WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ralph Anderl v. Zhuhai Luo

Case No. D2014-0707

1. The Parties

Complainant is Ralph Anderl of Berlin, Germany, represented by Habermann, Hruschka & Schnabel, Germany.

Respondent is Zhuhai Luo of Shenzhen, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <icberlinonline.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2014. On April 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On May 9, 2014, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On May 9, 2014, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.

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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 6, 2014.

The Center appointed Yijun Tian as the sole panelist in this matter on June 13, 2014. 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

Complainant, Ralph Anderl, is the managing director of a German company ic! berlin brillen GmbH, incorporated in Berlin, Germany. Complianant’s company is a manufacturer of designer spectacles and sunglasses sold under the brand Ic! Berlin.

Complainant is owner or co-owner of several trademarks with respect to IC, IC!, IC! BERLIN and IC!-BERLIN (hereafter the “IC! BERLIN” Marks) and with respect to a device mark (curved slit) throughout the world (Annex II to the Complaint), including the Chinese Trademark No. 1670323, registered in November 2001 (Annexes II-l and II-m to the Complaint). The trademarks are exclusively licensed to Complainant’s company (as mentioned above). The spectacles sold under the trademark IC! BERLIN are famous in the world and have been awarded with several design awards.

Respondent is Zhuhai Luo of Shenzhen, Guangdong, China. The disputed domain name <icberlinonline.com> was registered on February 6, 2014, long after the IC! BERLIN Marks were registered.

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

Complainant is owner or co-owner of several trademarks with respect to IC, IC!, IC! BERLIN and IC!-BERLIN and with respect to a device mark (curved slit) throughout the world (Annex II to the Complaint).

There also exists trademark protection in China (Annexes II-l and II-m to the Complaint). The trademarks are exclusively licensed to the German company ic! Berlin brillen GmbH, a manufacturer of designer spectacles and sunglasses sold under the brand Ic! Berlin.

Complainant is the managing director of said company, which company extensively uses the trademarks (the device mark resembles the logo of the company) in connection with the design, development, make, sale and marketing of spectacles, sunglasses, spectacle frames, spectacle cases, spectacle glasses and spectacle temples (Annex III to the Complaint).

The spectacles sold under the ic! berlin Marks are famous in the world and have been awarded with several design awards.

The disputed domain name <icberlinonline.com> is identical or closely similar to the above-listed trademarks, respectively. In particular, the remaining domain parts differ typographically from said trademarks only by the exclamation mark which is due to the rules for URL names.

The part “berlin” denotes the German capital, so that close similarity to “ic” and “ic!” is existent as well. The term “online” is merely descriptive, as it refers to an online sales platform as such.

There exists such close similarity and even identity between the disputed domain name and the trademarks of Complainant that there will be likelihood of confusion among the relevant public.

Respondent also uses the company’s logo on the website to which the disputed domain name resolves (the “Website”) (Annex IV to the Complaint), so as to leave the impression that the site originally refers to Complainant’s company.

The Website is also directed to European, United Kingdom, German, Canadian, Australian and United States customers, in that on the Website the currency can be selected between Untied States dollars, Euros, Great Britain pounds, Canadian dollars and Australian dollars with corresponding shipping possibilities, so that beside infringement of the trademark rights in China Respondent unlawfully uses the United States, German, Australian and Community trademarks of Complainant as well.

(b) Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent does not use the disputed domain name to bona fide offer goods.

The spectacles offered on the Wessite are in a price range of USD 170, which for the respective models is below the retailer price offered by Complainant’s company.

The spectacles offered seem to be counterfeits of ic! berlin branded spectacles.

Respondent is not known to Complainant and is not an authorized dealer of Complainant’s company.

The disputed domain name was clearly registered with the only purpose to mislead possible consumers, which speaks for no legitimate interest in using the disputed domain name.

It was registered in bad faith with the aim to disrupt the business of Complainant’s company and to mislead possible consumers so as to acquire own commercial gain from selling counterfeit spectacles to consumers, who being led to the disputed domain name erroneously thinking that they will order genuine ic! berlin branded spectacles.

The fact of bad faith is further supported in that the Website clearly uses the same photographic material, as can be seen by a comparison of Complainant’s website (Annex III to the Complaint) and the website of Respondent (Annex IV to the Complaint).

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

The information and content presented under the disputed domain name <icberlinonline.com> is exclusively and entirely in English (Annex IV of the Complaint); no other language options which could have been selected by the user have been available, not even Chinese.

The currencies by which the offers are presented show Untied States dollars, Euros, Great Britain pounds, Canadian dollars and Australian dollars. Thus, the products offered via the Website are clearly directed to the English speaking markets.

The disputed domain name contains the English word “online” being descriptive for the services provided via the Website, namely online sales of spectacles of the alleged brand Ic! Berlin.

It is obvious that: (i) registration of the disputed domain name was done with the purpose to provide information in English only; (ii) the Website owner is conducting business (offering and sale of spectacles) in English only; (iii) no other language options have been presented on the Website, which speaks for the wish to correspond and communicate in English only; (iv) for payment, no Chinese currency has been presented, but only currencies of English speaking markets.

