The Complainant is Staedtler Mars GmbH & Co. KG of Nuremberg, Germany, represented by Bettinger Scheffelt Kobiako von Gamm, Germany.
The Respondent is Dmitry Ponomarenko of Kharkov, Ukraine.
The disputed domain name <mirfimo.com> is registered with Wild West Domains, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2016. On December 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2017.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on January 31, 2017. 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.
The Complainant is an international supplier of writing, coloring, drawing and creative products of Nuremberg, Germany. The Complainant is the producer of Fimo, a polymer clay used by hobbyists and professionals for many purposes. Fimo is an original oven-cured modelling clay which was invented, developed and manufactured in Germany.
The Complainant is the owner of, among others, the following trademark registrations:
- International trademark registration No. 399781 for FIMO registered on June 9, 1973 to cover goods in class 16;
- International trademark registration No. 557323 for FIMO registered on January 12, 1990 to cover goods in classes 2, 14, 16;
- International trademark registration No. 979597 for FIMO registered on March 27, 2008 to cover goods in classes 2, 4, 9, 11, 14, 16, 20, 21, 26, 28 and 35.
The disputed domain name was registered on December 3, 2010. It resolves to a website in Russian offering various clay products under the mark FIMO and/or its Cyrillic transliteration.
On August 13, 2015, the Complainant sent a cease-and-desist letter to the Respondent. The Respondent did not reply to this letter.
Firstly, the Complainant contends that the disputed domain name is confusingly similar to the FIMO mark since the disputed domain name fully incorporates the trademark. According to the Complainant, the addition of a descriptive word “mir” which is the Russian term for “world” does not lessen the inevitable confusion of the disputed domain name with the Complainant’s trademark. The Complainant explains that “fimo” is not a dictionary word as it was created based on the name used by Sophie Rehbinder-Kruse who developed her first modelling clay kit in 1954 and called it “Fimoik”. “Fimoik” is a combination of the first two letters of her nickname “Fifi”, “modelling clay”, and the final letters of “mosaic” (“mosaik” in German). The brand was later acquired by the Complainant’s predecessor-in-interest and renamed “Fimo”.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It further contends that the Respondent is neither a dealer, reseller, nor other sales agent of the Complainant’s FIMO products. According to the Complainant, it has neither licensed nor otherwise permitted the Respondent to use any of its trademarks. The Complainant also claims that there is also no other evidence of the Respondent’s use, or demonstrable preparations to use the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. The Complainant emphasizes that the website available under the disputed domain name offers for sale various clay products trademarked with the FIMO mark (or its Cyrillic transliteration) but none of these products are original FIMO products.
Thirdly, the Complainant submits that the disputed domain name has been registered and is being used in bad faith by the Respondent. In particular, the Complainant contends that the Respondent selected the disputed domain name in order to impermissibly capitalize on the goodwill and reputation of the Complainant’s marks through the creation of Internet user confusion. According to the Complainant, the strong association between the FIMO mark with the selling of clay products and the selection by the Respondent of the disputed domain name confuses Internet users into believing that there exists some connection or affiliation with, or endorsement or sponsorship of the disputed domain name by, the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the respondent in bad faith.
The requested remedy may only be granted if the above criteria are met.
The disputed domain name consists of two parts: “mirfimo” and “.com”. It is a common view that the Top-Level Domain “.com” can be disregarded for purpose of the first element of the Policy.
The first part of the disputed domain name fully incorporates the FIMO mark. The word “mir” is a descriptive element and does not prevent the disputed domain name from being confusingly similar with the Complainant’s mark (See Deutsche Lufthansa AG v. John L, WIPO Case No. D2011-0818).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the FIMO mark and as a consequence, the Complainant meets the requirement of paragraph 4(a)(i) of the Policy.
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP 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 the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use the FIMO mark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, in particular, the use of the disputed domain name to create a website offering what appear to be counterfeit products under the Complainant’s mark cannot be qualified as a bona fide offering of goods or services.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, the disputed domain name was registered on December 3, 2010 and it incorporates the FIMO mark, which was registered years before and is commonly known worldwide. In the Panel’s opinion, the notoriety of the FIMO mark and the similarity of the disputed domain name with the mark itself and the domain name owned by the Complainant, together with the use to which the disputed domain name was subsequently put, indicates that the Respondent knew about the Complainant’s rights when registering the disputed domain name.
Secondly, the Respondent has also used the disputed domain name in bad faith which is evidenced by the fact that the website that it resolves to offers products under the Complainant’s mark which do not appear to be original (See, e.g., Mattel, Inc. v. Magic 8 ball factory, WIPO Case No. D2013-0058). Moreover, the Panel finds that the Respondent’s failure to answer the Complainant’s cease-and-desist letter can be taken into account in a finding of bad faith.
As the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, or endorsement of or affiliation with the website, the Panel finds bad faith pursuant to paragraph 4(b)(iv) of the Policy, and the third element of paragraph 4(a) of the Policy to be fulfilled.
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 <mirfimo.com> be transferred to the Complainant.
Piotr Nowaczyk
Sole Panelist
Date: February 5, 2017