The Complainant is RIESS Kelomat GmbH of Ybbsitz, Austria, represented by Schonherr Rechtsanwalte GmbH, Austria.
The Respondent is Registration Private, Domains By Proxy, LLC, DomainsByP of Scottsdale, Arizona, United States of America / Michel Navone of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2015. On October 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 October 28, 2015, informing of some formal deficiencies, inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 29, 2015.
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 October 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2015.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on December 9, 2015. 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 based in Austria and has been operating a family run business since 1550. From 1922, the Complainant has specialized in the manufacture of high-quality porcelain enamel kitchenware. The Complainant sells and advertises its products online, including through the domain name and . The Complainant also owns registered trade mark rights in the RIESS name based on its International Registrations and Austrian registrations since April 18, 2008 and June 26, 2006, respectively.
The Respondent is an individual based in Hong Kong, China, who registered the Disputed Domain Name through the proxy service provider, Domains By Proxy, LLC. According to the Registrar, the Disputed Domain Name was registered by the Respondent since at least October 21, 2015. 5. Parties’ Contentions A. The Complainant
The Complainant’s contentions can be summarised as follows:
(a) The Respondent used the Disputed Domain Name to sell goods identical to the Complainant’s goods. The Disputed Domain Name also resolved to a website that copied large parts of the content of the Complainant’s “www.” website, and also the awards won by the Complainant and featured on its website.
(b) The Complainant owns registered rights in the RIESS trade mark based on its International Registration and Austrian registration, dating back to April 18, 2008 and June 26, 2006, respectively. The distinctive part of the Disputed Domain Name is “reisz”, which is substantially and confusingly similar to the Complainant’s RIESS trade mark. It is also used by the Respondent in respect of a website that offers goods identical to those of the Complainant, and which has copied large parts of the Complainant's website (“www.”). This cannot be mere coincidence. The Disputed Domain Name and the Complainant’s RIESS trade mark are visually, phonetically and conceptually confusingly similar.
(c) The Complainant has not licensed or otherwise permitted the Respondent to use any of its RIESS trade marks. The Respondent is using the Disputed Domain Name to give the misleading impression that his business is in some way associated with the Complainant (which is false), and to try to exploit the fame and reputation of the Complainant. There is no connection between the Respondent and the Complainant. The content of the website to which the Disputed Domain Name resolved, demonstrates that the Respondent was well aware of the Complainant and its trade mark rights. Therefore, the Respondent cannot establish rights or a legitimate interest in the Disputed Domain Name.
(d) The Respondent registered and used the Disputed Domain Name in bad faith to deliberately exploit the well-known status and reputation subsisting in the Complainant’s RIESS trade marks, in order to increase Internet traffic to his website for commercial gain. The Respondent also registered the Disputed Domain Name (with only slight misspellings of the Complainant’s mark) in order to divert Internet users away from the Complainant’s website. B. The Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the RIESS mark, based on its International Registrations and Austrian trade mark registrations dated April 18, 2008 and June 26, 2006, respectively.
It is well-established that a domain name which contains a common or obvious misspelling of a trade mark will normally be found to be confusingly similar to such trade mark, where the misspelled trade mark remains the dominant or prominent element of the domain name (Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings,WIPO Case No. D2004-0971). In this case, the only difference between the word “reisz” in the Disputed Domain Name and the Complainant’s RIESS trade mark is the reversal of the letters “i” and “e”, and the use of the letter “z” instead of the letter “s” at the end. Such amendments add no distinctive element and remain confusingly similar to the Complainant's RIESS mark, both visually and phonetically. The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant’s trade mark.
Furthermore, it is also widely accepted that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the country code top-level domain extension, in this case “.cc”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant has not authorised the Respondent to use the RIESS mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the RIESS mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove he has rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to him 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 was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark 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 trade mark or service mark at issue.
There is no evidence to demonstrate that the Respondent has become commonly known by the Disputed Domain Name nor any evidence that he has registered the REISZ trade mark anywhere in the world. Further, the Respondent uses the Disputed Domain Name to resolve to a website which offers products that compete with the Complainant’s products, and also reproduces large parts of the content of the Complainant’s website (“www.”). Based on the foregoing, and the fact that the Disputed Domain Name is confusingly similar to the Complainant’s RIESS trade mark, the Panel finds that the Respondent has been using the Disputed Domain Name to misleadingly divert consumers to his website in order to make a commercial gain by selling products that directly compete with the Complainant. Such use cannot confer any rights or legitimate interests to the Respondent in the Disputed Domain Name.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel accepts that the Respondent is likely to have known of the Complainant’s RIESS trade mark at the time he registered the Disputed Domain Name, and has been using it in bad faith, based on the following:
(a) the Respondent registered the Disputed Domain Name on or around October 2015, more than 9 years after the Complainant obtained its first registration for the RIESS trade mark, and many decades after the Complainant first began using the mark in its business;
(b) the Respondent has been using the Disputed Domain Name to sell products that directly compete with the Complainant’s business;
(c) the website to which the Disputed Domain Name resolves features a large amount of content that has been copied from the Complainant’s website, and the website also claims that the Respondent has won the same awards as those of the Complainant; and
(d) the Disputed Domain Name is confusingly similar, both phonetically and visually, to the Complainant’s RIESS mark.
Based on the above, the Panel believes that the Respondent registered and is using the Disputed Domain Name with the intent of trading on the reputation of the Complainants RIESS marks to intentionally attempt to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s RIESS marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, for commercial gain.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied. 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 be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: December 23, 2015
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