The Complainants are I.M.P.S., Belgium (“Complainant 1”), and Studio Peyo S.A., Switzerland (“Complainant 2”), together represented by Gevers Legal NV, Belgium.
The Respondent is Jennifer Regensburger, Kinderkrippe Schlumpfenland, Germany, 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 May 19, 2021. On May 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 21, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 31, 2021, the Center transmitted an email in English and German to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on June 3, 2021. The Respondent did not comment on the language of the proceeding but was able to submit a Response in German. The Center verified that 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 June 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2021, and was extended on the Respondent’s request to July 12, 2021. The Response was filed in German with the Center on July 12, 2021. The Center appointed Gregor Vos as the sole panelist in this matter on July 25, 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 In the present case, the Complaint has been filed by two Complainants. Complainant 1 is a Belgian company and the licensor and operator of the intellectual property rights related to the “Smurfs”. The Smurfs are fictional characters from a comic series from 1959, with more than 272 episodes. The name of the Smurfs has been translated into 55 languages. The intellectual property rights to the Smurfs are registered in the name of Complainant 2, which is a Swiss company. Complainant 2 is the owner of inter alia the following German and European Union (“EU”) trademark registrations (hereinafter jointly referred to as: the “Trademarks”): - German Reg. No. 394058682 registered on August 16, 1995; The Respondent is a German daycare established in 2006. The Domain Name was registered on April 13, 2006, by the Respondent and resolves to a website of a daycare in Nürnberg. 5. Parties’ Contentions A. Complainant With the Complaint, the Complainants seeks that the Domain Name be transferred to Complainant 1. The Complaint is based on the following factual and legal grounds: the Domain Name is identical or confusingly similar to the Trademarks of Complainant 2, the Respondent has no rights or legitimate interests in the Domain Name and the Domain Name has been registered and is being used in bad faith. Firstly, according to the Complainants, the Domain Name is identical or confusingly similar to the well-known Trademarks. The Trademarks are reproduced in full in the Domain Name and the addition of the generic Top-Level Domain (gTLD) “.com” should be disregarded when evaluating the identity or confusing similarity of the Trademarks to the Domain Name. Also, the addition of the letters “enland” does not eliminate the confusing similarity between the Trademarks and the Domain Name, but rather adds to such confusion because of the deliberate reference to the German name of the invented country of the Smurfs (in German: “Schlümpfenland”). Secondly, according to the Complainants, the Respondent has no rights or legitimate interests in the Domain Name. The Respondent does not own any trademark registrations for “Schlumpfenland”), is not commonly known by the Domain Name and does not have any connection or affiliation with the Complainants. The fact that the Respondent has been using the Domain Name for more than 10 years would not lead to a different finding. This use is illegitimate, because the Domain Name so clearly refers to the famous Trademarks. Further, the Respondent has displayed figurative representations of a Smurf on the website linked to the Domain Name in the past, adding to creating an impression of association with the Complainants, deliberately taking advantage of the worldwide reputation of the Trademarks for commercial gain. This is reinforced by the fact that the target audience of the Complainants and the Respondent is the same, namely young children and their parents. This illustrates the fact that the Respondent is deliberately trying to attract Internet users to its website by using the Trademarks and gaining unfair advantage of them. Finally, according to the Complainants, the Respondent has registered and is using the Domain Name in bad faith. In light of the fame of the Trademarks, it is inconceivable that the Respondent registered the Domain Name without knowledge of the Trademarks or the term “Schlumpfenland”, invented by the Complainants. This knowledge of the Respondent is illustrated by the fact that a figurative representation of a Smurf dressed in baby clothing was depicted on the website linked to the Domain Name. Also, the mere registration of the Domain Name that is identical of confusingly similar to the famous Trademarks by an unaffiliated entity, such as the Respondent, can itself create a presumption of bad faith. Further, the Respondent deliberately tries to create the impression of an affiliation between the Respondent and the Complainants and to divert Internet users to its website linked to the Domain Name. B. Respondent With the Response, the Respondent requests that the remedy requested by the Complainants be dismissed. Firstly, according to the Respondent, the