The Complainant is Gustav Daiber GmbH, Germany, represented by Nihlmark & Zacharoff Advokatbyrå AB, Sweden.
The Respondent is Carl Schillander, Thaiber 3DP AB, Sweden.
The disputed domain name <daiber.online> (“Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2020. On February 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 17, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 20, 2020.
The Center verified that the Complaint together with the amended 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 February 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2020. The Respondent did not submit any response however, on February 28, 2020, the Respondent replied to an auto generated email from the Registrar stating: “I am the rightful owner of this account. It seems I am under some sort of troll attack and am not happy. What am I supposed to do in order to respond to this, whatever it is?”. The Center replied to this email on March 6, 2020. The Respondent sent further informal email communications on March 11 and 12, 2020, and the Center replied to these emails on March 11 and 12, 2020 respectively. The Respondent eventually did not submit a formal Response by the official due date. Accordingly, the Center notified the Commencement of Panel Appointment on March 13, 2020.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on March 19, 2020. 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 a leading manufacturer of promotional and work clothing in Europe. The Complainant’s business started in 1912 in Germany and currently manufactures and sells, inter alia, clothing under the DAIBER trade mark as well as under the “James & Nicholson” and “Myrtle Beach” brands.
The Complainant is the owner of numerous trade mark registrations for the DAIBER mark in various jurisdictions, including, inter alia:
(i) European Union (“EU”) trade mark, registration No. 002359909, registered on March 7, 2003, covering classes 24, 25 and 26;
(ii) German trade mark, registration No. 1164657, registered on September 24, 1990, covering classes 16 and 26; and
(iii) International trade mark registration, registration No. 561622, registered on October 11, 1990, covering classes 16 and 26 and protected in various countries, including Austria, Switzerland, China, France and Portugal.
The Complainant also owns and operates the domain name <daiber.de>.
The Respondent registered the Disputed Domain Name on July 31, 2019.
The Complainant’s primary contentions can be summarised as follows:
(a) the Disputed Domain Name is identical or confusingly similar to the Complainant’s registered trade mark DAIBER, which has been wholly incorporated into the Disputed Domain Name;
(b) the Complainant and the Respondent had a business relationship. In early 2019, the Complainant terminated its authorisation and/or permission to the Respondent to use its DAIBER trade mark. There is also nothing on the website to which the Disputed Domain Name resolves, or any other evidence, that would suggest that the Disputed Domain Name is being used in connection with a bona fide offering of goods or services. Therefore, the Respondent has no rights or legitimate interest in the Disputed Domain Name; and
(c) the Respondent registered the Disputed Domain Name to disrupt the legitimate business interests of the Complainant and to prevent the Complainant from reflecting its trade mark in the corresponding domain name, as is the case with other disputes concerning the domain names <daiber.se> and <jamesandnicholson.se>, therefore supporting the fact that the Respondent is acting in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 has been registered and is being used by the Respondent in bad faith.
The Panel accepts that the Complainant has rights in the DAIBER trade mark, based on its various trade mark registrations in several jurisdictions including the EU, Germany Austria, China, and France.
The Disputed Domain Name is identical to the Complainant’s DAIBER trade mark, but for the addition of the Top-Level Domain (“TLD”) suffix “.online”. It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the TLD extension (“.online” in this case) may be disregarded. See section 1.11 of the WIPO Overview Panel views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel therefore finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s DAIBER trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.
Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
The Panel accepts that the Complainant terminated its authorization to the Respondent to use the DAIBER mark, and that there has been no relationship between the Complainant and the Respondent since the termination of their business relationship in early 2019, which would otherwise entitle the Respondent to use the DAIBER mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to him 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 was in connection with a bona fide offering of goods or services;
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark 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 trade mark or service mark at issue.
There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services. Furthermore, the website to which the Disputed Domain Name resolves appears to be simply a page streaming different video clips from other adult websites with no user functions provided, therefore suggesting that there is no bona fide offering of goods or services.
There is also no evidence to demonstrate that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that it has become known by the Disputed Domain Name.
Further, no evidence has been provided to suggest that the Disputed Domain Name has been used in connection with any legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy. UDRP panels have generally found that domain names identical to a complainant’s trade mark carry a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity can already by itself create a presumption of bad faith. See paragraph 3.1.4 of the WIPO Overview 3.0. As such, the fact that the Disputed Domain Name incorporates the Complainant’s DAIBER mark in its entirety already creates a presumption of bad faith.
Furthermore, the Respondent registered the Disputed Domain Name only after the wholesale distribution business relationship between the Complainant and the Respondent ended in early 2019 and the negotiations between the parties in relation to the transfer of another domain name <daiber.se> had failed, therefore suggesting that the Respondent had registered the Disputed Domain Name primarily for the purpose of disrupting the business of the Complainant.
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
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, <daiber.online> be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: April 2, 2020