The Complainant is Dr. August Oetker Nahrungsmittel KG, Germany, internally represented.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Scot Michael, United States of America (“United States”). 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2020. On August 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 25, 2020, 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 the Complainant on September 3, 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 September 7, 2020. The Center sent an email to the Complainant, with copy to the Respondent, acknowledging receipt of such amendment. In response to this email, the Respondent sent an informal email communication to the Center on September 8, 2020, simply stating “ok”. 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 the Respondent of the Complaint, and the proceedings commenced on September 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2020. The Respondent did not submit any formal response. The Center notified the Parties on October 1, 2020, that it would proceed to panel appointment. The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on October 9, 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 a German company founded in 1891, which is a manufacturer and seller of various food products including baking powder and ingredients as well as muesli, milk products and frozen snack products. The Complainant has constantly been using the designations “Oetker” and “Dr. Oetker” to designate itself and its goods since its creation. The trademark DR. OETKER enjoys high degree of awareness in the food products sector in Germany. The Complainant and its affiliated companies operate several websites. Such websites are accessible through domain names composed of the words “oetker”, “droetker” or “dr-oetker” followed by various extensions. The Complainant is the owner of various registrations for the DR. OETKER trademark, including: - European Union Trade Mark registration number 604710 registered on May 31, 1999, in classes 1, 5, 16, 29, 30, 31, and 32; - United States trademark registration number 2627366 registered on October 1, 2002, in classes 1, 5, 16, 29, 30, 31, and 32. The disputed domain names The disputed domain names do not resolve to active websites, and the Respondent is using the disputed domain names for phishing e-mails for obtaining personal and financial information. The Respondent used an email address corresponding to the disputed domain name Furthermore, two consumer protection websites listed email addresses corresponding to both disputed domain names, because of their use for fraudulent purposes. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain names are confusingly similar to its prior DR. OETKER trademarks as they reproduce the main “Oetker” feature. The Complainant has not licensed or otherwise permitted the Respondent to use the DR. OETKER trademark or any variation thereof. The Complainant also contends that the Respondent is not commonly known by the disputed domain names. Moreover, according to the Complainant, the name “Oetker” has no meaning in any language and is a very rare family name. The Complainant alleges that the Respondent was aware of the “Dr. Oetker” company name and the corresponding trademark before registering the disputed domain names. The Complainant alleges that the Respondent is passively holding the disputed domain names in bad faith and that the use of the disputed domain names in corresponding email addresses to perpetuate a phishing/hiring scam constitutes bad faith under the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following: (i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name registered by the respondent has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant owns various trademark registrations for the trademark DR.OETKER. The disputed domain name The disputed domain name While each case is judged on its own merits, in cases 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 to that mark for purposes of UDRP standing (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In the present case, dominant feature of the Complainant’s trademark “Oetker” is clearly recognizable in the disputed domain names. The inversion of “dr” and “Oetker” within the UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com”, should be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0). The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Based on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain names, nor has the Complainant granted to the Respondent an authorization to use the disputed domain names. Furthermore, there is no evidence indicating that the Respondent bears the name “Oetker” or is commonly known by this name. Finally, the Respondent did not file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Given the well-known character of the Complainant’s name and trademarks, the Panel accepts that the Respondent most probably knew of the Complainant’s trademark when he registered the disputed domain names. The combination of the first name “August” with “Oetker” in one of the disputed domain name shows also that the Respondent was aware of the Complainant’s company name. The combination of these two elements can indeed hardly be coincidental. There is no indication that the Respondent made any use of the disputed domain names in connection with an active website since their registration on April 13 and 30, 2020. The fact that the disputed domain names do not resolve to an active webpage does not prevent a finding of use in bad faith. Previous UDRP panels have indeed held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers (see section 3.4 of the WIPO Overview 3.0). In the case at hand, it appears that the Respondent used an email address corresponding to the disputed domain name It also results from the exhibits communicated by the Complainant that the email addresses corresponding to the disputed domain names have been listed by consumer protection websites because of their use for fraudulent purposes. The Panel finds that such uses constitute use in bad faith of the disputed domain names. According to the above, the Panel finds that the disputed domain names were registered and used in bad faith, and that the Complainant has satisfied the condition set out in 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 disputed domain names Anne-Virginie La Spada
Sole Panelist
Date: October 23, 2020
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