Domain Name is not identical or confusingly similar to the Trademarks. Contrary to the Complainants’ statement, the Smurfs live in a fictional country with the German name “Schlumpfhausen”, whereas the world in which they live has no name. Also, in the title song of the comic series no reference is made to “Schlumpfenland”, but to “Schlümpfeland”. Further, the term “Schlumpfenland” does not consists of the two terms “Schlumpf” and “enland”, but rather of “Schlumpfen” and “land”. The Respondent notes that the Complainants have no rights in the term “Schlumpfen”. Secondly, according to the Respondent, the Respondent does not have rights to the term “Schlumpfenland”. However, the Respondent does have a legitimate interest in the use of the Domain Name. The Respondent uses the Domain Name in all official communications and for numerous online accounts. Also, the Domain Name and the email address linked to it are provided to all customers and are therefore commonly known. Further, if the Domain Name would be transferred to the Complainants, the Respondent’s company would be financially disproportionately damaged. Finally, according to the Respondent, the Respondent has not registered, nor is using the Domain Name in bad faith. The Respondent does not take unfair advantage of the Trademarks, since no customers are unfairly attracted to its website. This is due to the fact that the free choice of a daycare is limited, because places are allocated to children depending on their place of residence. The use of the Domain Name by the Respondent is noncommercial and fair, with no intent to mislead consumers for commercial purposes or to gain unfair advantage of the Trademarks. From the website linked to the Domain Name, it would immediately be obvious to consumers that there is no connection to the Complainants. The Respondent does not make commercial use of the Domain Name, but rather offers educational services with an educational mission. Also, the Domain Name has not been registered with the purpose to redirect Internet users to the website of the Respondent, nor is the Respondent in any way to be regarded as a competitor of the Complainants. 6. Discussion and Findings The Panel notes that the Complaint has been filed by two Complainants. In the present case, in the absence of any objection on behalf of the Respondent, the Panel accepts the single consolidated Complaint against the Respondent, which it finds fair and equitable to all the Parties (see e.g., Taylor Wimpey Holdings Limited and Taylor Wimpey PLC v. Annette Johnson, Tangerineuk,WIPO Case No. D2016-2116). The Panel notes that, absent any objection by the Respondent, it follows from the facts and circumstances described in the Complaint that Complainant 1 acts as an exclusive licensee of Complainant 2 and is authorized by Complainant 2 to file a complaint. Therefore, Complainant 1 has standing to file a UDRP complaint and to request a transfer of the Domain Name (the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)), Section 1.4.1). The Panel also notes that pursuant to paragraph 11(a) of the Rules, 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 argued that the Registration Agreement is also available in English, and that it is a neutral (as between the parties) and international language and the Domain Name uses the “.com” extension (and not e.g., “.de”). The Respondent did not comment on the language but was apparently able to understand the Complaint and was able to submit a Response in German. In the interests of efficiency, the Panel has accepted both filings in their respective language and renders this decision in English. For the Complainants to succeed, they must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that: i. the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainants have rights; and iii. the Domain Name has been registered and is being used in bad faith. Only if all three elements have been fulfilled, the Panel is able to grant the remedy requested by the Complainants. The Panel will deal with each of the requirements in turn. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainants to show that the Domain Name is (i) identical or confusingly similar to a trademark or service mark, (ii) in which the Complainants have rights. With respect to having rights pursuant to paragraph 4(a)(i) of the Policy, it is noted that Complainant 2 is registered as the owner of various trademarks for SCHLUMPF. Consequently, the Panel finds that the Complainants have proven that they have rights in the Trademarks. With regard to the assessment of identity or confusing similarity of the Domain Name with the Trademarks, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between the Complainants’ Trademarks and the Domain Name (see 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 confusingly similar to that mark (see section 1.7 of the WIPO Overview 3.0). In the present case, the Trademarks are incorporated in their entirety in the Domain Name. The addition of the gTLD “.com” and the letters “enland” does not dispel the impression of confusing similarity with the Trademarks (see, e.g., The Wikimedia Foundation, Inc. v. Mohsen Shamsi, WIPO Case No. DIR2017-0013). The Respondent’s contention that the Complainants do not have rights in the sign “Schlumpfen” does not lead to a different finding. Further, the Respondent has not disputed the Complainants’ contention that the Complainants have created the German term “Schlumpfenland”. The question of whether this country the Smurfs live in, should linguistically be called “Schlumpfenland” or “Schlümpfeland” is irrelevant here (but bears on the assessment of the second and third elements, and the credibility of the Response). Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests The second requirement the Complainants must prove is that the Respondent has no rights or legitimate interests in the Domain Name. The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that a respondent lacks rights or legitimate interests. If a complainant does establish a prima facie case, the burden of production shifts to the respondent (see, e.g. WIPO Overview 3.0, section 2.1; Sanofi v. Cimpress Schweiz GmbH, WIPO Case No. D2017-0522). The Panel accepts the Complainants’ contention that they have not authorized the Respondent to use the Trademarks, and that there is no relationship between the Complainants and the Respondent which would otherwise entitle the Respondent to use the Trademarks. Accordingly, the Panel considers that a prima facie case has been established by the Complainants and that it is for the Respondent to prove it has rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy lists three nonlimitative examples of instances in which a respondent may establish rights or legitimate interests in the disputed domain name. In the present case, the Domain Name resolves to a website for a children’s daycare service. The Panel finds that the Respondent has not sufficiently substantiated that its use of the Domain Name for educational services is noncommercial and fair with no intent to mislead consumers for commercial purposes or to gain unfair advantage of the Trademarks. The Panel agrees with the Complainants that the Domain Name clearly refers to the famous Trademarks of the Complainants. This creates a false impression of association of the Respondent with the Complainants. A children’s daycare center – even if free of charge as the Respondent suggests – is also a public entity for which its name can have an advantageous effect. As such, the Respondent is likely to take advantage of the worldwide reputation of the Trademarks for commercial gain. Indeed, there seems to be little doubt that the particular name was chosen to unfairly draw on the reputation of the Complainant’s marks. Considering these circumstances and the fact that the Respondent has no authorization from the Complainants to use the Trademarks, the Panel finds that the Respondent has not sufficiently addressed the prima facie case established by the Complainants. Consequently, the Panel finds that the requirement under paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith Under paragraph 4(a)(iii) of the Policy, a complainant must show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four nonlimitative circumstances which may be considered as evidence of registration and use in bad faith of a domain name. In the present case, it is undisputed that the Trademarks are registered by Complainant 2 and have been used for many years. The Complainants’ rights to the Trademarks predate the registration date of the Domain Name. In light of the well-known character of the Trademarks and the fact that this is undisputed by the Respondent, the Panel agrees with the Complainants that it is not conceivable that the Respondent chose the Domain Name without knowledge of the Complainants’ activities and the Trademarks. This knowledge of the Trademarks on the part of the Respondent is further illustrated by the circumstances that the Respondent has chosen the term “Schlumpfenland”, created by the Complainants, and that the Respondent had displayed a figurative Smurf on the website linked to the Domain Name – thereby removing any doubt about the Respondent’s knowledge of, and intention to target, the Complainants, even though this reference has been deleted prior to the current proceedings. Also, in stating that the services it offers are free, the Respondent seems to try to address the Complainants’ contention that the Respondent offers a commercial service; whatever the reality of the matter is, the point is that the Respondent’s chosen name draws on the reputation and the name of the Complainants. By incorporating the Trademarks in their entirety in the Domain Name, the Respondent takes advantage of the reputation of the Complainants’ Trademarks. Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith and that the third element of paragraph 4(a)(iii) of the Policy is fulfilled. 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, Gregor Vos
- EU Reg. No. 000975912 SCHLUMPF registered on December 21, 2000;
- EU Reg. No. 002467561 SCHLUMPF registered on February 13, 2003; and
- EU Reg. No. 002750719 SCHLUMPF registered on October 10, 2003.
ii. the Respondent has no rights or legitimate interests in respect of the Domain Name; and
Sole Panelist
Date: August 8, 2021
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