Complainant is C. Sülberg Agrisolutions GmbH, Germany, represented by UBILIBET, Spain.
Respondent is Okorukwu Christine, Germany.
2. The Domain Name, Registry and RegistrarThe Registry of the disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2021. On August 5, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On August 6, 2021, the Registry 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 Complainant on September 3, 2021, providing the registrant and contact information disclosed by the Registry, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 10, 2021.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 10, 2021. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was October 22, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 24, 2021.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on November 1, 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 ADR Rules, Paragraph B(5).
4. Factual BackgroundComplainant is a company registered and organized under the laws of Germany whose business, inter alia, is the production of steel fingers and a large number of forged components.
Complainant has evidenced to be the registered owner of various trademarks relating to its company name and brand “SÜLBERG”, inter alia, the following with protection for the territory of Germany:
- Word/device mark SÜLBERG, German Patent and Trademark Office, registration number: DD652441, registration date: March 4, 1993, status: active.
Moreover, Complainant has demonstrated to own various domain names relating to its SÜLBERG trademark, including the domain names
Respondent, according to the disclosed WhoIs information for the disputed domain name, is a resident of Germany who registered the disputed domain name on July 2, 2021. Complainant has substantiated that at some point before the filing of this Complaint, the disputed domain name redirected to a website offering adult content.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions A. ComplainantComplainant contends that it was founded back in 1870 and that nowadays its SÜLBERG trademark enjoys worldwide recognition in Complainant’s business sector.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s SÜLBERG trademark as it incorporates the latter in its entirety, and the addition of the word “carl” and a hyphen is not enough to distinguish the disputed domain name from Complainant’s SÜLBERG trademark, but is rather even more confusing as the term “carl” refers to Complainant’s company founder. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has not authorized, licensed or otherwise permitted Respondent to use its SÜLBERG trademark, (2) Respondent apparently is neither commonly known by the disputed domain name nor does it enjoy any rights relating to the name “Sülberg” on its own, (3) Respondent apparently is neither using the disputed domain name for a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose, but e.g. in order to attract Internet users to its pornographic website and, thereby, tarnishing Complainant’s SÜLBERG trademark. Finally, Complainant argues that Respondent has registered and/or is using the disputed domain name in bad faith since (1) resolving the disputed domain name to an adult content website is disrupting Complainant’s business, since many customers still have in mind what had been shown under the disputed domain name in the past when it belonged to Complainant, and (2) Respondent obviously also runs the adult content website under the disputed domain name for commercial gain.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsPursuant to Article 21(1) of EU Regulation 874/2004 as well as Paragraph B11(d)(1) of the ADR Rules, it is for Complainant to establish:
(i) why the disputed domain name is identical or confusingly similar to the name r names in respect of which a right or rights are recognized or established by national and/or European Union law (as specified and described in accordance with Paragraph B1(b)(9)); and, either
(ii.) why the disputed domain name was registered by Respondent without rights or legitimate interests in the disputed domain name; or
(iii) why the disputed domain name should be considered as having been registered or being used in bad faith.
A. Identical or Confusingly Similar to a name or names in respect of which a right or rights are recognized or established by national and/or European Union lawThe Panel concludes that the disputed domain name is confusingly similar to the SÜLBERG trademark, of which Complainant has proven to be the registered owner, which enjoys protection for the territory of Germany as part of the European Union, and which was also registered well before the disputed domain name.
The disputed domain name, in turn, incorporates the SÜLBERG trademark in its entirety. Numerous UDRP1 panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview 3.0, section 1.8), that the addition of other terms (whether e.g. descriptive or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP and the ADR Rules, respectively. Accordingly, the addition of the term “carl”, which even points to Complainant’s company founder Carl Sülberg, does not prevent a finding of confusing similarity arising from the incorporation of Complainant’s SÜLBERG trademark in the disputed domain name.
Therefore, the Panel holds that the requirements of Paragraph B11(d)(1)(i) of the ADR Rules are met.
