WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ARP Schweiz AG v. lchujuan lian

Case No. D2016-0086

1. The Parties

The Complainant is ARP Schweiz AG of Rotkreuz, Switzerland, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.

The Respondent is lchujuan lian of Guangzhou, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <arp-deutschland.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2016. On January 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2016.

The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on February 24, 2016. 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 distributor of IT hardware and software products, which provides its products and services to customers in Switzerland, Austria, Germany, France, Belgium and the Netherlands. It was founded in 1988 and has been, since 2004, a subsidiary of German Bechtle AG, one of Europe’s largest IT providers.

The Complainant offers its products throughout Europe in an online-shop on its website “www.arp.com”, where more than 36,000 articles can be purchased and ordered.

The Complainant is owner of several trademark registrations protecting the designation ARP, namely inter alia:

- International device trademark ARP number 410102, which enjoys protection in various European countries and, since 2012, also in China.

- Chinese registration G410102 ARP (figurative), which has been registered already in 2011 (see printout from the Chinese trademark register).

Apart from that, the designation “ARP” is also the dominant part of the company name of the Complainant “ARP Schweiz AG”, i.e. the business identifier. The incorporation of the Complainant has been registered under the designation ARP on July 11, 1990.

The Complainant’s mother company, Bechtle AG, is – amongst a large number of domain names incorporating the designation “ARP” – the owner of the domain names:

- <arp.de>

- <arp.com.tw>

- <arp.tw>

- <arp.international>

- <arp.asia>

- <arp.cz>

The disputed domain name <arp-deutschland.com> was created on April 19, 2011.

5. Parties’ Contentions

A. Complainant

a. The domain name is identical or confusingly similar to the Complainant’s trademark.

(Policy, paragraph 4(a)(i); Rules, paragraph 3(b)(ix)(1))

The disputed domain name <arp-deutschland.com> is clearly confusingly similar to the Complainant’s marks as it fully incorporates the Complainant’s marks and trade name “ARP” and combines it with a generic, geographical term – the element “deutschland”, i.e. Germany. This suffix “deutschland” will thus not be perceived by the relevant public as a difference, eligible to distinguish the Respondent or the goods and services offered under the disputed domain name from the Complainant. To the contrary, the relevant public might get the impression that the domain name is intended to identify the Complainant’s business in Germany – where the parent company of the Complainant, Bechtle AG is located.

The Complainant relies on Deutz AG v. su su xiaoji, WIPO Case No. D2015-0272.

It is settled case law that the addition of a geographical wording to a trademark in a domain name is insufficient to avoid confusing similarity under the first element of the UDRP (paragraph 4(a)(i) of UDRP).

b. The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2))

The Complainant has not found that the Respondent has any registered trademarks or trade names or even personal names corresponding to the designation “ARP” or the disputed domain name <arp-deutschland.com>. Neither the name of the Respondent, nor the name of the entity promoting goods and services under the disputed domain name is in any way related to the term “ARP”.

In addition, no license or authorization of any other kind has been given by the Complainant to the Respondent to use the designation ARP and/or <arp-deutschland.com>.

The mere registration of a domain name does not give the owner a right or legitimate interest in respect of the domain name.

c. The domain name was registered and is/are being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Respondent has registered and is using the disputed domain name in bad faith. The Respondent intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website (paragraph 4(b)(iv) of UDRP) and also primarily for the purpose of disrupting the business of a competitor (paragraph 4(b)(iii) of UDRP).

1. Registration in bad faith

When registering the disputed domain name, Respondent was clearly aware of the prior rights of the Complainant in the ARP trademarks, which have been registered well before the registration of the disputed domain name.

In particular, the Complainant is also the registered owner of trademark rights in the designation “ARP” in China, where the Respondent is based. Further, account has to be taken of the fact that the Respondent (being based in China) uses a domain name explicitly referring to Germany, where the Complainant is doing business and where the parent company of the Complainant (Bechtle AG) is located.

Under these circumstances, there is no doubt that the Respondent was aware of the Complainant’s rights in the mark ARP at the time of the registration of the disputed domain name and, therefore acted in bad faith.

2. Actual use in bad faith

The Respondent actually also uses the disputed domain name in bad faith, for the following reasons:

The disputed domain name initially resolved to a website related to ARP, more or less copying the web presence of the Complainant and creating the false impression that this website was in fact the original website of the Complainant. It looked as if IT services in various countries, i.e., Switzerland, Germany and Austria were offered by the Complainant.

Today the disputed domain name does not resolve to an active website.

However, the Respondent does in fact use the disputed domain name for bad faith purposes:

It has come to the Complainant’s attention that the Respondent used the disputed domain name as a business identifier in order to mislead potential business contacts and to create confusion as to the identity, origin and background of the people involved and their related business.

The Complainant produces a copy of a business card on which a ARP logo is reproduced, with the additional word element “IT ZUBEHÖR” (IT accessories, in English) the name “[K] Riegert”, the correct address, telephone and fax-number of the German affiliate of the Complainant and the email address […]@arp-deutschland.com.

