The Complainant is Rieker Holding AG, Switzerland, represented by Heuking Kühn Lüer Wojtek, Germany.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2020. On January 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2020, 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 January 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2020. The Center appointed Christos A. Theodoulou as the sole panelist in this matter on February 17, 2020. 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 the holding company of the Rieker Group. The latter company is one of Europe’s biggest manufacturers of footwear and leather products with more than 20,000 employees distributing, with its affiliates, RIEKER branded products all over the world, according to the uncontested allegations of the Complainant. The Complainant and its legal predecessors have been using the term RIEKER as a trademark since 1874, according to the uncontested allegations of the Complainant. In addition, the Complainant is the owner of the following trademark registrations: International Registration no. 1429832 RIEKER registered with WIPO on August 16, 2018, in class 18 and in class 25, and designating over 75 territories, inter alia the European Union and the United States; Swiss trademark registration no. 719987 RIEKER; European Union Trade Mark no. 1429832 RIEKER, registered on August 16, 2018; and The disputed domain name The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue relating to the default of the Respondent. The implications of a default in this case are telling since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the complainant must prove that each of these three elements are present”). As such, the Panel cannot merely grant the Complainant’s request automatically due to the default, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond,WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic,WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd,WIPO Case No. D2009-1028. The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar The Complainant has presented evidence to demonstrate that it owns registered trademark and company rights in RIEKER. The mere fact that the Respondent has added the descriptive term “shop” and the generic Top-Level Domain (“gTLD”) “.online” does not to this Panel affect the essence of the matter: the disputed domain name is identical or confusingly similar to the trademark of the Complainant and, in the circumstances of this case, is by itself sufficient to establish the criterion of identity or confusing similarity for purposes of the Policy, as many previous UDRP panels have found. See e.g., Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd.,WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC,WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov,WIPO Case No. D2006-0252. In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s right to or legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case: (i) Use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute: The Respondent is not making a bona fide offering of goods. (ii) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights: In this case, there is no such indication from the present record. (iii) Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue: Again, in this case there is no such indication from the record. Moreover the Respondent does not seem to have any trademark registrations including the term “rieker”. Additionally, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever. As a conclusion on this point, the Panel finds that the Complainant has established an uncontested, prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraphs 4(b)(i) to 4(b) (iv) of the Policy mention circumstances in order to demonstrate bad faith registration and use of a disputed domain name. According to the uncontested allegations of the Complainant, the Respondent registered the disputed domain name in bad faith, in order to capitalize on the goodwill of the trademark of the Complainant and attract commercial gain. The Respondent seems to want to create an impression of association with the Complainant without permission from the latter (paragraph 4(b)(iv) of the Policy). Furthermore, the Respondent must have known of the existence of the mark because of inter alia,the use by it of the Complainant’s trademark (including its logo both on the website and “favicon”), according to the uncontested allegations of the Complainant, to divert Internet traffic to its own website and to operate a website for illegitimate purposes. Further, according always to the uncontested allegations of the Complainant, Respondent uses the disputed domain name to direct Internet users to a website that appears to be a website operated by the Complainant. In fact, however, the Respondent is not offering any RIEKER branded product from its website. Finally, the default of the Respondent in the present circumstances seems to reinforce “the inference of bad faith registration and bad faith use” (The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn,WIPO Case No. D2001-0915). As a consequence of the above, the Panel finds that the Respondent registered and is using the disputed domain name 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 Christos A. Theodoulou
European Union Trade Mark no. 002898831 RIEKER, registered on July 29, 2004, in class 25.
Sole Panelist
Date: February 24, 2020
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