The Complainant is regroup ag of Zug, Switzerland, represented by Meyer Lustenberger, Switzerland.
The Respondent is Luka Ereiz of Maribor, Slovenia.
The disputed domain name <freitagbag.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2009. On August 7, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On August 7, 2009, eNom 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 11, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 31, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 1, 2009.
The Center appointed Brigitte Joppich as the sole panelist in this matter on September 4, 2009. 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 paragraph 7 of the Rules.
The Complainant is producing bags made of old truck tarpaulin. The Complainant owns several registrations for its FREITAG trade marks, in particular the following trade mark registrations for FREITAG and FREITAG & device (the “FREITAG Marks”), mostly claiming protection for bags and covering inter alia Slovenia, where the Respondent is located:
- Swiss Registration No. 575962 FREITAG in classes 03, 08, 09, 11, 12, 16, 17, 18, 20, 25, 27, 28, 42, and 43, registered on August 29, 2008;
- International Registration No. 1000802 FREITAG in classes 03, 08, 09, 11, 12, 16, 17, 18, 20, 25, 27, 28, 42, and 43, registered on November 17, 2008;
- Swiss Registration No. 500291 FREITAG & device in classes 03 and 09, registered on June 20, 2002;
- Swiss Registration No. P-437015 FREITAG & device in classes 17, 18, 25, and 28, registered on February 20, 1997;
- International Registration No. 683732 FREITAG & device in classes 17, 18, 25, and 28, registered on May 23, 1997; and
- Community Registration No. 003489903 FREITAG & device in classes 18, 25, and 28, registered on April 22, 2004.
The Complainant provides its services on the Internet mainly at “http://www.freitag.ch”.
The disputed domain name was registered on January 24, 2008 and is used in connection with a website providing links to various web pages offering the Complainant's and third parties' products.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The Complainant owns rights in the FREITAG Marks.
(2) The Complainant contends that the Respondent has not been commonly known by the domain name, that the Respondent has no connection to the Complainant, the FREITAG Marks or to the word “Freitag” (which is German and means “Friday” in English) and is making no legitimate non-commercial or fair use of the disputed domain name.
(3) The Complainant finally contends that the disputed domain name is capable of creating a likelihood of confusion as to the source, sponsorship, and affiliation with the Complainant's well-known FREITAG Marks. The Complainant states that the Respondent offers counterfeited goods and provides pay-per-click links to various websites on the website available at the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant's trade mark; 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.
The disputed domain name fully incorporates the Complainant's highly distinctive (with regard to bags) FREITAG Marks in which the Complainant has rights.
The mere addition of the generic word “bag” following the trademark does not eliminate the similarity between the Complainant's marks and the domain name because it is generic and merely describes the Complainant's main product, namely bags. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words, such as “bag” or “bags” (cf. Christian Dior Couture v. Carl Lim, WIPO Case No. D2008-1038; eLuxury.com Inc. v. Kewei Zhao d/b/a eluxurybags, NAF Case No. FA 1239511; Nike, Inc. v. BaseballEquipment.com, NAF Case No. FA 1159815; Fendi Adele S.r.l. v. Adtelect Networks Inc., WIPO Case No. D2007-1436; Fendi Adele S.r.l. v. SpeedyWeb, WIPO Case No. D2006-1602; Bush Holding v. Spiral Matrix, WIPO Case No. D2006-1314).
Furthermore, it is well established that the specific top level domain name generally is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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 the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has asserted that the Respondent neither uses the domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services nor is known by the disputed domain name, that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name, and that the Respondent therefore cannot have any legitimate interests in the domain name. The Complainant has therefore fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 trade mark 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) the respondent has registered the domain name in order to prevent the owner of the trade mark 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed ever since Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (cf. also Telstra Corporation Limited v. Adult Web Development and Telstraexposed, WIPO Case No. D2002-0952; Telstra Corporation Ltd v. David Whittle, WIPO Case No. D2001-0434; Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758).
The Complainant's bags have been sold under the name FREITAG for many years. The Respondent registered a domain name comprising the Complainant's FREITAG Marks and the word “bag”, describing the Complainant's main product. As the Complainant's FREITAG Marks are highly distinctive with regard to bags, it is inconceivable that the Respondent registered the domain name without knowledge of the Complainant and its rights in the FREITAG Marks. Therefore, the Panel concludes that the Respondent registered the domain name <freitagbag.com> with full knowledge of the FREITAG Marks and therefore in bad faith.
As to bad faith use, by fully incorporating the FREITAG Marks into the disputed domain name and by using the website at such domain name to provide links to various web pages offering the Complainant's and third parties' products, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for commercial gain. Such use and exploitation of trademarks to obtain commercial profit from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy. Furthermore, the fact that the Respondent apparently offers counterfeit goods is further evidence of bad faith use (cf Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552; Fabergé Ltd. v. Management Services, WIPO Case No. D2009-0425). The Panel is therefore satisfied that the Respondent also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <freitagbag.com> be transferred to the Complainant.
Dated: September 14, 2009