The Complainant is Julius Blum GmbH of Höchst, Austria, represented by Torggler & Hofinger, Austria.
The Respondent is Ehsan Moalemi of Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 2019, 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 April 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2019.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on May 3, 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 Language of the Proceeding
The Complainant Julius Blum GmbH is an international manufacturer of furniture fittings. It was founded in 1952 and has since experienced a major growth in its field of business.
The Complainant owns several trademark registrations and applications for the word BLUM in various jurisdictions, including in the Islamic Republic of Iran (“Iran”). For instance, International trademark registration nos. 996626, registered on November 18, 2008, and 598611 registered on February 16, 1993, for different types of furniture fittings falling under classes 6, and 20 of the Nice Classification in Iran.
Also, the Complainant has registered the domain name under which it maintains its website.
The disputed domain name was registered by the Respondent on August 4, 2014.
The Respondent is using the disputed domain name in connection with the sale and advertisement of furniture fittings. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is nearly identical and confusingly similar to the Complainant’s trademark BLUM, which by virtue of the Complainant’s long use, wide spread advertising and successful sales over the years has become well-recognized and famous in Iran.
The Respondent has no rights or legitimate interests in respect of the disputed domain name, which it has registered and uses in bad faith.
The Complainant has never licensed or in any way authorized the Respondent to register or use its trademark BLUM as a domain name.
Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has proved that it has rights in the trademark BLUM.
The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.
In this case the disputed domain name contains the Complainant’s trademark BLUM in its entirety. The Panel considers that the addition of the geographical term “Tehran” is not sufficient to avoid a finding of confusing similarity.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) in cases where the disputed domain name incorporates the entirety of a trademark, the disputed domain name will normally be considered confusingly similar to that mark.
Furthermore, as stated in section 1.8 of WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of a geographical term would not prevent a finding of confusing similarity under the first element.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0). Thus, for the test for confusing similarity of this the first prong of the Policy, the Panel shall disregard the TLD “.com” in the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to the trademark BLUM in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a 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 prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element of the Policy.
The Complainant sustains that it has never granted the Respondent with the right to register and use the BLUM trademark as a domain name.
Previous panels under the Policy have found that a lack of rights or legitimate interests exists where, as here, “the Complainant asserts that it has not authorized the Respondent to use the mark”. See, Chicago Pneumatic Tool Company LLC v. Texas International Property Associates- NA NA,WIPO Case No. D2008-0144.
As further discussed under section 6C. of this decision, it does not seem that the Respondent is making any legitimate non-commercial or fair use of the disputed domain name, but is rather using the Complainant’s trademark without consent for the purpose of deriving unfair monetary advantage by confusing Internet users and leading them to believe that the website to which the disputed domain name resolves relates to the Complainant. Moreover, the Panel finds that the composition of the disputed domain name is such, that it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of WIPO Overview 3.0.
The Panel finds that the Complainant has made out a prima facie case under this element of the Policy, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Respondent registered the disputed domain name containing the Complainant’s trademark without authorization. The Respondent must have known of the existence of the BLUM trademark when it registered the disputed domain name on August 4, 2014, because BLUM is the name and trademark of the Complainant which was extensively registered and used by the Complainant many years before that date. In addition, noting the nature of the disputed domain name, it is difficult to conceive that the disputed domain name is not related to the Complainant’s activities in Iran. This assumption of association is further proved by the fact that the disputed domain name entirely contains the Complainant’s trademark BLUM.
The geographical indication “Tehran” in the disputed domain name clearly suggests an affiliation with the Complainant. Customers seeking spare parts or support for the Complainant’s products are liable to enter the disputed domain name site expecting to contact the Complainant’s Iranian subsidiary.
The misappropriation of a well-known trademark as domain name by itself constitutes bad faith registration for the purposes of the Policy. See, inter alia, Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor,WIPO Case No. D2010-1277; Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556.
Moreover, the content of the website at the disputed domain name shows that the Respondent is in the same area of business as the Complainant, which suggests that the Respondent had the Complainant’s trademark in mind when registering the disputed domain name.
In light of the above, it is inconceivable that the Respondent was not well aware of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Indeed, the Respondent’s purpose in registering the disputed domain name incorporating BLUM was very likely to capitalize on the reputation of the Complainant’s trademark by diverting Internet users to the Respondent’s own website.
The Panel finds that the Respondent is intentionally attracting Internet users for commercial gain to its 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.
In light of the above, the Panel considers that the disputed domain name was registered and is being used in bad faith and that the third prong of paragraph 4(a)(iii) of the Policy has therefore been fulfilled. 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.
Miguel B. O’Farrell
Sole Panelist
Date: May 14, 2019
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