The Complainant is Ralph Anderl of Berlin, Germany, represented by Habermann, Hruschka & Schnabel, Germany.
The Respondent is Yang Mingfeng of Zhequ, China.
The disputed domain name <icberlin8.com> (“the Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on April 10, 2013. On April 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 11, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2013.
The Center appointed Karen Fong as the sole panelist in this matter on May 22, 2013. 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 the owner or co-owner of the trade marks “ic”, “ic!”, “ic! berlin” “ic!-berlin” and the curved slit device mark (“Logo”). These trade marks are registered all over the world including China. The earliest trade mark registration filed in evidence dates back to 1997. The trade marks are licensed exclusively to the German company “ic! Berlin brillen GmbH”, a manufacturer of designer spectacles and sunglasses sold under the brand “ic! berlin” (‘the Trade Mark”).
The Respondent is based in China and registered the Domain Name on June 28, 2012. The Domain Name is connected to a Chinese website offering for ic! berlin eyewear (“the Website”). The Website bears the Trade Mark and Logo.
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
The Respondent has no rights or legitimate interests in respect of the Domain Name; and
The Domain Name was registered and is being used in bad faith.
The Panel is satisfied that the Complainant has established that it’s rights to the Trade Mark.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name is made up primarily of the Trade Mark without the exclamation mark after “ic”. The Panel understands that there is an issue with having exclamation marks in a URL. The addition of the number ‘8’ in the Domain Nameword “eyewear” does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
The Complainant contends that it has not authorized the Respondent to register and use the Domain Name. The Respondent is not known to the Complainant. The Website provides the contact details of a company through which the “ic! Berlin” spectacles may be ordered wholesale or. This is not the Complainant’s authorized retailer in China. As such, the products are likely to be counterfeit. The Panel also notes that the Website suggests that the owner of the Website has its own factories where the “ic! Berlin” spectacles are produced. However it does not clearly state what its relationship is with the Complainant. This suggests that the products on sale are not genuine products. There can be no legitimate interest in the sale of counterfeits (see Wellquest International, Inc. v. Nicholas Clark - WIPO Case No. 2005-0552 and Farouk Systems, Inc v. QYM- WIPO Case No. D2009-1572).
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
To succeed under the Policy, a Complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Trade Mark when it registered the Domain Name. The Complainant has provided sufficient evidence that the Domain Name registration post dates the registration of the Trade Mark. The very incorporation of the Trade Mark in the Domain Name and the display of the Trade Mark, Logo and counterfeit products on the Website confirm the Respondent’s awareness of the Trade Mark.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The products offered for sale on the Website appear to be counterfeit for reasons set out in paragraph 6C. The use by a respondent of a domain name which includes a trade mark to resolve to a website which offers and sells counterfeit products under that trade mark is evidence of bad faith registration and use. (See Burberry Limited v Jonathan Schefren, WIPO Case No. D2008-1546 and Prada SA v Domains for Life, WIPO Case No. 2004-1019).
In addition, the Website was set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. The Complainant’s Trade Mark and Logo appear on the Website and the products sold are counterfeit products bearing the Trade Mark.
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s website is and the products sold on it are those of or authorised or endorsed by the Complainant.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
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 <icberlin8.com> be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: June 5, 2013