ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Ralf Bohle GmbH v. YinFenge Case No. D2023-2767 1. The Parties The Complainant is Ralf Bohle GmbH, Germany, represented by MSA IP - Milojevic Sekulic & Associates, Serbia. The Respondent is YinFenge, China. 2. The Domain Names and Registrars The disputed domain names and (the "Domain Names") are registered with OwnRegistrar, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 29, 2023. On June 29, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 29, 2023, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is the registrant of the disputed domain name and its contact details and disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (WhoisSecure) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 4, 2023 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 July 7, 2023. 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 July 18, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 18, 2023. page 2 The Center appointed Geert Glas as the sole panelist in this matter on August 23, 2023. 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, Ralph Bohle GmbH, is a German company specialized in the manufacturing of tires and other equipment and parts for bicycles and wheelchairs. The Complainant owns a substantial portfolio of SCHWALBE trademarks. Among others, the Complainant registered the following international and European Union trademarks: - : International trademark, registration No. 719983 registered on May 19, 1999 in classes 9 and 12; - SCHWALBE: International trademark, registration No. 1171528 registered on July 17, 2013 in class 12; - SCHWALBE: European Union Trade Mark, registration No. 011061322 registered on December 18, 2012 in classes 8, 9 and 12. The Complainant also owns the domain name , which is registered on October 24, 1995 as well as a series of other domain names including the terms "schwalbe" or "schwalbe.bike". The Registrar's WhoIs database shows that the Domain Names were first registered on April 11, 2023. The Registrar's WhoIs database does not indicate the identity of the Respondent for both Domain Names, hiding behind the shield of a privacy service for the disputed domain name . Upon request from the Center, the Registrar identified the Respondent as YinFenge on June 29, 2023. It appears from the screenshots attached as an exhibit to the Complaint that the Domain Names resolved to websites on which the Respondent was commercialising SCHWALBE branded goods and which reproduced the following logo in blue: Furthermore, the Respondent was making use of the following advertisements on the websites: "Looking For The Perfect Bicycle Products? Look No Further Than Schwalbe" and "Looking For The Perfect Bicycle Products? Look No Further Than schwalbesale.com". The websites content was taken down after the Complainant had contacted the Registrar. 5. Parties' Contentions A. Complainant The following is a summary of the Complainant's contentions. The Complainant requests that the Domain Names be transferred to it on the following grounds: page 3 (i) the Domain Names are confusingly similar to a trademark or service mark in which the Complainant has rights The Complainant contends that the Domain Names contain its trademark SCHWALBE which has to be considered as distinctive and well known (See Ralf Bohle GmbH v. Liu Zhongsen, WIPO Case No. D2023-1211). The Complainant also contends that the addition of the term "bike" and "sale" would not prevent a finding of confusing similarity. On the contrary, the Complainant affirms that such additions are causing likelihood of confusion for ordinary Internet users since the Complainant's business activity revolves around the manufacturing of equipment for bicycles. (ii) The Respondent has no rights or legitimate interests in respect of the Domain Names The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names since the Respondent (i) has not been authorised by the Complainant to use the SCHWALBE trademark, (ii) is not using the Domain Names in connection with a bona fide offering of goods or services and (iii) is not commonly known by the Domain Names. The Complainant also contends that the Respondent's lack of rights or legitimate interests in respect of the Domain Names is further evidenced by the fact that the Respondent's contact information appears to be false and non-sensical. (iii) The Domain Names were registered and are being used in bad faith. The Complainant contends that the Respondent could not have been unaware of its trademark. All the more, because the webpages to which the Domain Names resolve reproduce a variation of the Complainant's trademark and show images of the Complainant's products. In addition, it appears from the screenshots attached as an exhibit to the Complaint that an Internet search of the keyword "schwalbe" leads to the Complainant and its activity. The Complainant claims that it is the Respondent's duty to verify that the registration of the Domain Names would not infringe the rights of any third party and the failure to do so is a contributory factor to its bad faith (see Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806 and Lancôme Parfums et Beauté & Cie, L'Oréal v. 10 Selling, WIPO Case No. D2008-0226). The Complainant therefore contends that the Respondent has chosen the Domain Names to use them for selling products under the SCHWALBE trademark, in order to make a commercial gain and to disrupt the Complainant's activity. The Complainant adds that the websites to which the Domain Names resolve are used to attract Internet users for commercial gain by creating a likelihood of confusion through the use of the SCHWALBE trademark without any authorization. