The Complainant is Güde GmbH & Co. KG of Wolpertshausen, Germany, represented by Kleiner Rechtsanwälte Partnerschaftsgesellschaft mbB, Germany.
The Respondent is Shanshan Huang of Jiangsu, China.
The disputed domain name <wolpertech.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2017. On March 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2017, 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 proceedings commenced on March 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2017.
The Center appointed Mladen Vukmir as the sole panelist in this matter on April 27, 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 Panel has determined the following non-contested facts:
I. The disputed domain name was created on November 11, 2015 (Annex 1 to the Complaint);
II. The Respondent is the registrant of the disputed domain name (Annex 1 to the Complaint);
III. From the evidence submitted by the Complainant (Annex 6 to the Complaint) and by visiting the website under the disputed domain, it arises that the disputed domain name is used as a parking page with links to third-party websites, as well as that the disputed domain name is being offered for sale for an asking price of USD 5,500;
IV. The Respondent has been a party of at least two earlier UDRP proceedings (Annexes 8 and 9 to the Complaint).
V. The Complainant is the holder of a number of WOLPERTECH trademark registrations and applications (Annex 4 to the Complaint), particularly:
|
Trademark |
Trademark Office |
Registration number |
International classes |
Priority date |
Date of the registration |
|
WOLPERTECH (figurative) |
WIPO |
IR 1316414 |
07,09,11,12,17,20 |
November 11, 2015 |
May 3, 2016 |
|
WOLPERTECH (figurative) |
EUIPO |
014786875 |
7,9,11,12,17,20 |
November 11, 2015 |
April 26, 2016 |
|
WOLPERTECH (word) |
EUIPO |
015784168 |
7,9,11,12,17,20 |
August 25, 2016 |
January 6, 2017 |
VI. The Complainant is the registrant of the domain name <wolpertech.de> which is used as the Complainant’s official website (Annex 5 to the Complaint and inspecting the publicly available WhoIs records).
The Complainant, essentially, asserts that:
(i) The disputed domain name is identical or confusingly similar to the Complainant’s WOLPERTECH trademark, since:
- the Complainant is the owner of a number of WOLPERTECH trademarks registered in several jurisdictions;
- the Complainant is using its WOLPERTECH trademark for a wide range of products for DIY (do-it-yourself), particularly compressed air technique tools, garden technique appliances, wood and metal processing tools and cleaning appliances, as listed on the Complainant’s website operated under the domain name <wolpertech.de>;
- the figurative, stylized and/or designed elements in the Complainant’s WOLPERTECH trademark are incapable of representation in the disputed domain name, and therefore such elements are to be disregarded for the purpose of determining of identity or confusing similarity. Especially since the same WOLPERTECH trademark contains design elements, which do not play a predominant or distinctive role in the overall appearance of the trademark.
(ii) The Respondent has no right or legitimate interests in respect of the disputed domain name, and in
support of such claim contends that:
- the mere registration of the domain name does not by itself confer any rights or legitimate interests in the domain name, and in this regard, the Complainant refers to the decision adopted by the panel in ADAC e.V. v. Domain Administrator, Original Web Ventures Inc, WIPO Case No. D2013-0411;
- to the Complainant’s best knowledge, neither the word “wolpertech” nor the element “wolper” have any meaning in any language;
- there is no connection and there has never been any contact between the Complainant and the Respondent;
- the Complainant did not find evidence that would show the Respondent has used, or will use, the disputed domain name in good faith in order to offer goods or services or provide information of any kind;
- the Respondent is not known under the disputed domain name, as an individual or business, and he does not own any registered trademarks including the word “wolpertech”;
- the Respondent chose the word “wolpertech” maliciously and is not using the disputed domain in a legitimate and fair manner;
- the disputed domain name takes the user to a parked webpage with an unrelated third-party link and the Respondent is supposedly receiving pay-per-click advertising fees;
- placing unrelated third-party links for the benefit of the Respondent indicates a lack of bona fide offering of goods and services and a lack of legitimate noncommercial or fair use of the disputed pursuant to the Policy;
- panels in earlier UDRP cases have recognized that the initial burden of proving no legitimate interest is on the Complainant, however, after that the burden shifts to the Respondent. In this case, the Complainant has shown the Respondent’s lack of intent or preparations to use the disputed domain name, and accordingly the burden shifts to the Respondent.
