The Complainant is Belimo Holding AG, Switzerland, represented by Troesch Scheidegger Werner AG, Switzerland.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America (“United States”) / Sergey Sukharev, Russian Federation. 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 1, 2021. On February 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 3, 2021, 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 the Complainant on February 5, 2021, 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 amended Complaint on February 5, 2021. On February 11, 2021, the Center transmitted an email in English and Russian regarding the language of the proceeding to the parties. On February 15, 2021, the Center received the Complainant’s response in which it confirmed its request for English to be the language of the proceedings. The Respondent did not comment on the language of the proceeding. 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 the Respondent of the Complaint in both English and Russian, and the proceedings commenced on February 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2021. The Center appointed Mariya Koval as the sole panelist in this matter on March 29, 2021. 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 an international group of companies, with its headquarters in Switzerland. The Complainant was founded in 1975 and is one of the global market leader in the development, production, and sales of field devices for controlling heating, ventilation and air conditioning systems. The Complainant, having an international presence, employs approximately 1,900 people in over 80 countries and has been listed on the Swiss Stock Exchange since 1995. The quality of the Complainant's worldwide production facilities is confirmed by various certifications and standards achieved. The Complainant is the owner of numerous BELIMO trademark (the “BELIMO Trademark”) registrations in many jurisdictions throughout the world, including Russian Federation, among which are: - International Trademark Registration No. 569432, registered on March 6, 1991, in respect of goods in classes 7, 9 and 11; - International Trademark Registration No. 568174, registered on March 7, 1991, in respect of goods in classes 9 and 11. The Complainant has a significant online presence, it operates different domain names reflecting its BELIMO Trademark for sale and promotion of its goods, inter alia: The Disputed Domain Name was registered on October 31, 2018. As at the date of this decision the Disputed Domain Name does not resolve to an active website. However, in accordance with evidence presented by the Complainant (Annex 10 to the Complaint) the Disputed Domain Name at the time of the filing of the Complaint resolved to a website in the English language, where various valves under the Complainant’s BELIMO Trademark were offered for sale. 5. Parties’ Contentions A. Complainant The Complainant asserts that the Disputed Domain Name is confusingly similar to its BELIMO Trademark in view of that the Disputed Domain Name incorporates the Complainant’s Trademark in its entirety combined with the word "valves" directly describing the goods under the Complainant’s Trademark. The Complainant further contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name since the Complainant has never authorized, licensed, or permitted the Respondent to use the Complainant’s Trademark in any way. The Respondent is not using the Disputed Domain Name in connection with any bona fide offering of goods or services, nor is the Respondent making a legitimate noncommercial or fair use of it. The Disputed Domain Name previously resolved to the website displaying certain products for sale, which the Complainant offers under its BELIMO Trademark. The Complainant notices that displaying the products identical to those being offered under the Complainant's Trademark on the website under the Disputed Domain Name, clearly shows that the Respondent attempted to capitalize on the goodwill and reputation of the Complainant’s Trademark and thus cannot be considered a bona fide offering of goods or services nor noncommercial or fair use. The Respondent is not commonly known by the Disputed Domain Name and has no rights or legitimate interests in it. The Complainant also claims that the Disputed Domain Name was registered and is being used in bad faith in view of by using the Disputed Domain Name the Respondent intentionally attempts to attract for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. It is highly unlikely that the Respondent selected the Disputed Domain Name without having knowledge of the Complainant's use of the BELIMO Trademark. The Respondent must have had the Complainant's Trademark in mind when it registered the Disputed Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In accordance with paragraph 4(a) of the Policy, the complainant must prove the presence of each of the following three elements: (i) identical or confusingly similarity of the domain name to a trademark or service mark in which a complainant has rights; and (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 is being used in bad faith. 6.1. Preliminary Issue: Language of Proceedings The Registrar confirmed that the language of the Registration Agreement for the Disputed Domain Name is Russian. The Complainant has filed the Complaint in English and requests that English be the language of this proceeding due to the following reasons: - the Respondent used only English as the language for the content of the website under the Disputed Domain Name; - the website under the Disputed Domain Name was directed to English speaking consumers only and did not show any connection at all to the Russian Federation or the Russian Language. - it would be highly unfair costly, time consuming and inefficient, if, for example, the Complainant would have to translate 72 pages of Annex 4 to the Complaint as part of the documentation into Russian, even though the Respondent produced these pages in English and showed his familiarity with the English language. In accordance with paragraph 11(a) of the Rules unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant and its representative are both Swiss companies. The Panel takes into account that neither the Complainant nor its representative are able to understand and to communicate in Russian and therefore forcing the Complainant to translate the Complaint and annexes thereto, would result in unfair additional expenses for the Complainant and would delay this UDRP proceeding. The Disputed Domain Name and generic Top-Level-Domain (“gTLD”) comprise Latin script. Furthermore, the Respondent, having received the Center’s communication regarding the language of the proceeding, also in both English and Russian, did not make any submissions regarding the language of the proceeding. Paragraph 10(c) of the Rules sets out that the Panel shall ensure that the administrative proceeding takes place with due expedition. Having considered all circumstances of this case, the Panel concludes under paragraph 11(a) of the Rules that English shall be the language of the proceeding. 