The Complainant is KWC AG, Switzerland, represented by BrandIT GmbH, Switzerland.
The Respondent is kivan nvrvzi gvrabi, Iran (Islamic Republic of). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2021. On May 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 2021, the Registrar transmitted by email to the Center its verification response: (a) confirming it is the Registrar for the disputed domain name; (b) confirming the language of the registration agreement is English; (c) 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 May 17, 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 May 21, 2021. 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, and the proceedings commenced on June 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2021. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 6, 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 Backgroundf The Complainant is a manufacturer and supplier of a range of tap systems for kitchens and bathrooms under and by reference to the trademark KWC. According to the Complaint, the business was established in Switzerland in 1874 manufacturing mechanical music boxes. It is not clear from the Complaint when the business began manufacturing taps and related products although from Annexes in the Complaint it appears to have been producing tapware by 1897. In 1919, a limited company, Karrer Weber und Cie, was created and introduced the technique of die-casting to manufacture the products. A heat press workshop and light metal foundry were established in 1957. In 1963, an automatic galvanizing machine was added and in 1978 the company installed its first low pressure shell casting plant which it had designed itself. In 2014, the KWC business, by then being controlled through KWC AG, was merged with the Franke Water Systems group when Franke Water Systems AG acquired the shares in KWC AG. That KWC AG ceased to exist and a new company located in Hergiswil Switzerland was incorporated under the name KWC AG. The registered trademarks owned by the business were transferred to an intellectual property holding company in the Franke Water Systems group. In 2019, however, the registered trademarks were transferred into the ownership of KWC AG. And in February 2021, the shares in KWC AG were sold to an investment fund so that the KWC business is no longer part of the Franke group. The Complainant’s products under the KWC brand are produced at manufacturing facilities in Switzerland, the European Union, the United Kingdom, the United Arab Emirates, and China. They are sold in over 50 countries on five continents. The Complainant also promotes its products from the website to which The Complaint includes evidence that the Complainant owns a number of registered trademarks for, or including, KWC. These include: (a) Swiss registered trademark KWC and device, No. P-368007, registered on March 7, 1989, in class 11; (b) Swiss registered trademark KWC enclosed in a circle, No. P-409849, registered on April 28, 1994, in classes 6 and 11; (c) Swiss registered trademark KWC No. 595131, registered on December 24, 2009, in classes 6, 9, 11 and 21; (d) Swiss registered trademark KWC No. 686546, registered on April 14, 2016, in classes 6, 9, 11, 20 and 21; (e) European Union trademark KWC No. 014032395, registered on October 8, 2015, in classes 6, 9, 11, 20 and 21. (f) Israeli registered trademark KWC No. 113217, registered on August 5, 1998, in class 11. The Complaint also claims that the Complainant owns registered trademarks in Iran (Islamic Republic of), registration numbers 241206, 274864 and 186362. The Complaint does not include evidence of the form of these trademarks, the goods or services or dates of registration. Such limited online searches of the Iran (Islamic Republic of) Trademarks Register as appear to be available, do confirm the existence of a registration in the name of the Franke group intellectual property holding company in classes 6, 9, 11, 20 and 21. The disputed domain name was registered on May 28, 2016. It resolves to a website which appears to be offering for sale tapware and related products. The website includes images which suggest an association with the Complainant. For example, there is a photograph of one of the Complainant’s manufacturing plants. Some of the products are offered for sale under product names used by the Complainant such as AVA. They also look similar to the products offered by the Complainant but, according to the Complainant, they are not products of the Complainant’s manufacture. For example, some are offered in colours which the Complainant does not offer. In addition to the use of the disputed domain name, some of the products are identified with a representation of the Complainant’s trademark. Other products on the website are offered under the name OLI, which (according to the Complainant) is the name of another significant sanitary and tapware manufacturing brand. The products illustrated in the annexes are toilet cisterns and plumbing rather than tapware. Searches undertaken by the Complainant disclose that the Respondent has also registered a domain name No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. The courier attempting delivery of the Written Notice was unable to complete delivery. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case. When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (i) the disputed domain name 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 disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Language of the proceeding As noted above, the Registrar has confirmed that the language of the registration agreement is English. Under the Rules, paragraph 11, the language of the proceeding is the language of the registration agreement for the disputed domain name unless the parties agree or the Panel determines otherwise. The Complaint has been submitted in English. The website to which the disputed domain name resolves is largely in Farsi. It seems fairly clear that the website is largely directed to a Farsi speaking audience. However, there are some links on it in English. For example, the links to connect to the website’s operator through What’s App which in turn take the user to a page on the What’s App website in English. The Search box and Subscribe box are also labelled in English and there is a copyright notice in English. The Complainant also contends it would be subject to significant disadvantage and put to considerable expense if the proceeding were conducted in Farsi. Given the Respondent registered the disputed domain name through the Registrar in English and there is some, albeit limited, usage of English on the Respondent’s website, the Panel does not consider it appropriate to depart from the default rule under the Rules. Accordingly, English is the language of the proceeding. B. