Complainant is August Storck Kommanditgesellschaft, Germany, represented by CMS Hasche Sigle, Germany.
Respondent is Domain Administrator, PrivacyGuardian.org, United States of America / Domain Admin, China. 2. The Domain Names and Registrars
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2019. On October 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 23, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 24, 2019. 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 Respondent of the Complaint, and the proceedings commenced on October 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 15, 2019. The Center appointed Phillip V. Marano as the sole panelist in this matter on December 4, 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 German candy producer, which produces and sells a wafer sandwich, filled with nougat and milk creme consisting of five layers, named “Knoppers”. Complainant owns valid and subsisting registrations for the KNOPPERS, KNOPPERS NUTBAR, KNOPPERS COCONUTBAR and KNOPPERS PEANUTBAR trademarks in numerous countries, including for example the German trademark registration DE752519, for KNOPPERS, registered on September 1, 1961, and the European Union trademark 002426500, for KNOPPERS, registered on October 30, 2002, with the earliest priority dating back to December 11, 1956. Complainant distributes Knoppers in over 70 countries worldwide. In addition, the Panel takes judicial notice of Internet articles discussing the popularity of the KNOPPERS brand amongst consumers in China. See e.g., Kate Darvall, Daily Mail, Now Aldi Biscuits Are The Latest of Target for Chinese Shoppers (15 December 2016); Liz Burke, New.Com.Au, The Obscure Aldi Product Chinese Shoppers Are Going Crazy For (16 December 2016). Respondent registered the disputed domain names Complainant asserts ownership of the KNOPPERS, KNOPPERS NUTBAR, KNOPPERS COCONUTBAR, and KNOPPERS PEANUTBAR trademarks and has adduced as evidence corresponding trademark registration certificates in numerous countries. The disputed domain names are identical to these trademarks, according to Complainant, because they include the identical textual components with the dominant features clearly recognizable. Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain names based on: the lack of any evidence that Respondent is known by “Knoppers”; and Respondent’s offer to sell the disputed domain names on “dan.com”, a domain name marketplace. Such use, Complainant contends, cannot constitute fair or noncommercial use, and falsely suggests an affiliation with Complainant. Complainant argues that Respondent has registered and used the disputed domain names in bad faith for numerous reasons, including: Respondent’s registration of the disputed domain names only a matter of days after Complainant’s trademark applications were filed for KNOPPERS NUTBAR, KNOPPERS COCONUTBAR, and KNOPPERS PEANUTBAR in Germany; the well-known KNOPPERS trademark is the dominant portion of the disputed domain names; Respondent has passively held the disputed domain names since registration; and Respondent publicly offered to sell at least one of the disputed domain names for more than Respondent’s out-of-pocket expenses. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings In order to succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy: i. The disputed domain names are identical or confusingly similar to a trademark in which Complainant has rights; ii. Respondent has no rights or legitimate interests in respect of the disputed domain names; and iii. The disputed domain names have been registered and are being used in bad faith. Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. […] Panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. Complainant must still prove each of the three elements required by Policy paragraph 4(a)”). A. Identical or Confusingly Similar Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, Section 1.2.1. Complainant submitted evidence that the KNOPPERS, KNOPPERS NUTBAR, KNOPPERS COCONUTBAR, and KNOPPERS PEANUTBAR trademarks have been registered. The KNOPPERS trademark predates registration of each of the disputed domain names by more than sixty years. Thus, the Panel finds that Complainant’s rights in the trademark have been established pursuant to the first element of the Policy. The only remaining question under the first element of the Policy is whether the disputed domain names are identical or confusingly similar to Complainant’s KNOPPERS trademarks. In this Complaint, each of the disputed domain names is confusingly similar to Complainant’s KNOPPERS trademark because, disregarding the “.com” generic Top-Level Domain (“gTLD”), that trademark is contained in its entirety within, and formulates the most distinctive element of each disputed domain name. Moreover, the KNOPPERS NUTBAR, KNOPPERS COCONUTBAR and KNOPPERS PEANUTBAR trademarks are identical to each of its corresponding disputed domain names. WIPO Overview 3.0 , Section 1.7 . (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). GTLDs, such as “.com” in the disputed domain names, are generally viewed a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0 , Section 1.11 . B. Rights or Legitimate Interests Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview 3.0 , Section 2.1 . It is evident that Respondent, identified by registration data for the disputed domain name as Domain Admin, is not commonly known by the disputed domain names or Complainant’s KNOPPERS trademarks. It is also evident that Respondent has offered to sell at least one of the disputed domain names on an online marketplace for profit, and that the remaining two disputed domain names would have likewise been offered for sale on the same marketplace but for a configuration error on the part of Respondent. Based on the undisputed facts and circumstances in the record before it, the Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. This is especially the case where each disputed domain name is so obviously connected with a complainant and its products, its very use by a registrant with no connection to the complainant suggests opportunistic bad faith. The Panel concludes from the record that Respondent had not only Complainant’s KNOPPERS trademark in mind, but also Complainants newly filed applications in Germany for the KNOPPERS NUTBAR, KNOPPERS COCONUTBAR, and KNOPPERS PEANUTBAR trademarks in mind, when registering the disputed domain names, and that Respondent most likely registered the disputed domain names in order exploit and profit from Complainant’s trademark rights. In addition, the Panel notes the nature of the disputed domain names, which carry an implied risk of association with Complainant. In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain names, Respondent’s use of a proxy registration service to mask its identity, and Respondent’s attempt to sell the disputed domain names in opportunistic bad faith, the Panel concludes that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name: i. Circumstances indicating that Respondent has registered or Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark to a competitor of Complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or ii. Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or iii. Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or iv. By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Registration of the disputed domain names with intent to profit by exploiting Complainant’s trademarks and selling those disputed domain names constitutes axiomatic bad faith registration and use under paragraph 4(b)(i) of the Policy. As in this case, bad faith is evident where Respondent clearly has knowledge of Complainant’s trademarks, the KNOPPERS trademarks appear to be well known in China where registration data revealed by the Registrar suggests Respondent is located, and Respondent offers to sell one of the disputed domain names to the highest bidder or otherwise to the general public. WIPO Overview 3.0, Section 3.1.1. Specifically, Respondent directed the disputed domain names to “dan.com”, a marketplace to sell, lease or rent domain names, and at least one of the disputed domain names resolved to an open sales offer to the public for USD 988. This seems to be far in excess of apparent registration costs and it falls well within paragraph 4(b)(i) of the Policy. Again, it is also probable that the remaining two disputed domain names would have likewise been offered for sale on the same marketplace but for a configuration error on the part of Respondent. Respondent’s offer at this price and attempted sale of the other disputed domain names is clear evidence of Respondent’s opportunistic bad faith intention to acquire and sell the disputed domain names, which are confusingly similar to Complainant’s KNOPPERS trademark and identical to Complainant’s KNOPPERS NUTBAR, KNOPPERS COCONUTBAR and KNOPPERS PEANUTBAR trademarks. 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 names Phillip V. Marano
Sole Panelist
Date: December 5, 2019
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