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated that it is the owner of international and European Union trademarks, consisting of the word "schwalbe", which satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case (See WIPO Overview of WIPO Panel Views on Selected UDRP page 4 Questions, Third Edition ("WIPO Overview 3.0"), section 1.2). The Domain Names incorporate the Complainant's SCHWALBE trademark in its entirety followed by the terms "-bike" and "sale". Several UDRP panel decisions have stated that wholly incorporating a complainant's registered trademark in a domain name may be sufficient to establish confusing similarity even when another term is added to the trademark (See, e.g., GA Modeline S.A v. Mark O'Flynn, WIPO Case No. D2000-1424; Viacom International Inc. v. Erwin Tan, WIPO Case No. D2001-1440; and eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307). Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements (see WIPO Overview 3.0, section 1.8). Accordingly, the Panel finds that the first element under paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent), WIPO Case No. D2000-0704 and the WIPO Overview 3.0, section 2.1). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. Indeed, based on the evidence submitted by the Complainant, the Panel finds that it does not appear that the Respondent (i) has made a legitimate noncommercial or fair use of the Domain Names, (ii) has used the Domain Names in relation with a bona fide offering of goods or services or (iii) has been authorised by the Complainant to use the SCHWALBE trademark or (iv) has been commonly known by the Domain Names. More specifically, the Complainant has provided evidence that the Domain Names previously resolved to webstores allegedly selling the Complainant's trademarked goods and displaying a variation of the Complainant's logo. Further to section 2.8 of the WIPO Overview 3.0, the Respondent's previous use of the Domain Names to host impersonating webstores does not amount to a bona fide offering nor noncommercial fair use. Moreover, the composition of the Domain Names combining the Complainant's trademark and the terms describing the Complainant's products and activity carries a risk of implied affiliation, see section 2.5.1 of the WIPO Overview 3.0. Given that the Respondent did not reply to the Complainant's contentions and did not present any plausible explanation for its use of the Complainant's SCHWALBE trademark, the Panel considers that the Complainant has satisfied its burden of proof under this element of the Policy. Accordingly, the Panel finds that the second element under paragraph 4(a)(ii) of the Policy has been established in respect of the Domain Names. page 5 C. Registered and Used in Bad Faith The Panel turns to the question of whether the Domain Names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy describes some circumstances which, if found to exist, will be evidence of the registration and use of the domain name in bad faith. They are presented in the alternative and consist of a not exhaustive list of circumstances of bad faith: (i) circumstances indicating that the respondent has registered or has 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 the respondent documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent has 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 the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 the respondent's website or location or of a product or service on the respondent's website or location. (a) Registered in bad faith The Complainant has been benefitting from trademark protection for its SCHWALBE trademark for more than two decades, while the registration of the Domain Names has just occurred. Considering that - the Respondent registered the disputed domain name composed of the SCHWALBE trademark and the addition of the word "-bike" which corresponds to one of the Complainant's main products; - the Respondent registered on the same day the disputed domain name composed of the SCHWALBE trademark and the addition of the word "sale"; and - the webpages to which the Domain Names resolved reproduced the Complainant's trademark and showed images of the Complainant's products the Panel is of the opinion that the Respondent could not have been unaware of the SCHWALBE trademark and of the Complainant's rights in this trademark when registering the Domain Names. (b) Used in bad faith It appears from the screenshots attached as an exhibit to the Complaint that the Domain Names were used for websites offering bicycle tires, parts and other equipment for bicycles. Both websites used the SCHWALBE logo and the following advertisement: "Looking For The Perfect Bicycle Products? Look No Further Than Schwalbe" and "Looking For The Perfect Bicycle Products? Look No Further Than schwalbesale.com". For this reason, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's 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 the Respondent's website (See e.g., Groupe Partouche v. Madarin Data LTD, Pousaz Raymond, WIPO Case No. D2010-1649; Claudie Pierlot v. Yinglong Ma, WIPO Case No. D2018-2466; Caterpillar, Inc. v. Dirk Dohmen, WIPO Case No. D2016-0138). Moreover, the Panel finds that the addition of the words "-bike" and "sale" to the Domain Names serves to heighten potential Internet user confusion with the Complainant's services. page 6 Consequently, the Panel finds that the Respondent registered and used the Domain Names 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 names, and , be transferred to the Complainant. /Geert Glas/ Geert Glas Sole Panelist Date: September 6, 2023
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