The Complainants (hereinafter as consolidated to “the Complainant”) are REISSWOLF International AG and REISSWOLF Akten-und Datenvernichtung GmbH & Co. KG, Germany, represented by Eisenführ Speiser Patentanwälte Rechtsanwälte PartGmbB, Germany.
The Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis, internally represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2020. On February 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 12, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 18, 2020 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 amendment to the Complaint on February 19, 2020. 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”). On February 19, 2020, an email was received from the Respondent expressing a willingness to transfer the Domain Name to the Complainant. Accordingly, the proceeding was suspended on February 25, 2020 for settlement negotiations. No settlement was reached between the Parties and at the request of the Complainant, the proceeding was reinstituted on April 8, 2020. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2020. No formal Response was filed with the Center. On May 21, 2020, the Center informed the Parties that it will proceed to appoint a panel. The Center appointed Ellen B Shankman as the sole panelist in this matter on May 26, 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 date of the Domain Name registration was confirmed by the Registrar to be January 29, 2020. The trademark REISSWOLF serves as a house-mark of the Complainant and is protected as a registered trademark in multiple jurisdictions world-wide. The Complainant provided evidence of multiple trademark registrations for the mark REISSWOLF in both wordmark and logo forms including, inter alia, European Union Trade Mark Registration No. 009552472 (registered on November 17, 2011) and Registration No. 016376006 (registered on October 11, 2018) which cover protection for software and related services that predate the date of the Domain Name registration. The Complainant also provided evidence of the Respondent’s previously active website that imitates and appears to be a complete copy of the Complainant’s original website at “www.reisswolf.com” and which invites the user to provide personal information. The Panel also conducted an independent search to determine that at the time of the decision the Domain Name resolves to a bold notice reading “Account Suspended”. 5. Parties’ Contentions A. Complainant The consolidated Complainant is REISSWOLF International AG, a public limited company under German law (the parent company) together with REISSWOLF Akten- und Datenvernichtung GmbH & Co. KG, a limited partnership under German law (the fully owned subsidiary of the parent company) legally represented by its general partner, Verwaltungsgesellschaft, REISSWOLF Akten- und Datenvernichtung mbH, a limited liability company under German law, active in the field of data privacy. This includes commercial activities in the field of archiving and document management, security digital services and data protection with respect to physical and digital data. Both Complainants have established an international franchise system whereby the use of the name and trademark REISSWOLF is organized on an international scale. The Complainant is the legitimate owner of the trademark REISSWOLF, and uses the designation “Reisswolf” as part of their company names in commerce. In Germany, the trademark REISSWOLF has acquired a high degree of distinctive power and brand awareness in the opinion of the Complainant. The trademark REISSWOLF has been mentioned as leading in the field of data and file destruction. The business was founded in 1985 that used the mark REISSWOLF and the fact that the Reisswolf group has at least 72 establishments in 28 countries with 1,300 employees. The Complainant alleges that the Respondent registered the Domain Name and immediately afterward used the Domain Name to fully replicate the Complainant’s website as “domain phishing”. The only difference was the fact that the “Direktkontakt” page was different from the Complainant’s insofar as the user could enter his details in a Typeform input mask. In the light of the blunt case of domain phishing, the first action of the Complainant was to request the Registrar, the Host and the Hosting Provider to disrupt the respective services, however unsuccessfully. With respect to the use of the Typeform input mask, the Complainant requested Typeform, SL to discontinue the service, which was granted by Typeform. The Complainant argues that the case of domain phishing shows that the Respondent registered and is using the Domain Name in bad faith. The addition of the trademark with the element “Europe” with a hyphen between the two words only heightens the likelihood of confusion as it is an indication that the Domain Name is destined for the operations of the legitimate owner in Europe. The content of the website as used by the Respondent is directed to customers both in Germany and Austria evidenced by the fact that the German language is used, but the use also of the English language is directed to customers of members at least in other member countries of the European Union. For these reasons, the addition of the word “Europe” clearly indicates that the Respondent tries to attract those potential users in Europe so that a similarity of signs is confirmed. In this respect, it should also be taken into account that the Complainant has established an international-wide franchise system so that the addition of the word “Europe” simply pretends that the website should be regarded as part of the well-known franchise system of the Complainant. Therefore, the Respondent fakes the identity for fraudulent purposes. The Respondent is considered as having no rights or legitimate interests in respect of the Domain Name since the use of the identical website of the Complainant and the trademark REISSWOLF has not been authorized by the Complainant and since this has to be seen as a blunt case of domain phishing and trademark infringement, which should be forbidden as an illegal practice from the onset. To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark REISSWOLF, in respect of data protection services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the term “Europe” to the term “Reisswolf” does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent was fully aware of the Complainant and the REISSWOLF trademark, when registering the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent The Respondent did not file a formal response. The Panel finds that the Respondent did provide an informal email, which confirms that the Respondent is aware of these proceedings. 6. Discussion and Findings 6.1. Preliminary Issue: Consolidation of Complainants The Complainants request consolidation of the proceedings and provide evidence and arguments to support the request. The Complainants are two companies, a mother company and a fully-owned subsidiary, which are both active in a variety of services in the field of data privacy, inter alia, archiving and document management, security digital services, and data protection with respect to physical and digital data. The Complainant REISSWOLF International AG is the substantive owner of the trademark REISSWOLF and has empowered the Complainant REISSWOLF International AG to register the designation REISSWOLF as a trademark in various jurisdictions. The Complainants claim that the Respondent has engaged in a conduct that has effected and still effects both Complainants in a similar fashion as the actual form of domain phishing is to the detriment of both Complainants. The Panel finds that the consolidation into one proceeding in light of the circumstances of the case showing evidence of the relationship between the Complainants as well as the common behavior and harm by the Respondent and to be determined by a single decision under the facts of this case to be fair and reasonable. The Panel will therefore, for the purpose of this Decision, hereinafter refer only to “the Complainant”, whenever appropriate. 6.2. Substantive Issues The burden for the Complainant under paragraph 4(a) of the Policy is to prove: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for REISSWOLF. The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the geographic term “Europe” to the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.” Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. Further, the phishing disqualifies any right or legitimate interest of the Respondent to the Domain Name. Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name. Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark REISSWOLF and uses it for the purpose of misleading and diverting Internet traffic. The unopposed allegation of potential phishing, and the evidence submitted in support of such phishing as well as the likelihood of confusion caused by copying the Complainant’s official website, is in view of the Panel sufficient evidence of the Respondent’s bad faith. Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop. The fact that the Domain Name now indicates that the account has been suspended does not change the Panel’s findings in this respect, and if anything supports it further. The Panel is persuaded that the Respondent deliberately registered the Domain Name which is confusingly similar to the Complainant‘s trademark together with a geographical term to create a misleading and fraudulent impression of association and confusion with the Complainant. The content of the website clearly shows that the Respondent was well aware of the Complainant’s activities and trademarks and intended opportunistically to benefit on the goodwill of the Complainant‘s trademarks and to profit from consumer confusion, and to obtain sensitive and valuable data in bad faith. As a note, even if the email submitted by the Respondent would serve in any way as response, the Panel finds the response supports the Panel’s finding that the Domain Name was registered in bad faith for the purpose of misleading and diverting Internet traffic and for opportunistic fraudulent behaviour. Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant and the fraudulent imitative website, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy. 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 Domain Name Ellen B Shankman
Sole Panelist
Date: June 9, 2020
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