(iii) The disputed domain name was registered and is being used in bad faith and in support of such contentions the Complainant asserts the following:
- the Respondent has placed a general offer to sell the disputed domain name on its website for the amount of USD 5,500 and such offer indicates bad faith pursuant to Policy 4(b)(i) because the amount exceeds the Respondent’s demonstrable out-of-pocket costs;
- the Respondent is attempting to conceal and hide his identity which also indicates bad faith;
- as evidenced by the printout from the webpage “www.virtua1sguatting.com” the Respondent is by name stated as one of the biggest cyber squatters who has registered a number of domain names that incorporate third-party trademarks;
- the Respondent has previously been party to UDRP procedures before the National Arbitration Forum (the “NAF”) on the respondent side, in particular MCorelab Inc. v. Melissa Domain Name Services / Shanshan Huang, NAF Case No. FA1512001652968 and Ferring B.V. v Shanshan Huang / Melissa Domain name Services, NAF Case No. FA1505001620342. In both cases, the respective domain name was registered just a few days after the complainants filed their trademark registration;
- the Respondent further demonstrated the afore described pattern of conduct in case of the trademark SKIFGUARD, in which case it registered the domain name <skifguard.com> five days after the same trademark was filed; as well as in the subject case when the Respondent registered the disputed domain name on the exact same day that the Complainant’s application for the WOLPERTECH trademark was filed with EUIPO and become visible in the online database of EUIPO.
The Respondent did not reply to the Complainant’s contentions.
The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of the Response, the Policy, the Rules, the Supplemental Rules and other applicable legal authority pursuant to paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the disputed domain name, each of the following:
(i) the domain name is confusingly similar to a trademark in which the Complainant has rights; and
(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.
Primarily, the Panel emphasizes that under the general consensus view, the mere fact of ownership of a registered trademark by the complainant is generally sufficient to satisfy the threshold requirement of having trademark rights (see paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Second Edition (“WIPO Overview 2.0”)).
The Complainant has submitted sufficient evidence to show that it is the owner of numerous WOLPERTECH trademarks registered in several jurisdictions, including China where the Respondent is located. The Complainant’s aforementioned WOLPERTECH trademark no. 015784168 is registered as verbal mark. The remaining two of the afore listed Complainant’s WOLPERTECH trademarks (IR 1316414 and 014786875) are registered as figurative trademarks. Nevertheless, the verbal element WOLPERTECH in the latter two trademarks is prominent and in this Panel’s opinion therefore the principal distinctive element which is clearly recognizable within the same trademarks.
It is well established that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name to determine confusing similarity. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive or negative terms typically being disregarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name (see paragraph 1.2 of WIPO Overview 2.0). Furthermore, the prevailing view taken by panels in earlier UDRP cases is that figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name. Such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark (see paragraph 1.11 of WIPO Overview 2.0).
After performing the straightforward visual and aural comparison, it is evident to this Panel that the disputed domain name <wolpertech.com> incorporates the Complainant’s WOLPERTECH trademark no. 015784168 in its entirety without any modifications, and that the same WOLPERTECH trademark of the Complainant is clearly recognizable as such within the disputed domain name.
With respect to the Complainant’s trademarks no. IR 1316414 and 014786875, with the purpose of assessing the identity or confusing similarity with the disputed domain name, the Panel disregarded design elements as the same are not especially prominent or distinctive part of the two trademarks and therefore incapable of representation in a disputed domain name. Rather, during the assessment, the Panel concentrated on the distinctive verbal WOLPERTECH element (i.e., alpha-numeric component) contained in the same two trademarks of the Complainant. According to the Panel’s findings, the verbal WOLPERTECH element of the same two trademarks of the Complainant is included in the disputed domain name in its entirety, without any modifications. There is no indication that the Complainant did in any way disclaim the same verbal element.
