The Complainant is Ralph Anderl of Berlin, Germany, represented by Habermann, Hruschka & Schnabel, Germany.
The Respondent is Kui Jiangqiang of Xiangyang, Hubei Province, China.
The disputed domain name <ici-berlin.com> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 2, 2014. On May 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 6, 2014, 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 May 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 28, 2014.
The Center appointed Lynda M. Braun as the sole panelist in this matter on June 2, 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.
The Complainant is owner or co-owner of trademarks including IC, IC!, IC! BERLIN, IC-BERLIN and a design mark with a curved slit (the "IC! BERLIN Marks"), which are registered throughout the world, including China, in which the Respondent resides. The IC! BERLIN Marks are licensed exclusively to the German company ic! Berlin brillen GmbH, which manufactures designer eyeglasses, sunglasses and related parts and accessories sold under the IC! BERLIN Marks. The Complainant is the Managing Director of ic! Berlin brillen GmbH, which has an official website at "www.ic-berlin.de" that markets and sells sunglasses bearing the registered IC! BERLIN Marks.
The Respondent registered the Disputed Domain Name <ici-berlin.com> on September 3, 2013. The Disputed Domain Name resolves to a website that markets and sells sunglasses and related products bearing the IC! BERLIN Marks.
The Complainant submits that its eyeglasses are internationally famous and have been honored with several design awards. The Complainant licenses the IC! BERLIN Marks exclusively to ic! berlin brillen GmbH, which uses them extensively in connection with the design, development, manufacture, sale and marketing of eyeglasses, sunglasses, eyeglass frames, eyeglass cases and lenses.
The Complainant contends that the Disputed Domain Name is confusingly similar to the IC! BERLIN Marks.
In addition, the Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has not licensed the Respondent to use the IC! BERLIN Marks and alleges that the glasses on the Respondent's website appear to be counterfeit. Furthermore, the Complainant states that the Respondent is not known to the Complainant and is not an authorized dealer of the Complainant. Finally, the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith because it is disrupting the Complainant's business and deceiving the Complainant's customers. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the IC! BERLIN Marks based on longstanding use and its numerous international trademark registrations for the IC! BERLIN Marks. The Disputed Domain Name <ici-berlin.com> consists of the letters "ici", followed by the geographic designation "berlin" connected by a hyphen, and followed by the generic top-level domain ("gTLD") ".com".
The Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant's IC! BERLIN Marks. First, the absence of the exclamation point is immaterial for purposes of the Policy. In fact, the use of the exclamation point in the Disputed Domain Name is easily associated with the letter "i". The omission of the exclamation point from the Disputed Domain Name is irrelevant since exclamation points are not permitted in domain names. Moreover, even if an exclamation point were permitted, its absence would not sufficiently differentiate the Complainant's mark from the Disputed Domain Name. See Brett Habenicht v. Plantation Coffee Roasters, Inc., WIPOCase No. D2003-0770 (since "javajava" in the domain name differs from the Complainant's trademark JAVA! JAVA! only by the omission of the exclamation points, the absence of punctuation does not alter the fact that the domain name is identical to the trademark.).
Second, the presence of a hyphen cannot on its own avoid a finding of confusing similarity. Six Continents Hotels, Inc. v. Helen Slew, WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown Inc., WIPO Case No. D2003-0214 (hyphens do not "serve to dispel Internet user confusion here")); Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281 ("[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY").
Third, the addition of the capital city "berlin" does not diminish, but rather adds to the confusing similarity between the Disputed Domain Name and the Complainant's IC! BERLIN Marks. See Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (a domain name incorporating a well-known trademark combined with a geographically descriptive term is confusingly similar to the trademark); Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438 (the addition of the term "korea" in <ikea-korea.com> does not prevent the domain name from being confusingly similar to the Complainant's trademark).
Finally, the addition of a gTLD such as ".com" in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Complainant submits that the Respondent is not a licensee, an authorized agent of the Complainant or in any other way authorized to use the Complainant's IC! BERLIN Marks. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case. Furthermore, there is no evidence in the record that the Respondent is in any way associated with the Complainant, that the Respondent is now or was ever known by the Disputed Domain Name, or that the Respondent has other authority, license or permission to use the IC! BERLIN Marks. Rather, the Respondent is using the Disputed Domain Name to offer for sale, without the Complainant's authorization, products bearing the IC! BERLIN Marks that are likely counterfeit according to the Complainant's unrebutted allegation.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
The Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's IC! BERLIN Marks as to the source, sponsorship, affiliation or endorsement of the Respondent's website. The Respondent's registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its IC! BERLIN Marks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 ("[t]he only plausible explanation for Respondent's actions appears to be an intentional effort to trade upon the fame of Complainant's name and mark for commercial gain" and "[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law").
Second, the Respondent's action of registering the Disputed Domain Name and using it to direct Internet traffic to its website evidences a clear intent to disrupt the Complainant's business, deceive customers and trade off the Complainant's goodwill by creating an unauthorized association between the Respondent and the Complainant's IC! BERLIN Marks. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. The sale of goods bearing the Complainant's IC! BERLIN Marks also constitutes an attempt to disrupt the Complainant's business by attracting potential customers of the Complainant's products and offering lower cost, and potentially counterfeit, products to them instead.
Third, the Respondent knew or should have known of the Complainant's rights in its IC! BERLIN Marks when registering the Disputed Domain Name. The Complainant's IC! BERLIN Marks are well known and widely used. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its IC! BERLIN Marks when registering the Disputed Domain Name or creating its website. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (a finding of bad faith may be made where Respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the domain name).
Therefore, based on the foregoing, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in bad faith and need not reach the issue of whether or not the Respondent has engaged in selling counterfeit goods on the website to which the Disputed Domain Name resolves.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <ici-berlin.com> be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: June 4, 2014