WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KSB Aktiengesellschaft, KSB Bombas Hidráulicas S/A v. Claudia Aparecida Stuani ME / KSB Brasil S/S Ltda. / Network Solutions LLC
Case No. D2011-1052
1. The Parties
Complainants are KSB Aktiengesellschaft, of Renânia-Palatinado, Germany and KSB Bombas Hidráulicas S/A of São Paulo, Brazil, represented by Fernando Eid Philipp and Carolina Freire, Brazil.
Respondent is Claudia Aparecida Stuani ME, of São Paulo, Brazil, KSB Brasil S/S Ltda., of São Paulo, Brazil and Network Solutions LLC, of Herndon, Virginia, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ksbbrasil.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2011. On June 22, 2011, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On June 22, 2011, Network Solutions, LLC. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 June 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 19, 2011.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on July 25, 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
Complainants are owners of several registrations in Brazil and elsewhere for the trademark KSB and derivative marks, including for example Brazilian Patent and Trademark Office Registration No. 004513088, issued April 20, 1973, in National Classes 07:15 -50-60.
The disputed domain name was registered September 15, 2004, and does not presently route to an active, publicly accessible website. At various times in the past, however, the disputed domain name was used to route to a commercial website promoting a telecommunications equipment and marketing business in which Respondent has a partnership interest.1
5. Parties’ Contentions
Complainants aver that their KSB trademark and affiliated group of companies, which produce and commercialize pumps, valves and related systems worldwide, are well known internationally, earning annual revenues in the billions of Euros. In support of these assertions, the Complaint annexes a considerable volume of promotional materials and company financial reports.
Complainants aver that the owner of the Respondent company is the individual, Claudia Aparecida Stuani. Annex 9 to the Complaint is an official registered document modifying the terms of a commercial Brazilian partnership agreement, indicating that Claudia Aparecida Stuani is a quota holder and partner in the Brazilian Company “KSB Brasil S/S Ltda.” formed July 27, 1998. Complainants also aver that the company KSB Brasil S/S Ltda. was Respondent’s predecessor as registrant of the disputed domain name.
In their legal allegations, Complainants first contend that the disputed domain name is confusingly similar to Complainants’ KSB trademarks and related domain names.
Second, and of particular interest in this proceeding, Complainants contend that Respondent has no legitimate interests or rights in respect of the disputed domain name. Owing to their brevity, these allegations are quoted here in their entirety:
“First of all, the Respondent does not have any legitimate interest or rights in the domain name, since the Respondent is not known by the Domain Name at stake, and is not authorized by the Complainants or any of their associated companies to use the Complainant’s sign and registered trademark KSB or any other trademark belonging to the Complainant or any name or names confusingly similar thereto.
Furthermore, to the best of the Complainant’s belief, the Respondent has no trademark or service mark rights registered in respect of the Domain Name or any corresponding name.
Thus, there is no credible reason for the Respondent to choose the Domain Name <ksbbrasil.com> as KSB is far from being a common name.”
Finally, in respect of registration and use in bad faith, Complainants aver that they contacted Respondent’s predecessor, KSB Brasil S/S Ltda., with a cease and desist letter and that the company never replied. 2 However, Complainants aver, the offending website was taken down, only to be displayed again after transfer of the registration for the disputed domain name from KSB Brasil S/S Ltda. to Respondent. Complainants conclude that the transfer following the cease and desist letter was a deliberate act of deceit by Respondent.
Complainants also contend that the KSB mark’s well-known status makes it clear that Respondent is using the disputed domain name in bad faith, again repeating the allegation that Respondent has not made bona fide use and has no rights or legitimate interests in respect of the disputed domain name.
On the basis of these allegations, Complainants seek transfer of the disputed domain name.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainants must establish each element of paragraph 4(a) of the Policy, namely:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Complainants must establish these elements even if Respondent does not reply. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the reasonable factual allegations in the Complaint. ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
Although the disputed domain name is not identical to Complainants’ trademarks, the Panel agrees with Complainants that the disputed domain name is confusingly similar to Complainants’ trademarks.