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has proven ownership of the registered trademarks for or including KWC referred to in section 4 above. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. It is also usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. Where the textual elements have been disclaimed in the registration or cannot fairly be described as an essential or important element of the trademark, however, different considerations may arise. See for example, WIPO Overview 3.0, section 1.10. In the present case, however, the acronym KWC is clearly the most prominent and distinctive element of the Complainant’s first two registered trademarks. The acronym KWC cannot be described as inessential or unimportant or an unsubstantial or insignificant element of either trademark. Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s registered trademark and the term “shop”. As this requirement under the Policy is essentially a standing requirement, the addition of such descriptive or geographical terms does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied. C. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1. The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent in any way affiliated with it. The disputed domain name is plainly not derived from the Respondent's name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From such trademark searches as the Complainant has been able to undertake the Respondent does not appear to hold any trademarks for the disputed domain name. The Complainant’s trademark rights were established long before the disputed domain name was registered. While the Respondent does appear to be offering goods and services from the website to which the disputed domain name resolves, the Panel accepts the Complainant’s contention that this does not qualify as a good faith offering of goods or services under the Policy in this case. First, if as the Complainant contends the products being offered for sale are not genuine products sourced from the Complainant, the use of the Complainant’s trademark in connection with such goods does not qualify at least prima facie as in good faith under the Policy. Alternatively, the Respondent’s website would not satisfy the criteria for use by a reseller of genuine goods in any event. As the Complainant points out establishing a claim for a good faith offer typically requires a reseller to satisfy the for “Oki-Data” factors. That is, panels typically require a reseller to demonstrate that: (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. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 and WIPO Overview 3.0, section 2.8. The use of images from the Complainant’s website or of the Complainant’s factory, in addition to the use of the Complainant’s trademark, appear likely to suggest that the Respondent is more closely associated with the Complainant than a mere reseller. Given that most of the website is in Farsi, it is not possible for the Panel to identify whether there is any form of disclaimer of association. The Complainant says there is not. In any event, as the Complainant points out, the Respondent’s website fails the second requirement as the website is also promoting and offering for sale products under the brand name OLI, one of the Complainant’s competitors. These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. D. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint; see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. First, as the Complainant points out, its trademark has been in use for tapware products for many years prior to the registration of the disputed domain name. Secondly, while a three letter acronym can represent many different businesses and things, the acronym does not appear to have any direct descriptive significance in respect of tapware products. Nor, as already discussed, does it have any derivation from the Respondent’s name. If there are other businesses in the tapware ore even plumbing supplies field for whom the acronym might stand, the Respondent is not one of them. Thirdly, the products being offered for sale from the Respondent’s website indicate the Respondent is involved in the tapware field and is likely to be aware of the Complainant’s trademark in that field. The likelihood that the Respondent has such awareness is reinforced by the presentation of products on the Respondent’s website under the name OLI, another brand of sanitary and tap products, and the Respondent’s use of an email derived from “Oli”. The Respondent has not contended otherwise. In these circumstances, the Panel infers that the Respondent was aware of the Complainant’s trademark when the disputed domain name was registered and registered it for the purposes of the business disclosed by the Respondent’s website. The Panel finds that registration in such circumstances constitutes registration in bad faith under the Policy. For the reasons described in Section 5C above, the use of the disputed domain name in the way it has been used constitutes use in bad faith. Accordingly, the Complainant has established all three requirements under the Policy. 6. 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 Warwick A. Rothnie
Sole Panelist
Date: August 20, 2021
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