Complainant is Peter Kaiser Schuhfabrik GmbH, Germany, represented by Gail & Kollegen, Germany.
Respondent is Kerstin Ebersbach, Germany. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2019. On May 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 2019, the Registrar transmitted by email to the Center its confirmation that the disputed domain name was placed under lock status. On May 31, 2019, the Center requested the Registrar to confirm the registrant details. On September 6, 2019, 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 Complainant on September 6, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On September 10, 2019, Complainant requested a 10-day extension to file the amended Complaint, which was granted by the Center. Complainant filed an amended Complaint on September 17, 2019. In response to a notification by the Center that the Complaint was administratively deficient, Complainant cured the deficiency on September 27, 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 Respondent of the Complaint, and the proceedings commenced on September 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 23, 2019. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on October 30, 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 Complainant is a company organized under the laws of Germany whose business is the manufacturing of ladies’ shoes. Complainant has provided evidence that it is the registered owner of numerous trademarks relating to Complainant’s company name and brand “Peter Kaiser”, inter alia, the following with protection for the territory of Germany: - Word mark PETER KAISER, German Patent and Trademark Office (DPMA), registration number: 1145056, registration date: August 22, 1989, status: active; Respondent, according to the WhoIs information for the disputed domain name, is domiciled in Germany and registered the disputed domain name on May 25, 2017. By the time of the rendering of this decision, the disputed domain name does not redirect to any content on the Internet. Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends to be the oldest shoe factory in Europe manufacturing ladies’ shoes since more than 175 years and selling more than 800,000 pairs of shoes annually under its PETER KAISER trademark. Complainant does not explicitly state whether or not the disputed domain name is identical or confusingly similar to its PETER KAISER trademark. Complainant, nevertheless, claims that Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name since neither Respondent nor its services are known under the disputed domain name and Respondent does not hold any trademark rights similar thereto. Moreover, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) given the international degree of publicity and renown of the PETER KAISER brand, it must be assumed that Respondent knew thereof when registering the disputed domain name, (2) Respondent, at some point before the filing of this Complaint, used the disputed domain name to resolve to a website at “www.peterkaiser-shoes.com”, which showed the same colors, design and font as Complainant’s official website at “www.peterkaiser.de”, and (3) it is obvious from the circumstances to this case that Respondent intends to cause confusion in relation to Complainant’s business. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response. A. Identical or Confusingly Similar The Panel concludes that the disputed domain name The disputed domain name incorporates Complainant’s PETER KAISER trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and is widely agreed among UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of another term (whether, e.g., descriptive or meaningless) to a trademark in a domain name would not prevent a finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the word “shoes” (which even points to Complainant’s core business) does not dispel the confusing similarity arising from the incorporation of Complainant’s PETER KAISER trademark in the disputed domain name. Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent obviously has not been authorized to use Complainant’s PETER KAISER trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the name “Peter Kaiser” on its own. Moreover, Complainant contends that Respondent, at some point before the filing of this Complaint, used the disputed domain name to resolve to a website at “www.peterkaiser-shoes.com” which showed the same colors, design and font as Complainant’s official website at “www.peterkaiser.de”; though the case file does not include any documentation (e.g., screenshots etc.) which would support Complainant’s contentions in this regard, such making use of the disputed domain name – provided that it had taken place – would neither qualify as bona fide nor as noncommercial or fair within the meaning of the Policy. And even if Respondent had not yet made use of the disputed domain name whatsoever (so-called “passive holding”), this Panel recognizes, such as many UDRP panels, that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, does not by itself automatically confer rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.10.1). Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden. Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. The fact that the disputed domain name not only wholly incorporates Complainant’s PETER KAISER trademark, but also the word “shoes” pointing to Complainant’s core business, is a clear indication that Respondent was fully aware of Complainant and its PETER KAISER trademark and directly targeted the very same when registering the disputed domain name. Moreover, there is no other plausible explanation apparent as to why Respondent needed to rely on a combination of Complainant’s PETER KAISER trademark and the word “shoes” in one domain name if not to take unfair advantage of the undisputed reputation of Complainant’s PETER KAISER trademark in the ladies’ shoes industry and to commercially profit therefrom. Such registration and making use of the disputed domain name must be considered as having taken place in bad faith within the larger meaning of paragraph 4(b) of the Policy. This finding is neither in contrast to a scenario in which the disputed domain name so far has not yet been used at all by Respondent (“passive holding”). As a general rule, UDRP panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3); while panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include, e.g., the degree of distinctiveness or reputation of Complainant’s mark, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the domain name may be put; such factors are obviously here fulfilled. Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by 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 Stephanie G. Hartung
- Word mark PETER KAISER, European Union Intellectual Property Office (EUIPO), registration number: 014493597, registration date: February 19, 2016, status: active.
Sole Panelist
Date: November 6, 2019
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