The disputed domain name <ksbbrasil.com> is made up of the simple combination of Complainants’ KSB trademark and the shortened form of the Portuguese name for the Federative Republic of Brazil (República Federativa do Brasil). Many cases have considered the effect of linking a trademark with a geographical name to create a domain name. The common conclusion is that the addition of a geographical name does not by itself distinguish the domain name from the trademark. See, e.g., Koninklijke Philips Electronics NV v. P.K. Gopan, WIPO Case No. D2001-0171 (geographical name “adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of [the complainant] as utilized in [that location]”).
Moreover, panels disregard the domain name suffix in evaluating confusing similarity. E.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
Consistent with previous decisions, the Panel agrees that the addition of the Portuguese country name of Brasil to Complainants’ trademark does not alter the confusion with Complainants’ marks that Internet users would experience.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainants' trademark and that the requirements of Policy paragraph 4(a)(i) are established.
B. Rights or Legitimate Interests
In contrast, however, the Panel finds that the Complaint does not establish the elements required by Policy paragraph 4(a)(ii).
Complainants must show a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, after which the burden of rebuttal would pass to Respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Policy outlines circumstances which, if found by the Panel, may demonstrate Respondent’s rights or legitimate interest in the domain names. Policy paragraph 4(c). These circumstances are:
(i) Before any notice to Respondent of the dispute, Respondent used, or made demonstrable preparations 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;
(ii) Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Examining the circumstances of this case, even without the benefit of a response by Respondent, the Panel is satisfied that Respondent indeed has rights or legitimate interests in use of the disputed domain name, as elaborated below.
Complainants allege that Claudia Aparacida Stuani is both owner of Respondent and a partner in the former registrant of the disputed domain name, KSB Brasil S/S Ltda. Annex 9 to the Complaint establishes that KSB Brasil S/S Ltda., was formed as a company dedicated to commercial business in the telecommunications and marketing sector on July 27, 1998. Annex 9, which was executed May 22, 2006, also confirms that the individual Claudia Aparecida Stuani is a partner in KSB Brasil S/S Ltda.
In the absence of a Response, the Panel accepts Complainants’ uncontroverted allegations that Claudia Aparecida Stuani is owner of the Respondent company. For purposes of this proceeding therefore, the Panel will treat Claudia Aparecida Stuani and Respondent, the company bearing her name, as one.
Given both the alleged relationship between the individual Claudia Aparecida Stuani and Respondent on the one hand, and the fact that Claudia Aparecida Stuani is a partner in the previous registrant KSB Brasil S/S Ltda., the Panel concludes that Respondent “as an individual, business or other organization” has been commonly known by the disputed domain name in terms of Policy paragraph 4(c)(ii). IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420; see also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D 2000-1202.
Even the single page screen capture of the website to which the disputed domain name allegedly routed in 2008 (appearing in Complainants’ cease and desist letter to Respondent, annexed to the Complainant) establishes that the website made use of the disputed domain name to promote a commercial business unrelated to Complainants’ sector of business activity. The Panel also notes that the record establishes that Claudia Aparedcida Stuani had a partnership interest in KSB Brasil S/S Ltda. at least as of May 22, 2006. Thus, the Panel finds, Respondent made use of the disputed domain name before any notice of the dispute in terms of Policy paragraph 4(c)(i).
The Panel therefore concludes that Respondent has rights or legitimate interests in respect of the disputed domain name and that the Complaint fails to establish the prima facie case required under Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
In light of the Panel’s conclusion that the Complaint fails to establish that Respondent has no rights or legitimate interests in use of the disputed domain name, it is unnecessary to consider whether the disputed domain name was registered and used in bad faith.3
For the foregoing reasons, the Complaint is denied.
Jeffrey D. Steinhardt
Dated: August 2, 2011
1 The Panel has undertaken limited research by visiting online archives of the website to which the disputed domain name routes at <archive.org>, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5. The appearance of the website in archives is consistent with its appearance and content in the screen capture referred to in Note 2, below.
2 A copy of the letter, containing a screen shot of the website to which the disputed domain name allegedly routed, is appended to the Complaint as Annex 8.
3 It is also unnecessary for the Panel to rule on the repeated allegations upon which the Complaint so heavily relies: that Complainants’ trademarks are well known. The Panel notes however that the voluminous annexes submitted on this point are at best indirect evidence of the degree of public recognition of Complainants’ trademarks.
4 This Decision is limited to a determination under the UDRP. The Panel offers no view on whether other remedies may be available to Complainants under applicable national laws.