WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grund & Mobil Verwaltungs AG v. Whois Agent
Case No. D2010-1765
1. The Parties
The Complainant is Grund & Mobil Verwaltungs AG of Zug, Switzerland, represented by Binder Grösswang Rechtsanwälte GmbH, Austria.
The Respondent is Whois Agent of Beijing, China.
2. The Domain Name and Registrar
The disputed Domain Name <riedelcrystal.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2010. On October 19, 2010, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed Domain Name(s). On October 19, 2010, Moniker Online Services, LLC 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 October 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2010. The Respondent did not submit any response. accordingly, the Center notified the Respondent’s default on November 15, 2010.
The Center appointed Lana I Habash as the sole panelist in this matter on November 15, 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.
4. Factual Background
The Complainant, Grund & Mobil Verwaltungs AG, is a joint stock company formed under Swiss law and is the owner of the widely known trademarks RIEDEL, which are registered in many countries of the world for high quality, premium glassware; glassware products are sold under the RIEDEL trademark since the founding of the glass manufacturing company, dating back nearly 350 years, according to the list provided by the Complainant, the oldest registration dates back to the year 1987.
According to Moniker Online Services, LLC, the disputed Domain Name <riedelcrystal.com> was created on October 04, 2009, and is held by the Respondent Whois Agent of Beijing, China. The disputed Domain Name <riedelcrystal.com> points to a website that contains sponsored links.
5. Parties’ Contentions
The Complainant contends the following:
- The Complainant’s trademark RIEDEL has been reproduced in its entirety in the disputed Domain Name; the trademark RIEDEL being also the family name of the company founders, is neither a common nor descriptive word, and is inherently distinctive;
- The addition of the generic descriptive word “crystal” is not sufficient to distinguish the domain name from the Complainant’s trademark. The Complainant contends that the addition of the descriptive word “crystal” draws a stronger connection to the Complainant’s trademark RIEDEL, because the trademark is registered and used in association with glassware manufactured out of crystals, which makes the domain name <riedelcrystal.com> identical to the trademarks RIEDEL in which the Complainant has rights;
- The disputed Domain Name <riedelcrystal.com> is at least confusingly similar to the Complainant’s trademarks RIEDEL; the term “crystal” added to the Complainant’s trademarks RIEDEL only refers to a certain material used in the manufacturing process. It is purely generic and cannot constitute any distinctiveness which would eliminate likelihood of confusion between the trademark RIEDEL and the disputed Domain Name <riedelcrystal.com>;
- At the website to which the disputed Domain Name points, the Respondent hosts links of other competing crystal glassware producing companies and uses pictures of crystal wine glasses, which will make Internet users associate the disputed Domain Name with the Complainant’s trademark and assume that the Respondent’s website offers crystal glassware products of either the Complainant, an affiliated company or an authorized distributor;
- The Respondent has no trademark rights with respect to RIEDELCRYSTAL or any components of the disputed Domain Name; the Respondent is also not commonly known by the disputed Domain Name, in particular due to the short term since the Respondent has acquired the disputed domain;
- The Respondent does not use the domain in connection with a bona fide offering of goods and services of its company; the respective homepage only hosts and contains links of other companies and is a click-through site. The use of an identical or confusingly similar domain name in connection with a click-through site does not serve to establish a bona fide offering of goods and services;
- The Complainant and its trademarks RIEDEL enjoy a worldwide reputation with regard to premium, high quality crystal glassware. Consequently, the RIEDEL trademarks enjoy a protection beyond the registered goods and services and are not marks that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant;
- It is evident that the Respondent was fully aware of the existence of the RIEDEL trademark when the disputed Domain Name was registered. Furthermore, the provided content and the respective links to other companies contained in the homepage available at <riedelcrystal.com> are entirely in German, which is the official language of the Complainant’s, although the Respondent’s official address according to the Whois database is Beijing, China;
- The Respondent registered and is using the disputed Domain Name in order to attract internet users for its own website in the belief that its website has some connection with the Complainant’s products;
- the Respondent is using the disputed Domain Name <riedelcrystal.com> in bad faith by offering it for sale;
- The Respondent has registered the disputed Domain Name for the purpose of disrupting the Complainant’s business; the customers will believe that the website to which the disputed Domain Name points <riedelcrystal.com> is operated by the Complainant or an affiliated company, and as such the Respondent is trading deliberately on the goodwill of the Complainant, by attracting Internet users and diverting Internet traffic intended for the Complainant’s website to the Respondent’s website. The registration of domain names which are then used to operate click-through sites to competitors can be considered to be evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated its rights to the trademark RIEDEL; although the Complainant has not submitted any registration certificates, the Panel is convinced that the Complainant has trademark rights in the word “riedel”, which was confirmed by an independent Internet search. The Panel is also satisfied that the Complainant has established that RIEDEL is a widely known trademark.