However, the Respondent has chosen the name “[K] Riegert” in order to even strengthen the false impression that there is in fact a real relation between Mr. Riegert and the Complainant. This is because there also exists a German company called ARP GmbH & Co. KG, which is active in the recycling industry and not at all related to the Complainant. The director (and founder) of that company is in fact a Mr. [K] Riegert.

This is evidence that the name “[K] Riegert” on the name card is used for a reason, namely to, again, mislead any potential business contacts. People who might not know whether Mr. Riegert is in fact related to the Complainant or to ARP GmbH will simply put his name in a search engine (Google or other) in order to confirm whether Mr. Riegert is working for ARP. They will then get some search results, which look as confirming that there actually is such a connection.

The email address “[…]@arp-deutschland.com” was indeed used for sending fake e-mails to business contacts of the Complainant, asking to send a pricelist for full range of “USB Type C” products, the entire electronic catalog and a company presentation in PowerPoint format.

There is a risk that the so-called “Mr. Riegert” will place orders with third parties in the name of ARP GmbH and have invoices for such orders sent to ARP GmbH to the address identified in its fake emails, which is the Complainant’s address.

This is also to be considered as an attempt to get the sensitive business information on suppliers.

All these circumstances are clear and obvious evidence that the disputed domain name is used to create a likelihood of confusion with the Complainant’s business and also used for the purpose of disrupting the business of the Complainant as well as of direct competitors.

Concerning the use of a domain name as part of an email address which is meant to mislead and confuse the recipients of those emails, is to be considered as an act of bad faith. The Complainant relies on the Wort & Bild Verlag Konradshöhe GmbH & Co. KG v. Andreas Bergmann, WIPO Case No. D2009-1442 and Nokia Corporation v. durmus dalda, WIPO Case No. D2006-0931.

The same is true for the case at hand, where the disputed domain name is used to confuse customers or suppliers as to the identity and origin of the sender of the emails, for commercial gain and to disrupt a competitor.

B. Respondent

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

6. Discussion and Findings

To prevail in the proceedings under the Policy, the Complainant must show that the three requirements set forth in paragraph 4(a) of the Policy are met. Those requirements are:

(i) the 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 domain name; and

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

Likewise, under paragraph 4(c) of the Policy, the Respondent can demonstrate its rights and legitimate interests in the disputed domain name in its response to the Complaint by proving, among others, the circumstances mentioned under this paragraph of the Policy.

A. Identical or Confusingly Similar

The Complainant has clearly established rights in the ARP trademark.

The disputed domain name <arp-deutschland.com> entirely reproduces the Complainant’s trademark ARP, with the mere adjunction of “deutschland” meaning Germany.

It may confuse Internet users into thinking it is the Complainant’s business in Germany.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The condition of paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

As set forth by paragraph 4(c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name for purposes of paragraph 4(a)(ii):

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

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it 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 did not respond to the Complaint. Consequently it did not provide any evidence or circumstances to establish that it has rights or legitimate interests in the disputed domain name, according to paragraph 4(c) of the Policy.

In the circumstances of this case, the Panel finds that this constitutes a clear acknowledgment that it has no rights or legitimate interests in the disputed domain name.

No registered ARP trademark was found in the name of the Respondent.

The Respondent has not been licensed or authorized to use the name ARP or to register the disputed domain name.

There are converging facts that prove the absence of rights or legitimate interests:

- the false business card;

- the emails sent to the Complainant’s business contacts asking to provide sensitive information.

These elements demonstrate clearly a fraudulent scheme, which does not establish rights or legitimate interests in the disputed domain name.

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

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of the bad faith registration and use of a domain name. It provides that:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

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

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

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

1. Concerning bad faith registration of the disputed domain name

The Panel finds that the Respondent was aware of Complainant’s rights on the ARP trademarks when registering the disputed domain name.

The Complainant proves that the disputed domain name has been registered primarily for the purpose of defrauding the Complainant’s business contacts into revealing sensitive information, and to disrupt the Complainant’s business.

Therefore the Panel finds that the disputed domain name was registered in bad faith.

2. Concerning bad faith use of the disputed domain name

The Complainant made a prima facie case that the registrant of the disputed domain name is fraudulently using the disputed domain name with the email address “[…]@arp-deutschland.com”, which is found by the Panel to constitute bad faith use of the disputed domain name.

Based on the case file, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith, for disrupting the Complainant’s business and for creating a likelihood of confusion with the Complainant’s mark in order to mislead third parties and to fraudulently obtain sensitive and confidential information.

This is bad faith use in the meaning of paragraph 4(b)(iii) and (iv) of the Policy.

Therefore, the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant.

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 <arp-deutschland.com> be transferred to the Complainant.

Marie-Emmanuelle Haas
Sole Panelist
Date: March 11, 2016