B. No Rights or Legitimate InterestsPursuant to the ADR Rules, Paragraph B11(d)(1)(ii), it is further up to Complainant to plead and prove accordingly that the disputed domain name has been registered by Respondent without rights or legitimate interests therein. The ADR Rules contain in Paragraph B11(e) a non-exhaustive list of case scenarios suitable to prove rights or legitimate interests of a respondent, namely in particular if a respondent has used the disputed domain name or a name corresponding thereto in connection with the bona fide offer of goods or services prior to the notice of the dispute or has made demonstrable preparations in this direction (Paragraph B11(e)(1) of the ADR Rules). Inasmuch as it is typically difficult to prove a negative fact (here the absence of rights or legitimate interests), it is in line with the majority view of UDRP panels as well as under the ADR Rules that it is sufficient if Complainant establishes a so-called prima facie case. This results in a shifting of the burden of proof and it is then up to Respondent to present and prove that there are corresponding rights or legitimate interests in the disputed domain name (see for example Lidl Stiftung & Co. KG v. Name Redacted,WIPO Case No. DEU2018-0012).
Respondent has neither been granted a license nor has it been otherwise authorized by Complainant to use its SÜLBERG trademark, either as a domain name or in any other way. Moreover, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any (trademark) rights associated with the term “Sülberg” on its own. Also, it is undisputed that at some point before the filing of the Complaint, the disputed domain name resolved to a website offering adult content for commercial gain; doing so may not qualify as using the disputed domain name for a legitimate noncommercial or fair purpose within the meaning of the ADR Rules.
Finally, this Panel concludes that Respondent obviously so far has not used the disputed domain name in connection with a bona fide offering of goods or services as set forth by Paragraph B11(e)(1) of the ADR Rules. This is mostly because (1) the disputed domain name apparently has belonged for years to Complainant, and has been used in connection with Complainant’s well-reputed business under the SÜLBERG trademark, (2) Respondent could only get hold of the disputed domain name because it was unintentionally deleted due to a renewal failure and subsequently snapped up by Respondent, and (3) the website under the disputed domain name offering adult content for commercial gain apparently did not show any relation whatsoever to the terms “Carl” and/or “Sülberg” in a context unrelated to Complainant’s SÜLBERG trademark or its company founder. Against this background, it is much more likely than not that Respondent used the disputed domain name to offer adult content related services, thereby aiming to somehow profit from the undisputed reputation that Complainant’s business and SÜLBERG trademark enjoys, which may not qualify as bona fide within the meaning of the ADR Rules.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden.
Therefore, the Panel finds that the disputed domain name was registered by Respondent without any rights or legitimate interests therein, which is why the requirements of Paragraph B11(d)(1)(ii) of the ADR Rules are met, too.
C. Registered or Used in Bad FaithFor the sake of completeness, the Panel, in addition, holds that the disputed domain name also has been registered or is being used in bad faith.
As described above, Respondent uses the disputed domain name, which is (1) confusingly similar to Complainant’s SÜLBERG trademark and (2) directly points to Complainant who has owned and used the disputed domain name for many years in connection with its well-reputed business, to run a website offering adult content that is totally unrelated to the terms “Carl” and “Sülberg” contained in the disputed domain name. Doing so, allows no other conclusion but that the disputed domain name was intentionally used by Respondent to attract Internet users, for commercial gain, to Respondent’s own website, by creating a likelihood of confusion with Complainant’s SÜLBERG trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which is a clear indication of bad faith within the meaning of Paragraph B11(f)(2)(iii) of the ADR Rules.
Accordingly, the Panel finds that the requirements of Paragraph B11(d)(1)(iii) of the ADR Rules are met, too.
7. DecisionFor the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name
Stephanie G. Hartung
Sole Panelist
Date: November 18, 2021
1 Noting the similarities between the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) and the ADR rules, the Panel has referred to prior UDRP cases and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where appropriate.
2 The decision shall be implemented by the Registry within thirty (30) days after the notification of the decision to the Parties, unless the Respondent initiates court proceedings in a Mutual Jurisdiction, as defined in Paragraph A(1) of the ADR Rules.