The disputed Domain Name contains the Complainant’s trademark RIEDEL in its entirety, with the added generic word “crystal”. The Panel is of the view that the addition of the generic word “crystal” does not detract from the distinctiveness of the dominant part of the disputed Domain Name, to the contrary, in this particular case, it adds to the confusion on part of the Internet users who would associate the term “crystal” with the Complainant’s trademark, being descriptive of the primary product manufactured by the Complainant’s and its trade name. In numerous UDRP Decisions, panels have found that the fact that a domain name incorporates a complainant’s registered mark in its entirety may be sufficient to establish confusing similarity for the purpose of the first element of the Policy (see, Alstom v. FM Laughna, WIPO Case No. D2007-1736, Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565, CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273, ACCOR v. Payam Avarane Khorshid Co. and Nextone Media Limited, WIPO Case No. DIR2010-0001, and LEGO Juris A/S v. n/a, Domain For Sale, WIPO Case No. D2010-0158).
B. Rights or Legitimate Interests
The Complainant is required to make a prima facie case of lack of rights or legitimate interest in the disputed Domain Name on part of the Respondent. The failure to submit a response by the Respondent in some cases supports a finding of lack of such rights.
Considering the facts at hand, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed Domain Name. The mere registration of a domain name does not give rise to a “legitimate interest”. It is evident that the Respondent attempted to use the good will of the Trademark RIEDEL to divert Internet users to other websites, in the hope of financial gain generated from listing and sponsoring links to such websites. Such practice has been found by Panels not to constitute a bona fide offering of goods and services giving rise to legitimate use (See Sanofi-aventis v. Daichi Hoang, WIPO Case No. D2006-0363, and La Francaise des Jeux v. Johan Larsson WIPO Case No. D2009-0464).
C. Registered and Used in Bad Faith
As the Panel discussed under the first element, the Complainant has successfully demonstrated the worldwide reputation of the Trademark RIEDEL, therefore it is unlikely that the Respondent was not aware of the proprietary rights of the Complainant in the trademark; a fact that the Respondent did not contest in any communication with the Complainant or the Center.
The fact that the Respondent is offering the disputed Domain Name for sale on the Internet, supports a finding of use in bad faith; a proposition to sale a domain name against a certain dollar amount that exceeds the out-of-pocket expenses constitutes a classic case of cybersquatting, and is one of the examples provided by the Policy of such circumstances indicating registration and use in bad faith:
“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”.
In addition to the fact that the Respondent is attempting to sell the disputed Domain Name to the public, the Respondent is using the disputed Domain Name to direct users via initial interest confusion to other websites, linked to from the website where the disputed Domain Name resolves, in hope for commercial gain, as explained above.
Therefore, and in light of the above mentioned facts, the Panel finds that the Respondent has registered and is using the disputed Domain Name 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 name <riedelcrystal.com> be transferred to the Complainant.
Lana I Habash
Dated: November 28, 2010