The Complainant is Kurt Geiger Limited, United Kingdom, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is Ralph Grunwald, Germany. 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 19, 2021. On May 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 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 May 21, 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 amendment to the Complaint on May 24, 2021. 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 May 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2021. The Center appointed Fabrice Bircker as the sole panelist in this matter on July 2, 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 a premium footwear brand from the United Kingdom. The Complainant launched its activities in London in 1963 under the name KURT GEIGER. Since then, it has known a continuous expansion. Nowadays, the Complainant sells over four million pairs of shoes a year, also markets clothing and fashion accessories, and counts over 70 stores and 170 concessions in departments stores all over the world. The Complainant’s activities are protected through numerous trademarks registrations relating to its company name and brand, such as: - KURT GEIGER, United Kingdom Trademark registration No. UK00001481898 filed on November 7, 1991, registered on November 13, 1992, regularly renewed since then, and designating products of Class 14, - KURT GEIGER, European Union trademark registration No. 5917034, filed on May 18, 2007, registered on December 12, 2008, regularly renewed since then, and covering products and services of Classes 3, 9, 14, 18, 25, and 35. Besides, the Complainant is also the registrant of the Very little is known about the Respondent, except that it is apparently located in Germany. The disputed domain name was registered on March 9, 2021. At the time of the drafting of the decision, the disputed domain name redirects toward an error page. According to the record of the case, the disputed domain name previously resolved to a website: - entitled “KURT GEIGER”, The Complainant’s submissions can be summarized as follows: First, the Complainant contends that the disputed domain name is confusingly similar to its KURT GEIGER trademark. In this respect, the Complainant notably puts forward that i) the “uk” element of the disputed domain name stands for an abbreviation for “United Kingdom” which does not prevent the KURT GEIGER trademark to remain recognizable within the disputed domain name, and that ii) the generic Top-Level Domain (“gTLD”) is a domain name standard registration requirement which can therefore be disregarded. Then, the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, notably because it has never authorized in any way the Respondent to register or to use the KURT GEIGER trademark in any manner. The Complainant also argues that by using the disputed domain name in connection with a website that falsely appears to be a website for the Complainant and offering for sale KURT GEIGER products without permission or consent from the Complainant, the Respondent is not using the disputed domain name with a bona fide offering of goods or services, and therefore cannot establish rights or legitimate interests in the disputed domain name. The Complainant contends that, correlatively, such use of the disputed domain name is not a legitimate noncommercial or fair use made without intent for commercial gain to misleadingly divert consumers or to tarnish its trademark. The Complainant adds that to its knowledge the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark corresponding to the disputed domain name. In this respect, the Complainant notably puts forward that given the worldwide fame of its KURT GEIGER trademark, which is reproduced in its entirety in the disputed domain name, it is not conceivable that the Respondent may have registered the disputed domain name without knowledge of the Complainant’s rights and business. At last, the Complainant contends that using the disputed domain name to redirect toward a website that appears to be a website for the Complainant and offering for sale footwear under the KURT GEIGER trademark, without permission or consent of the Complainant, is likely fraudulent and indicates an intent to deceive or, at a minimum, to act in bad faith with the intent for commercial gain. In consideration of all the above, the Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that for obtaining the transfer or the cancellation of the disputed domain name, the Complainant must establish each of the following three elements: (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. Besides, paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Besides, the Respondent’s failure to reply to the Complainant’s contentions does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Taking the foregoing provisions into consideration the Panel finds as follows. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to its trademark. Annexes 9 to 12 of the Complaint show trademark registrations for KURT GEIGER in the name of the Complainant, in particular those detailed in Section 4 above. Turning to whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark, as indicated in WIPO Overview 3.0, section 1.7, “[w]hile each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trade mark […], the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. In the present case there is no difficulty in finding that that the disputed domain name is confusingly similar with the Complainant’s trademark, since: - the disputed domain name reproduces the KURT GEIGER trademark in its entirety, As a result of all the above, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy are satisfied. