WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Beiersdorf AG v. Beiersdorf & Eunon Federation, Charles Tan

Case No. D2013-1939

1. The Parties

The Complainant is Beiersdorf AG of Hamburg, German, represented internally.

The Respondent is Beiersdorf & Eunon Federation, Charles Tan of Manila, Philippines.

2. The Domain Name and Registrar

The disputed domain name <beiersdorf-eu.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2013. On November 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 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 November 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2013.

The Center appointed William R. Towns as the sole panelist in this matter on December 20, 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.

4. Factual Background

The Complainant is a leading provider of cosmetics, skincare and medical products and related goods and services. Founded in Germany in 1822, the Complainant has long used the mark BEIERSDORF as an indication of the source of its products, and has secured valid and subsisting trademark registrations for BEIERSDORF in the European Union and in some 170 countries around the world, including the Philippines, the apparent domicile of the Respondent. The Complainant maintains an official website at “www.beiersdorf.com”, and owns a number of other domain names incorporating the BEIERSDORF mark.

The Respondent registered the disputed domain name <beiersdorf-eu.com> on September 5, 2013. The disputed domain name does not currently resolve to an active website, but there is evidence in the record that the disputed domain name has been used to create fictitious email addresses used by a person or persons masquerading as a corporate representative of the Complainant, with the aim of defrauding several recruitment contractors, who mistakenly believed they were providing services at the request of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s BEIERSDORF mark, as it incorporates the Complainant’s mark in its entirety. The Complainant notes that “EU” is a common abbreviation for “European Union”, which would suggest that the disputed domain name has been registered by a branch or subsidiary of the Complainant located within the European Union.

The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name, asserting that the Respondent has no trademark rights in BEIERSDORF and has not been authorized by the Complainant to use the mark. The Complainant contends that the Respondent has not made any legitimate use of the disputed domain name, but instead is using the disputed domain name as part of an extensive scam.

The Complainant submits evidence that the Respondent has used the disputed domain name to create what would appear to be email addresses for employees of the Complainant – citing as one example the email address […]@beiersdorf-eu.com¹ – which the Respondent used to approach several large recruitment contractors in the United Kingdom. According to the Complainant, the Respondent posed as the Complainant and solicited the recruitment contractors to engage and place highly qualified and highly remunerated candidates on behalf of the Complainant in Asia. In addition to other services, the recruitment contractors paid the appointees’ salaries for several weeks, learning of the deception only after invoicing the Complainant for payment.

The Complainant explains that the Respondent redirected the disputed domain name to the Complainant’s official website, creating the impression that the disputed domain name was being used by the Complainant as a sub-domain in order to allay concerns whether the email sender was in fact an employee of the Complainant. The Complainant submits that the Respondent thus misled the recruiters and induced the recruiters to provide salaries to the fictitious appointees, unaware that the monies were in fact going to the Respondent. The Complainant maintains that the foregoing establishes the Respondent’s registration and use of the disputed domain name in bad faith within the meaning of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that for purposes of paragraph 4(a)(i) of the Policy the disputed domain name is confusingly similar to the Complainant’s BEIERSDORF mark, in which the Complainant has established rights through registration and use. In considering the question of identity or confusing similarity, the first element of the Policy stands essentially as a standing requirement.² The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this instance, the disputed domain name incorporates the Complainant’s BEIERSDORF mark in its entirety, and the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark. In the Panel’s view, the confusing similarity of the disputed domain name to the Complainant’s mark is not overcome by the addition letters “eu”, a commonly used abbreviation for the European Union.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain name is confusingly similar to the Complainant’s mark. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark. The Respondent has used the disputed domain name in furtherance of an apparent scheme to defraud recruitment contractors by masquerading as the Complainant.

Pursuant to paragraph 4(c) of the Policy, the Respondents may establish rights or legitimate interests in the disputed domain names by demonstrating any of the following:

(i) before any notice to it 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 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 the Respondent has acquired no trademark 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 trademark or service mark at issue.

The Respondent has not submitted a formal Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.

Based on the record before the Panel, the Respondent clearly had the Complainant’s BEIERSDORF mark in mind when registering the disputed domain name. The Panel finds that the Respondent registered the disputed domain name in order exploit and profit from the Complainant’s rights through the perpetration of a fraudulent scheme. There is no evidence of the Respondent’s use of the disputed domain name in connection with a bona fide offering of goods or services, or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or that the Respondent has been commonly known by the disputed domain name, or authorized to use the Complainant’s mark. To the contrary, the record convincingly shows that the Respondent has no rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

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

(ii) circumstances indicating that the respondent registered the 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. It is clear from the relevant circumstances that the Respondent was aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain name. The record evinces that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on or otherwise take advantage of the Complainant’s rights, in furtherance of a fraudulent scheme. In view of all of the foregoing, the Panel concludes that the Respondent registered and has used the disputed domain name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <beiersdorf-eu.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: January 2, 2014

¹ This email address was used to contact recruitment contractors by a person holding himself out as the “Talent Acquisition Team Leader” for Beiersdorf UK.

² See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.