The Complainant is Thomas Sabo GmbH & Co. Schmuckhandel KG, Lauf an der Pegnitz, Germany, represented by Ladas & Parry LLP.
The Respondent is A&L, Ran Hill, London, United Kingdom of Great Britain and Northern Ireland.
The disputed domain names <thomassabosale.com>, <thomas-sabos.com> and <thomassabos.com> are registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2010. On May 7, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On May 7, 2010, 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 18, 2010.
The Center appointed Alexandre Nappey as the sole panelist in this matter on June 18, 2010. 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.
Thomas Sabo GmbH & Co. Schmuckhandel KG (hereafter the Complainant) is a German jewelry company incorporated in 1984. The Complainant is designing and selling high-quality silver jewelry throughout Europe, Asia and America.
The Complainant explains that jewelry collections are lauched twice each year in conjunction with the leading international fashion shows.
The THOMAS SABO trademark was first registered in Germany on August 1, 1991.
The Complainant holds various trademark rights around the world, among which:
- German word trademark THOMAS SABO registered on January 17, 2002 under n°30168709 for products of classes 3, 14 and 18,
- United States word trademark THOMAS SABO registered on August 29, 2006 under n°3135962 for products of class 14,
- CTM word trademark THAOM SABO registered on October 11, 2006 under n°5377511, for products of classes 3, 14, 18 and 25.
Additionally, the Complainant has developped an extensive online presence both through its corporate website at “www.thomassabo.com”, with a domain name registered since May 18, 1997, and an online shop available at “www.shop.thomassabo.com”.
The disputed domain names were registered respectively :
- <thomassabos.com> on March 23, 2010,
- <thomas-sabos.com> on February 27, 2010,
- <thomassabosale.com> on January 21, 2010.
All these domain names are used to direct Internet users to commercial websites through which the Respondent impersonates the Complainant's identity.
The Complainant submitted take down requests under the Digital Millenium Copyright Act on March 1, 2010 with respect to <thomassabos.com> and <thomassabosale.com> and obtained that the Internet Service Provider removed the websites content. Later the Complainant submitted another request to the ISP hosting <thomas-sabos.com> which failed to reply.
The Complainant claims that it holds numerous trademark registrations for the mark THOMAS SABO, including in European Union, Germany and United States of America.
The disputed domain names are confusingly similar to the Complainant's marks.
Further, the Complainant asserts that the Respondent has not been authorized or licensed to register and use domain names incorporating the THOMAS SABO trademark.
At last the Complainant underlines that the Respondent intentionally registered and is using the disputed domain names to attract internet users to its websites for commercial gain by creating a likelihood of confusion with THOMAS SABOS's marks as to the source, sponsorship, affiliation or endorsement of the Respondent's website.
The Respondent did not reply to the Complainant's contentions.
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
Having consideration to the parties' contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel's findings on each of the above mentioned elements are the following.
The Complainant has submitted relevant evidence of its rights and wide use of the mark THOMAS SABO since 1991, at the latest.
All trademarks predate the disputed domain names.
The disputed domain names incorporate the Complainant's trademark in its entirety but merely adds the letter “s” and/or hyphen and/or the generic term “sale”, as stated by the Complainant.
Because the THOMAS SABO mark is incorporated in each of the disputed domain names, the Complainant asserts they are confusingly similar with its trademark. The Complainant cites various decisions under Policy to support its claim: Oki Data Ams. Inc, v. ASD, Inc., WIPO Case No. D2001-0903 where the panel ruled that “the fact that a domain name wholly incorporâtes a Complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”
The Panel also refers to previous decisions in cases involving domain names with similar addings:
Chanel, Inc. v. Domain Privacy Group, Inc. / Charlene Newport, WIPO Case No. D2009-0081 (regarding <chanelsale.com>)Halcyon Yarn, Inc. v. Henry Chan, WIPO Case No. D2004-0336 (regarding <halcyonyarns.com>)
Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762 (regarding <rohde-scwarz.com> and <rohde-shwarz.com>).
Therefore the Panel is satisfied that the Complainant owns rights in the THOMAS SABO trademark, and finds that the domain names are confusingly similar to the Complainant's trademark in the terms of paragraph 4(a)(i) of the Policy.
The Complainant contends that it has no connection or affiliation with the Respondent, who is not licensed or otherwise authorized to use or apply for any domain name incorporating the Complainant's trademarks.
The Respondent has not alleged any facts or elements to justify prior rights or legitimate interests in the disputed domain names.
But it is established that the Respondent commercially used the disputed domain names without the Complainant's consent or authorization to divert internet trafic to commercial websites through which it apparently identified itself as the Complainant.
Such use is not a bona fide offering of goods or services or a legitimate noncommercial use or fair use of the domain names. The Panel refers to the decision in case High Tech Computer Corp. v. LCD Electronic Systems SRL, WIPO Case No. DRO2008-0011, cited by Complainant or more recently Jupiter Investment Management Group Limited v. N/A, Robert Johnson, WIPO Case No. D2010-0260. “However, it is clear that the registrant of the Domain Name has embarked on a process of deliberately impersonating the Complainant when he has no authority to do so. The adoption and use of a Domain Name that incorporates the JUPITER mark and is obviously similar to <jupiteronline.co.uk> domain name used by the Complainant, is only part of that process. It extends to copying the Complainant's site in its entirety.”
The Panel finds therefore that the Complainant has made out a prima facie case that the Respondent does not have any right or legitimate interest in the domain names. The Respondent being in default, has not challenged any of the contentions submitted by the Complainant.
Consequently, the Panel finds for the Complainant in terms of paragraph 4(a)(ii) of the Policy.
The Complainant has to demonstrate both that the disputed domain names have been registered and are being used in bad faith.
It results from the evidence supporting the case that the Respondent commercially benefitted from Internet traffic arriving at the websites which used to be accessible from the disputed domain names or users who mistakenly believe that the Respondent's websites were associated with the Complainant.
The Respondent has intentionally attracted Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website.
As stated above, the Respondent fraudulently identified itself as the Complainant, which supports per se a finding of registration and use in bad faith Under the Policy.
As panel ruled in Jupiter Investment Management Group Limited v. N/A, Robert Johnson WIPO Case No. D2010-0260 (above cited): “The adoption and use of a domain mame for the purposes of such impersonation does not provide a right or legitimate interest under the Policy. It also involves registration and use in bad faith. The Panel accepts the Complainant's contentions in this respect that the Respondent has intentionally attempted to attract Internet users to the Website by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the Website and of the products and services advertised on the Website. Why the Respondent has done this is not certain. However, it is difficult to conceive of any legitimate reason for this activity.”
See also Monsanto Co. v. Decepticons, NAF No.101536
Therefore, the Panel finds that the domain names have been registered and are being used in bad faith.
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 names <thomassabos.com>, <thomas-sabos.com> and <thomassabosale.com> be transferred to the Complainant.
Dated: July 6, 2010