In connection to the above, this Panel supports the prevailing view taken by panels in earlier UDRP cases under which the assessment of identity or confusing similarity in cases of figurative trademarks is primarily made based on the alpha-numeric components of such trademarks and the domain name in question. Such approach in this Panel’s view especially applies in cases of trademarks with prominent and distinctive verbal elements, such as the case at hand.
Regarding the applicable generic Top Level Domain (“gTLD”) “.com” in the disputed domain name, it is a consensus view that it is usually disregarded under the confusing similarity test (see paragraph 1.2 of the WIPO Overview 2.0).
For all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirement set forth in paragraph 4(a)(i) of the Policy, i.e., has proven that the disputed domain name is identical and/or confusingly similar to its WOLPERTECH trademark.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
“(i) Before any notice to [the respondent] of the dispute, [use by the respondent] 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) [Where the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [Where 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 consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […].”
In the subject matter case, the Respondent is in default, hence, the Panel has evaluated the arguments and evidence submitted by the Complainant, as well as the information collected by the Panel by limited factual research into matters of public records (e.g., by visiting the website under the disputed domain name) and finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Namely, the Complainant has established that it is the owner of a number of WOLPERTECH trademarks registered in various jurisdictions around the world, including China where the Respondent is located, as well as that the Complainant has used the same trademarks, in the first place through the Complainant’s website available under the domain name <wolpertech.de>.
The Panel observes that there is neither any relation, disclosed to the Panel or otherwise apparent from the records, between the Respondent and the Complainant, nor evidence that the Respondent has been commonly known by the disputed domain name or has been using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
Furthermore, from the records, it does not arise that the Complainant has ever licensed or otherwise permitted the Respondent to use its WOLPERTECH trademark, or to apply for or use any domain name incorporating the same trademark.
As discussed earlier, from the evidence submitted by the Complainant and by visiting the website under the disputed domain name, it arises that the disputed domain name is used as a parking page with links to third party websites, which presumably generate pay-per-click revenue for the Respondent. Some of said third-party websites may be regarded as competitors to the Complainant, taking into the account the assortment of the Complainant’s goods as listed on the Complainant’s website available at “www.wolpertech.de” and the goods offered for sale on the same third-party websites. In addition, from the information available on the website under the disputed domain name, it arises that the Respondent offers the disputed domain name for sale for the amount of USD 5,500.
In this Panel’s view, the afore described use of the disputed domain name by the Respondent cannot be regarded as use in connection with a bona fide offering of goods or services or as a legitimate noncommercial or fair use of the disputed domain name within meaning of the paragraph 4(a)(ii) of the Policy.
Panels in earlier UDRP cases have generally recognized that use of a domain name to post parking and landing pages or pay-per-click links would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name, especially where such links are are resulting in a connection to goods or services competitive with those of the rights holder, which appears to be the case here (see paragraph 2.6. of WIPO Overview and e.g., America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Canadian Tire Corporation, Limited v. Texas International Property Associates NA NA, WIPO Case No. D2007-1407; Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021; Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001; and Associazione Radio Maria v. Hostmaster Hostmaster, Domain Park Limited, WIPO Case No. D2009-0263).
Accordingly, the Panel finds that the requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled by the Complainant by making the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and by the Respondent’s failure to produce any arguments or evidence to the contrary.
For the purpose of paragraph 4(a)(iii) of the Policy, 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 the disputed domain name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location.
Owing to the lack of Response or any other evidence to the contrary, the Panel accepts the Complainant’s arguments substantiated by evidence that, the Respondent has registered and used the disputed domain name in bad faith.
First, this Panel holds that the Respondent knew about the Complainant’s WOLPERTECH trademarks at the time of registration of the disputed domain name. In this Panel’s view, it would be too much of a coincidence that the Respondent decided to register the disputed domain name on the same day the application for registration of the aforementioned Complainant’s WOLPERTECH trademark no. 014786875 became visible online in the EUIPO database. Especially, since the word “wolpertech” does not appear to have a meaning in any of the relevant languages, as well as that the Respondent appears to be engaged in a pattern of conduct of preventing trademark holders from reflecting the mark in a corresponding domain name, as it will be explained below. Earlier UDRP panels have found bad faith registration based in part on proof that the respondent “knew or should have known” about the existence of the complainant’s trademark (see paragraph 3.4 of WIPO Overview 2.0).