Therefore, it can be well assumed that the owner of the Website in question is well acquainted with the English language and it is quite reasonable to communicate with the owner also in English in such administrative proceedings.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“In certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. Munhyunja, WIPO Case No. D2003-0585).

The Panel has taken into consideration the fact that Complainant is a company from Germany, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the Website is in English and the disputed domain name includes the Latin characters “ic” and English words “berlin” and “online” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <icberlinonline.com> is registered in Latin characters and particularly in English language, rather than Chinese script; (b) the Website is an English-based website and Respondent is apparently doing business in English through this website (Annex IV to the Complaint); (c) the Website appears to have been directed to users around the world (particularly English speakers) rather than Chinese speakers. The currencies by which the offers are presented on the Website show Untied States dollars, Euros, Great Britain pounds, Canadian dollars and Australian dollars. Thus, the products offered via the Website are clearly directed to the English speaking markets; (d) the Center has notified Respondent of the proceeding in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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 in bad faith.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the IC! BERLIN Marks acquired through registration internationally. Complainant is owner or co-owner of several trademarks with respect to IC, IC!, IC! BERLIN and IC!-BERLIN and with respect to a device (curved slit) throughout the world (Annex II to the Complaint). The spectacles sold under the ic! berlin Marks are famous in the world and have been awarded with several design awards.

The disputed domain name <icberlinonline.com> comprises the IC! BERLIN Marks in their entirety except the exclamation mark (which is due to the rules for URL names). The disputed domain name only differs from Complainant’s trademark by the suffix of the term “online” to the IC! BERLIN Marks. This does not eliminate the confusing similarity between Complainant’s registered trademark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087).

Mere additions of the descriptive term “online” as a suffix to Complainant’s mark fails to distinguish. By contrast, it may increase the likelihood of confusion. Internet users may believe that the Website, which is resolved by the disputed domain name, is an online shop authorized or operated by Complainant.

Thus, the Panel finds that the additional suffix is not sufficient to negate the confusing similarity between the disputed domain name and the IC! BERLIN Marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii) 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 trademark or service mark at issue.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to Respondent to rebut Complainant’s contentions. If Respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG , DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the IC! BERLIN Marks globally, including Chinese trademark since 2001 – which long precede Respondent’s registration of the disputed domain name (February 6, 2014).

Respondent is not an authorized dealer of IC! BERLIN branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “ic berlin” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the IC! BERLIN Marks or to apply for or use any domain name incorporating the IC! BERLIN Mark and Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the IC! BERLIN Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the Website, potential partners and Internet users are led to believe that the Website “www.icberlinonline.com” is either Complainant’s site or a site of an official authorized partner of Complainant, which it is not.

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <icberlinonline.com> on February 6, 2014. The disputed domain name is confusingly similar to Complainant’s IC! BERLIN Marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported IC! BERLIN branded products at the Website “www.icberlinonline.com”.

The Panel finds that Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Website or location or of a product or service on the Website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and is using the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the IC! BERLIN Marks with regard to its products. Complainant has registered its IC! BERLIN Marks internationally, including the Chinese Trademark No. 1670323, registered in November 2001. Moreover, according to the information provided by Complainant, Respondent uses the disputed domain name for the offer of identical products (e.g. optical glasses) as apparent from the homepage resolved by “www.icberlinonline.com”. Respondent uses also on the homepage the trademarks of Complainant, namely the trademark “IC! BERLIN”. Moreover, Respondent uses wordings such as “ic!berlin eyewear , ic!berlin Neutor , ic!berlin Sunglasses , Cheap ic!berlin eyewear, Cheap ic!berlin Sunglasses”, and “Copyright © 2014 ic!berlin eyewear. Powered by ic!berlin eyewear” (Annex IV to the Complaint).

Respondent would not have advertised products purporting to be IC! BERLIN products on the Website if it was unaware of Complainant’s reputation. In other words, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name. The Panel therefore finds that the IC! BERLIN Marks are not ones that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s IC! BERLIN Marks.

b) Use in Bad Faith

Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Website offering Complainant’s IC! BERLIN branded products and services without authorization. Complainant claimed that the disputed domain name was registered in bad faith with the aim to disrupt the business of Complainant’s company and to mislead possible consumers so as to acquire own “commercial gain” from selling counterfeit spectacles to consumers, who being led to the disputed domain name erroneously thinking that they will order genuine IC! BERLIN branded spectacles.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Given the widespread reputation of the IC! BERLIN Marks (as well as the affiliation statement on the Website - mentioned above), the Panel finds that Internet users are likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Website. The Website uses the same photographic material, as can be seen by a comparison of Complainant's website (Annex III to the Complaint) and the website of Respondent (Annex IV to the Complaint). In other words, Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the IC! BERLIN Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the Website, potential partners and Internet users are led to believe that the Website “www.icberlinonline.com” is either Complainant’s site or a site of an official authorized partner of Complainant, which it is not. Moreover, Respondent has not responded to the Complaint. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the Website is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

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 <icberlinonline.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: June 20, 2014