues for redirecting Internet users to competing websites and thus capitalizing on the Trade Marks. Such use is no bona fide use of the Domain Name pursuant to paragraph 4(c)(i) of the Policy, the Complainant contends. Finally, the Complainant submits, there is no evidence which suggests that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, or is commonly known by the Domain Name or the name “Covestro”. Under these circumstances, the Complainant concludes that there is no doubt that the Respondent has no rights or legitimate interests in respect of the Domain Name.
According to the Complainant, the Respondent has registered and is using the Domain Name in bad faith. The Complainant contends that “Covestro” is not a word a domain name registrant would legitimately choose unless seeking to create an impression of an association with the Complainant. The Complainant submits that the Trade Marks are highly distinctive and solely connected with the Complainant, while the word “Covestro” is an unique, invented portmanteau word which is, to the best of the Complainant’s knowledge and belief, not a combination used by any third party in commerce or elsewhere. In addition, the Complainant points out that the Respondent’s use of the Domain Name redirects Internet users to a website that provides links to third parties’ competing websites. In the view of the Complainant, by using the website for sponsored links, the Respondent is, in all likelihood, intentionally trying to divert traffic intended for the Complainant’s website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant’s website which would qualify as bad faith use, as the Respondent’s use of the Domain Name attempts to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Trade Marks 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. Furthermore, according to the Complainant the following circumstances are also indicative of bad faith use:
- the Respondent registered a domain name which includes a trademark that is obviously connected with the Complainant and its products.
- the Respondent’s use of the Domain Name is qualified to disrupt the Complainant’s business and is capable of reducing the number of visitors to the Complainant’s website, which may adversely affect the Complainant’s business.
- the registration of the Domain Name by the Respondent constitutes an abusive threat hanging over the head of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the mark COVESTRO in its entirety. The addition of an additional letter “o”, constituting an obvious, or intentional misspelling of the Trade Marks, does not avoid a finding of confusing similarity between the Domain Name and the Trade Marks (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9; see also, inter alia, Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775, and Tetra Laval Holdings & Finance S.A. v. Prince Amin, Access Point Technologies,WIPO Case No. D2016-1052). The generic Top-Level Domain (“gTLD”) “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11). Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights. B. Rights or Legitimate Interests
Under paragraph 4(a) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. If the Complainant succeeds in doing so, 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 WIPO Overview 3.0, section 2.1).
Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name, and has not acquired trade mark rights in the Domain Name. In addition, evidence submitted by the Complainant shows that the Domain Name is used in connection with a website containing links to third-party websites relating to finance and insurance products, apparently to capitalize on the reputation and goodwill of the Trade Marks or otherwise mislead Internet users (WIPO Overview 3.0, section 2.9). Furthermore, it is known that such websites generate PPC income, while the Panel has verified that at the time of this decision the website was still active and connected to the Domain name. Therefore, the Domain name is not being used for a bona fide offering of goods or services, nor is there a legitimate noncommercial or fair use of the Domain name.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks, since:
- the Respondent’s registration of the Domain Name occurred three years after the registration of the earliest of the Trade Marks;
- the listing of the Complainant on the German DAX has been well publicized in newspapers around the world;
- the mark COVESTRO, which is incorporated in its entirety in the Domain Name, does not appear to be a dictionary word, nor a name of which it is likely that a registrant would spontaneously or accidentally think of;
- a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name in its name would have informed the Respondent of the existence of the Trade Marks.
Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.
With regard to bad faith use, the Panel finds that the following circumstances taken together warrant a finding of bad faith use of the Domain Name, as they form an indication that the Domain name is being used to intentionally attempt to attract, for commercial gain, Internet users to the website to which the Domain name resolves by creating a likelihood of confusion with the Trade mark as to the source, sponsorship, affiliation or endorsement of the website, and of the services offered there.:
the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks;
the non-dictionary nature of the mark COVESTRO incorporated in its entirety in the Domain Name, such that the Respondent cannot claim to have “accidentally” registered a domain name that happens to correspond to the Trade Marks;
use of the Domain Name in connection with a website containing links to third-party websites relating to finance and insurance products, generating PPC income;
the fact that there is no disclaimer on the website of the Domain Name with respect to the non-existing relationship between itself and the Complainant;
the lack of any Response of the Respondent.
Therefore, the Panel concludes that the Domain Name has been registered and is being used in bad faith. 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.
Wolter Wefers Bettink
Sole Panelist
Date: April 9, 2019
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