Second, from the information available on the website under the disputed domain name, it arises that the Respondent is offering the disputed domain name for sale for USD 5,500. In this Panel’s view, it is safe to assume that the latter amount represents the consideration well above the registration and/or maintenance costs for the disputed domain name, i.e., out-of-pocket expenses directly related to the disputed domain name. Therefore, such comportment of the Respondent further supports this Panel’s opinion that the disputed domain name has been registered in bad faith within the meaning of paragraph 4(b)(i) of the Policy. This is in line with positions taken by panels in earlier UDRP cases under which the evidence of offers to sell the domain name are used to show bad faith on the side of the respondents (see paragraph 3.6 of WIPO Overview 2.0).
Third, from the evidence submitted by the Complainant (Annexes 8 and 9 to the Complaint) it arises that the Respondent engaged on at least two earlier occasions in registration of domain names incorporating the marks included in the trademark applications filed shortly before by third-parties. Since the Respondent applied the same approach in this case as well (the disputed domain name was registered on the same day the application for registration of the aforementioned Complainant’s WOLPERTECH trademark no. 014786875 became visible online in the EUIPO database), this Panel considers that the Respondent has engaged in a pattern of conduct of preventing a trademark holders from reflecting the mark in a corresponding domain name. The same conduct of the Respondent further supports the Panel’s opinion on registration of the disputed domain name in bad faith by the Respondent pursuant to paragraph 4(b)(ii) of the Policy. Such position of the Panel is in line with the prevailing practice taken by panels in earlier UDRP cases (see paragraph 3.3 of WIPO Overview 2.0).
Fourth, and as already discussed above, the disputed domain name resolves to a website used as a parking page with links to third-party websites. Having in mind afore described circumstance case, the Panel believes that by using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to the website to which the disputed domain name resolves, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the same website. The Complainant’s WOLPERTECH trademark in the disputed domain name certainly adds weight as a signal to the potential customers and the disputed domain name clearly benefits from the same. For that reason, the Panel finds the provisions of paragraph 4(b)(iv) of the Policy to also be applicable in this case, since the Internet users might be misled about the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name resolves. See, e.g., the following decisions issued by panels in earlier UDRP proceedings:
(ii) Royal Bank of Canada v Henry Chan, WIPO Case No. D2003-0031: “The Panel also believes that in using the disputed domain names to redirect Internet users to websites that host links to external websites, including websites of Complainant’s competitors, the Respondent has registered and used the domain names in bad faith. Said use of the contested domain names shows the intention of disrupting the Complainant’s business and/or for the purpose of intentionally attempting to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its websites”;
(ii) PepsiCo, Inc. v Ali Khan, WIPO Case No. D2004-0292: “The fact that the Respondent elected to register a domain name substantially comprising the “PEPSI” trademark indicates that it was a deliberate act to mislead consumers into believing there was a connection with the Complainant”;
(iv) Associazione Radio Maria v. Privacy Protection Service, Communigal Communication Ltd / Gustavo Winchester, WIPO Case No. D2015-1556: “The Panel finds that the Complainant’s trademark is well-known, and, further, that it is highly unlikely that the Respondent was unaware of the Complainant’s trademark as the Disputed Domain Name is linked to a parking page containing several links to radio stations and live broadcast services. The Panel finds that the Disputed Domain Name was registered in bad faith. With respect to the use, the Respondent has used the Disputed Domain Name to divert visitors to the website for its own commercial benefit. The Respondent registered the Disputed Domain Name in order to gain commercial benefit. This constitutes evidence of registration and use of the Disputed Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy”.
Given the above, the Panel determines that the disputed domain name has been registered and is being used in bad faith and that the Complainant has fulfilled the third element under paragraph 4(a) 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 <wolpertech.com> be transferred to the Complainant.
Mladen Vukmir
Sole Panelist
Date: May 11, 2017