The Complainant is Liebherr-International AG, Switzerland, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.
The Respondent is Perfect Privacy, LLC, United States of America (“United States” or “U.S.”), / Alexandr Belyakov, 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 June 18, 2021. On June 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 21, 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 June 23, 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 June 28, 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 June 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2021. The Center appointed Mariya Koval as the sole panelist in this matter on July 28, 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, was founded in 1949, is an international group of companies and is one of the largest construction machine manufacturers in the world. The Complainant has a significant international presence, it now comprises over 140 companies in more than 50 countries on every continents with over 4,000 employees. The Complainant is the owner of a large LIEBHERR trademark (the “LIEBHERR Trademark”) registrations portfolio throughout the world, including Russian Federation, among which are: - International Trademark Registration No. 860617, registered on April 26, 2005, in respect of goods in classes 7, 9, 11 and 12; - International Trademark Registration No. 1276186, registered on February 24, 2015, in respect of goods in classes 1, 4, 7, 8, 9, 11, 12, 14, 16, 18, 21, 24, 25, 26, 28, 34; - International Trademark Registration No. 1382828, registered on July 25, 2017, in respect of services in classes 35, 36, 37, 38, 39, 41, 42, 43, 44, 45; United States Trademark Registration No. 2,529,147, registered on January 15, 2002, in respect of goods in classes 7, 9, and 11. The Complainant has a significant online presence, it operates different domain names reflecting its LIEBHERR Trademark for sale and promotion of its goods, inter alia: The Disputed Domain Name was registered on January 11, 2016. On the date of this Decision, the Disputed Domain Name resolves to a commercial website where the Liebherr refrigerators and freezers repair services are offered. The website under the Disputed Domain Name is in Russian and contained the Complainant’s logo at the page’s top right. 5. Parties’ Contentions A. Complainant The Complainant contends that it sells its products and provides services related to engines all over the world and does have a huge sales and service network with subsidiaries and/or contractual partners and distributors all over the world. The Disputed Domain Name is clearly confusingly similar, if not identical, to the Complainant’s Trademark. It contains the Complainant’s Trademark in its entirety and combines it with the merely dictionary term “group”. Therefore, the relevant public might get an impression that the Disputed Domain Name is intended to identify the Complainant and its group of companies worldwide. The Complainant also contends that its Trademark registrations predate the date of registration of the Disputed Domain Name. The Complainant further asserts that the Respondent has no rights or legitimate interests in the Disputed Domain Name in view of the Complainant did not find any information on that the Respondent has any registered trademarks or trade names or even personal names corresponding to the LIEBHERR Trademark or the Disputed Domain Name. In addition, no license or authorization of any other kind has been given by the Complainant to the Respondent to use the LIEBHERR Trademark. The Complainant alleges that the Disputed Domain Name is currently used for goods and services related to the Complainant and its goods, in particular, refrigerators or freezers. The Complainant is unaware whether the Respondent is using the Disputed Domain Name in relation to original or to fake goods. However, it should be noted that the Respondent is not an official dealer or seller (or services provider) with a contractual or other direct commercial relationship with the Complainant. In particular, the Complainant has not authorized the Respondent to use its Trademark. Nevertheless, the Respondent creates the (false) impression to be an authorized dealer, not only because he uses the Complainant’s Trademark in the Disputed Domain Name, but also because the identical LIEBHERR logo, as well as some original marketing pictures of the Complainant are used on website under the Disputed Domain Name. The Complainant further claims that the Disputed Domain Name was registered and is being used in bad faith in view of when registering the Disputed Domain Name, the Respondent was clearly aware of the prior rights of the Complainant in its LIEBHERR Trademark, not only because the Complainant is operating its business since 1949, but also in view of the Trademark which has been registered long before the registration of the Disputed Domain Name. Further, the Respondent is offering, on the website under the Disputed Domain Name, the content directly related to the Complainant’s LIEBHERR Trademark, using original pictures of the Complainant’s products as well as the LIEBHERR logo. So, the Respondent obviously creates the false impression that there is a direct relationship between the Respondent and the Complainant. Hence, the Respondent is using the Disputed Domain Name intentionally attempting 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 and the products and services. Further, the Disputed Domain Name is registered by a privacy or proxy service. While this is, as such, not evidence of bad faith, however, using a privacy service for registering a misleading site and hiding real identity of the underlying registrant, shows the bad faith conduct of the true owner of the Disputed Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the complainant to succeed must satisfy the panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant is the owner of the LIEBHERR Trademark for more than seventy years. The Complainant has provided evidence and has established its rights in the well-known LIEBHERR Trademark. The Disputed Domain Name reproduces the LIEBHERR Trademark in its entirety with addition of the dictionary word “group”, hyphen and and the generic Top-Level Domain (“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. Also, addition of a hyphen is typically irrelevant to the consideration of confusing similarity between a trademark and a domain name. The gTLD “.com” should be disregarded under the confusing similarity test as a standard registration requirement. In this case, the addition of the dictionary term “group” and hyphen does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s Trademark. In view of the above the Panel concludes that the Disputed Domain Name, completely incorporating the Complainant’s highly distinctive LIEBHERR Trademark, is confusingly similar to the Complainant’s Trademark and that the Complainant has established the first element under Policy, paragraph 4(a). B. Rights or Legitimate Interests The Complainant has used its LIEBHERR Trademark for more than 70 years and its domain name ˂liebherr.com˃ since 1996, which is long before the Respondent registered the Disputed Domain Name in 2016. The Complainant alleges that the Respondent has no rights or legitimate interests in the Disputed Domain Name 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 LIEBHERR Trademark. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name as the Disputed Domain Name resolves to a commercial website, where repair services for refrigerators and freezers under the Complainant’s LIEBHERR Trademark are offered. Moreover, the website under the Disputed Domain Name contains the Complainant’s logo and some original marketing pictures. 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 does not disclose the relationship between the Complainant and the Respondent. On the contrary, it creates an impression of official or related the 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 “group”, which is a part of the Complainant’s company name, to the Complainant’s Trademark in the Disputed Domain Name, is further evidence, that the Respondent was very well aware of the Complainant’s Trademark and business 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 second element of the paragraph 4(a) of the Policy 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 is being used in bad faith in view of the following. The Complainant’s products under the LIEBHERR Trademark are well-known throughout the world. The Disputed Domain Name was registered long after the Complainant registered its LIEBHERR Trademark. The Disputed Domain Name incorporates the LIEBHERR 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 LIEBHERR 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 resolves to the website offering the repair services for the products under the Complainant’s LIEBHERR Trademark and containing the Complainant’s logo and original marketing pictures. In view of the Disputed Domain Name resolves to the website which displayed the Complainant’s Trademark that, in its turn, gave strong impression that this website is related to or authorized by the Complainant, the Internet users most likely consider 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 LIEBHERR 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 is being 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: August 11, 2021
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