6.2. Substantive Issues A. Identical or Confusingly Similar The Disputed Domain Name comprises the BELIMO Trademark in its entirety, in which the Complainant has established the rights, with a combination of the dictionary word in the plural form “valves” and gTLD “.com”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The addition of dictionary term “valves” does not affect the confusing similarity here between the Disputed Domain Name and the Complainant’s Trademark. Also, pursuant to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. In light of the foregoing, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s Trademark and that the Complainant has satisfied the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The Complainant has used its BELIMO Trademark for more than 40 years and its domain name ˂belimo.com˃ – since 1995, which is long before the Respondent registered the Disputed Domain Name in 2018. The Complainant alleges that the Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to paragraph 4(a)(ii) of the Policy. The Complainant has never authorized in any way, licensed, or permitted the Respondent to use its BELIMO Trademark. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name in view of the Disputed Domain Name previously resolved to a commercial website, where wide range of the valves under the Complainant’s BELIMO Trademark was offered. Such use of the Disputed Domain Name creates strong impression of connection with the Complainant; however, at the same time the website under the Disputed Domain Name contained no information with respect to the relationship with the Complainant (or lack thereof). Therefore, the Panel cannot consider such commercial use of the Disputed Domain Name as bona fide offering goods or services, or a legitimate noncommercial or fair use. According to the WIPO Overview 3.0, section 2.8.1 panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. As is seen from the circumstances of this case, the website under the Disputed Domain Name did not disclose the relationship between the Complainant and the Respondent. On the contrary, it created an impression of official or related Complainant’s website, without being the same. Thus, the Respondent does not satisfy the conditions of the Oki Data test. Moreover, in accordance with the WIPO Overview 3.0, section 2.5.1, even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. Therefore, the addition of the dictionary term “valves”, which are one of the main Complainant’s products, to the Complainant’s Trademark in the Disputed Domain Name, is further evidence, that the Respondent was very well aware of the BELIMO Trademark at the time of registration of the Disputed Domain Name and has done so for the only purpose to create an impression that the Disputed Domain Name is connected with the Complainant’s Trademark. The Panel also finds that the Respondent is not commonly known by the Disputed Domain Name. In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Therefore, the Panel finds that the second element of the UDRP has been met by the Complainant. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy indicates some circumstances, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you [respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. The Panel comes to the conclusion that the Disputed Domain Name was registered and has been used in bad faith in view of the following. The Complainant’s products under the BELIMO Trademark are well-known throughout the world. The Disputed Domain Name was registered long after the Complainant registered its BELIMO Trademark. The Disputed Domain Name incorporates the BELIMO Trademark in its entirety, therefore the Panel finds that the Respondent was well aware of the Complainant’s Trademark when he registered the Disputed Domain Name. The Respondent obviously chose to register the Disputed Domain Name, which is confusingly similar to the Complainant’s BELIMO Trademark, with the intention to benefit from the Complainant’s reputation. Moreover, the Respondent’s knowledge of the Complainant’s Trademark is also supported by the use of the Disputed Domain Name which previously resolved to the website selling the products under the Complainant’s BELIMO Trademark. In view of the Disputed Domain Name previously resolved to the website which displayed the Complainant’s Trademark that, in its turn, gave strong impression that this website was related to or authorized by the Complainant, the Internet users most likely considered that the Disputed Domain Name referred to the one of the Complainant’s or its distributor’s official websites. Furthermore, the Disputed Domain Name, reproducing the Complainant’s Trademark in its entirety, is evidently deceptive for consumers. The Respondent obviously chose to register the Disputed Domain Name, which is confusingly similar to the Complainant’s BELIMO Trademark, for the purpose of attracting the Internet users to its competing website by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and of the products sold on it. Finally, the Respondent did not respond to the Complainant’s contentions and did not participate in this proceeding at all. Previous UDRP panels have considered that the respondent’s failure to respond to the complaint supports an inference of bad faith, see e.g., Champagne Louis Roederer (CLR) v. Global Web Development, LLC,WIPO Case No. D2004-1073 “The fact that the Respondent failed to respond to the Complaint, in the Panel’s view, adds to the arguments in favour of the Respondent’s bad faith.” In light of the above, the Panel concludes that the Disputed Domain Name was registered and has been used 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 Mariya Koval
Sole Panelist
Date: April 12, 2021
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