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel to be present, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the Respondent], [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. While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1). In the present proceeding, the Complainant contends that it has not given its consent for the Respondent to use its KURT GEIGER registered trademark in the disputed domain name registration or in any other manner. In addition, there is nothing in the record of the case likely to indicate that the Respondent may be commonly known by the disputed domain name. Besides, the Respondent has used the disputed domain name to operate a website purporting to offer for sale footwear and accessories under the Complainant’s KURT GEIGER trademark, ostentatiously displaying said KURT GEIGER trademark and copying graphic elements of the Complainant’s website (such as its footer or its favicon). This situation opens the question whether the website available through the disputed domain name was genuinely offering KURT GEIGER products, or if the goods were counterfeits or even if it was a fake shop. Of course, if the products were counterfeits or if the online store was fake, there would be a clear absence of legitimate interests. Indeed, it is well established that “the use of a domain name for illegal activity (e.g., the sale of counterfeit goods […], impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent” (see WIPO Overview 3.0, section 2.13). On the other side, one cannot exclude that the products sold on the website available through the disputed website were genuine KURT GEIGER goods. In this respect, there is a consensus view (see WIPO Overview 3.0, section 2.8) that a reseller using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods makes a bona fide offering of goods and services and thus has a legitimate interest in the domain name if the following cumulative requirements are met: (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. Here, the Respondent’s website did not disclose its (lack of) relationship with the Complainant. Rather, the Respondent has sought to create an impression of association with the Complainant, by running a website that prominently displayed the KURT GEIGER trademark, while copying some graphics elements of the Complainant’s official website. In these conditions, even if the Respondent would have marketed genuine KURT GEIGER goods – which is not clear from the record, it would not be in a position to claim any legitimate fair use of the disputed domain name. At last, at the time of the rendering of this decision, the disputed domain name does not resolve any longer to an active website. Accordingly, considering the circumstances of this case, there can be no use of the disputed domain name in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy, or with a legitimate noncommercial or fair use with the terms of paragraph 4(c)(iii) of the Policy. Taken all the above into consideration, 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. The Respondent has had an opportunity to rebut the Complainant’s contentions but has not done so. Consequently, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name, and accordingly that the second element in paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and is using the disputed domain name in bad faith. In the present case, the Panel finds that: - the disputed domain name is confusingly similar with the Complainant’s KURT GEIGER trademark which predates it several dozens of years. In addition, this trademark is intrinsically distinctive and enjoys a strong repute (see Kurt Geiger Limited v. Jia Qi Yuan, Yi Wu Shi Yi Yun Dian Zi Shang Wu You Xian Gong Si and Jia Qi Yuan,WIPO Case No. D2019-2571 ( - the “uk” element of the disputed domain name refers to the country of origin of the Complainant, - before being deactivated, the disputed domain name resolved to a website that gave a strong impression of being operated or authorized by the Complainant, whereas it was not the case, and purporting to sell KURT GEIGER branded products of the same nature than those protected by the Complainant’s trademark, - the Respondent, while invited to defend his case, has remained silent in this procedure. It necessarily results from the above findings that the Respondent registered the disputed domain name being fully aware of the Complainant’s rights, and that it intentionally used the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant’s KURT GEIGER trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the products offered for sale therein, in the meaning of paragraph 4(b)(iv) of the Policy. At last, the fact that the disputed domain name does no longer resolve to an active website does not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). Indeed, given (i) the degree of distinctiveness and of reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response, (iii) the Respondent’s concealing its identity through a privacy service, and (iv) the conditions in which the disputed domain name was previously used, any use in good faith of the disputed domain name by the Respondent seems implausible. As a conclusion of the above, the Panel finds that the disputed domain name was registered and has been used in bad faith, within the meaning of 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 name, Fabrice Bircker
- purporting to offer for sale footwear under the KURT GEIGER trademark,
- reproducing the Complainant’s favicon,
- imitating the red footer of the Complainant’s website. 5. Parties’ Contentions A. Complainant
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith.
- the element “uk” of the disputed domain name (that may stand for the common abbreviation of the United Kingdom), does not prevent a finding of confusing similarity between the Complainant’s trademark (which remains recognizable) and the disputed domain name. Indeed, there is a consensus view among panelists (see WIPO Overview 3.0, section 1.8) that a domain name reproducing a trademark with the mere addition of a geographic term, is confusingly similar to said trademark under the first element of the Policy,
- the gTLD “.com” may be ignored for the purpose of assessing the confusing similarity, because it only plays a technical function.
Sole Panelist
Date: July 16, 2021
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