WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hunkemöller B.V. v. Top Business Names
Case No. D2011-0362
1. The Parties
Complainant is Hunkemöller B.V. of Hilversum, Netherlands, represented by Novagraaf Nederland B.V., Netherlands.
Respondent is Top Business Names, Domain Administrator of West Bay, Grand Cayman (KY), Guatemala.
2. The Domain Name and Registrar
The disputed domain name <hunkemoeller.com> is registered with Rebel.com Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2011. On February 24, 2011, the Center transmitted by email to Rebel.com Corp. a request for registrar verification in connection with the disputed domain name. On February 28, 2011, Rebel.com Corp. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 22, 2011.
The Center appointed Eduardo Machado as the sole panelist in this matter on March 30, 2011. 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
Complainant, Hunkemöller B.V., is a large international lingerie, nightwear and swimwear chain with more than 400 stores worldwide. Hunkemöller B.V. is a market leader in the Benelux and sells, designs and produces products exclusively under its own brand name Hunkemöller. Pursuant to registrations filed at the Benelux Office for Intellectual Property, The Office of Harmonization for the Internal Market (OHIM) and the World Intellectual Property Organization (WIPO), Hunkemöller B.V is the owner of several trademarks, including but not limited to the trademark HUNKEMÖLLER.
Hunkemöller B.V. holds trade name rights for at least 20 years in the name Hunkemöller in various countries.
Hunkemöller B.V. also owns inter alia the domain names <hunkemuller.com> and <hunkemoller.com> since 1999/2000.
5. Parties’ Contentions
Complainant argues that when its HUNKEMÖLLER trademarks, trade name and domain name are compared with the disputed domain name there is no doubt that the signs are confusingly similar.
Complainant further argues that as the “ö” is often referred to as “oe” in digital script, the similarity increases and it might even be considered that the signs “hunkemöller” and “hunkemoeller” are identical. Complainant also argues that consumers who are exposed to this domain name will be confused in a direct and/or indirect manner in regard to the origin of the owner of the domain name or website and most likely will assume that Complainant owns/operates the domain name/website.
Complainant states that the registration and use of the disputed domain name constitutes a clear infringement of the Complainant’s trade name Hunkemöller according to the Dutch Trade Name Act and article 6:162 of the Dutch Civil Code and also constitutes an infringement of Hunkemöller’s trademark rights according to the Benelux Convention of Intellectual Property and the Community Trademark Regulation because of the creation of a risk of confusion and/or the gaining of an unfair advantage or the creation of a detrimental effect in relation to the reputation and/or distinctive character of Hunkemöller B.V.’s trademarks HUNKEMÖLLER.
Complainant informed that on February 3, 2011 it summoned Respondent to assign the disputed domain name, but Complainant never received any response.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that Respondent has no trade name rights in the name “hunkemoeller” and does not own any trademark registrations for “hunkemoeller” and has never been known under the name “hunkemoeller”. Also, Complainant alleges that Respondent has registered and is using the disputed domain name without permission of Complainant and that Respondent is not a licensee of Complainant.
Complainant further argues that Respondent never used the disputed domain name in good faith for a bona fide offering of goods and services. Complainant states that the use of the disputed domain name can not be described as legitimate non commercial use of the domain name because the website operated under the disputed domain name is merely a so called “pay-per- click” site with a circulating display of sponsored links for all kinds of products and services, including links to competitors of Complainant, to the website of Complainant itself (without permission), and to sex related companies.
Additionally, Complainant argues that Respondent was or should have been aware of the trade name and trademark rights of Complainant before registering the disputed domain name, as Complainant has been using its distinctive trade name well before the domain name registration date; furthermore, all of the above-mentioned distinctive trademarks and domain names of Complainant were registered prior to registration of the disputed domain name.
Complainant argues that the disputed domain name was registered in bad faith because it is clear that the aim of the registration was to take advantage of the confusion between the disputed domain name and the Complainant rights to the name/trademark HUNKEMÖLLER.
Complainant also argues that the disputed domain name has been or is being used for commercial gain as is clearly shown by the offering of several sponsored links or pay-per click references. This commercial use of the disputed domain name is accomplished by attracting Internet users to a website of Respondent or other online location through the likelihood of confusion which arises with the trademark or trade name of Complainant. Confusion arises for example in regard to the source, sponsorship, affiliation or endorsement of the website which is operated under the disputed domain name.
According to Complainant it is inconceivable that Respondent has coincidentally picked the nearly identical distinctive sign “hunkemoeller” in relation to Complainant’s well-known trade name and trademarks HUNKEMÖLLER for selling inter alia lingerie products, or at least offering help to obtain such products.
Complainant also informs that Respondent has repeatedly registered domain names in bad faith and cites other WIPO UDRP cases against Respondent.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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, Policy, paragraph 4(a).
A. Identical or Confusingly Similar
According to Complainant’s arguments and the exhibits attached to the Complaint, it is proved that Complainant has intellectual property rights over the merk HUNKEMÖLLER.
The Panel finds that Complainant’s registered HUNKEMÖLLER trademarks are well-known in its field of activity and have a strong reputation in many countries. The Panel finds that the disputed domain name is confusingly similar with Complainant’s HUNKEMÖLLER trademark. The only difference between Complainant’s registered trademark and the disputed domain name is the substitution of the “é” for “oe”.
The Panel finds that the difference pointed above is not enough to characterize the disputed domain names as being distinct from Complainant’s registered trademarks. See Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd., WIPO Case No. D2008-0090 (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.”).
The Panel finds that this similarity can mislead Internet users who search for Complainant’s services and divert them to the disputed domain name.
The Panel, therefore, finds that Complainant has established the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has failed to respond to the Complaint.
As a matter of a fact, Complainant has made a prima facie case in support of its allegations and, due to this, the burden of production shifts to Respondent to show that it does have rights or legitimates interests in the disputed domain name, according to paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared 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.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name.
At the time the Complaint was filed, the disputed domain name directed Internet users to a parking page offering goods and services in competition with Complainant. The Panel finds that this is not a bona fide offering of goods and services.
So, in view of the above, the Panel finds that Complainant has established the second condition of paragraph 4(a) of the policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, a respondent has used and registered a domain name in bad faith if, inter alia, respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to respondent’s website or other online location by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s site or of a product or service offered on respondent’s site. Policy, paragraph 4(b)(iv).
The Panel finds that Respondent registered the domain name in bad faith.
Respondent has registered a domain name which reproduces Complainant’s well-known trademark HUNKEMÖLLER. At the time the disputed domain name was registered, it is unlikely that Respondent did not have knowledge of Complainant’s rights in the trademark HUNKEMÖLLER.
Complainant’s allegations of bad faith are not contested. The evidence provided by Complainant confirm that it had long been using its HUNKEMÖLLER registered trademark when the disputed domain name was registered. Moreover, Complainant submitted consistent evidence that its trademark is well-known in its field of activity. The Panel finds that Respondent must have been aware of Complainant’s rights in the mark and, further, that Respondent had the Complainant’s trademark in mind when it registered the disputed domain name.
Also, under the Policy, it is evidence of bad faith that, “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.”, Policy, paragraph 4(b)(iv). Respondent used Complainant’s trademark to attract users to a parking page offering goods and services in competition with Complainant. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
In light of this, the Panel finds that Complainant has established the third element of paragraph 4(a) 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 <hunkemoeller.com> be transferred to Complainant.
Dated: April 13, 2011