WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dm-drogerie markt GmbH + Co. KG v. Razvan Ovidiu Moraru
Case No. D2011-1362
1. The Parties
The Complainant is Dm-drogerie markt GmbH + Co. KG, Karlsruhe, Germany, represented by Lemcke, Brommer & Partner Patentanwälte, Germany.
The Respondent is Razvan Ovidiu Moraru, Iasi, Romania and Utah, United States of America.
2. The Domain Name and Registrar
The disputed domain name <alverde-shop.com> (the “Disputed Domain Name”) is registered with FastDomain, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2011. On August 11, 2011, the Center transmitted by email to FastDomain, Inc a request for registrar verification in connection with the disputed domain name. On August 15, 2011, FastDomain, Inc 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 August 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2011.
On August 8 and September 10, 2011, the Respondent sent two email communications to the Complainant and the Center, respectively, indicating his willingness to transfer the disputed domain name.
On September 15, 2011 the Center informed the parties about the Respondent’s email communications and informed the Complainant about the possibility of considering a suspension of the proceedings to explore a possible settlement between the parties. The Center invited the Complainant to submit such a request by the close of business (18:00 CEST) Friday September 16, 2011 and informed that after said date, the Center would continue with the UDRP proceeding. The Center received no request for suspension from the Complainant.
On September 19, 2011, the Center received an email from the Respondent indicating that in his opinion, the Complainant was not interested anymore in the disputed domain name.
On September 21, 2011, the Center informed the parties about the continuation of the UDRP proceeding and the panel appointment.
The Center appointed Isabelle Leroux as the sole panelist in this matter on September 29, 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
The Complainant is a leading German drugstore chain, incorporated under the laws of Germany. It operates throughout Europe, and is especially present in Eastern Europe.
The Complainant has been using since 1989 the name “alverde” to designate its own range of cosmetics offered for sale in all its stores in Germany and abroad.
As such, it owns multiple trademark registrations for the name “alverde” in Germany, and more generally in various other European countries, amongst which Romania (i.e. the Respondent’s country).
The Complainant notably owns since December 4, 1997, an international trademark registration for ALVERDE under number 685953, to designate, amongst others cosmetics, perfumery, essential oils, hair lotions in class 3.
ALVERDE is the top-selling brand of certified natural cosmetics in Germany.
The Disputed Domain Name was registered on June 1, 2011.
The Complainant became aware that the Respondent had registered the Disputed Domain Name.
At that time, the Disputed Domain Name was used as an online shop for drug store goods amongst which the ALVERDE products of the Complainant were offered for sale by way of an online mail-order business.
Complainant thus sent on June 30, 2011, a cease-and-desist letter to the Respondent requesting him to stop using the Disputed Domain Name and shut down the online shop.
This letter returned back to the Complainant on the basis that the address was insufficient.
After having been informed of this Complaint, the Respondent indicated his willingness to transfer the Disputed Domain Name in consideration of 1,000 Euros.
After having been appointed, the Panel noticed that the Disputed Domain Name is now used to point to a website which consists in a blog related to food, diet, cooking, etc.
5. Parties’ Contentions
The Complainant claims that, as provided by the Policy, paragraph 4(a):
(i) The Disputed Domain Name is confusingly similar to the trademarks it owns in and to the name “alverde”;
(ii) The Respondent has no rights or legitimate interest in the Disputed Domain Name;
(iii) The Disputed Domain Name was registered and is used in bad faith.
The Complainant claims that the Disputed Domain Name is confusingly similar to Complainant’s trademark ALVERDE, stressing the fact that the addition of the obviously descriptive term “shop” does not prevent confusion.
Complainant also asserts that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name since:
there is no use nor are there any preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services;
Respondent is not commonly known by the Disputed Domain Name;
Respondent is not making a noncommercial use of the Disputed Domain Name, or a fair use of the Disputed Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
Respondent has not been instructed by the Complainant to register the Domain Name.
With regard to the registration and use of the Disputed Domain Name by Respondent, Complainant claims that such registration and use occurred in bad faith since:
Respondent could not have been unaware of Complainant’s rights at the time he registered the Disputed Domain Name, as he used the Disputed Domain Name to notably offer for sale the goods of the Complainant;
Respondent’s website gives the impression that he is the Complainant or at least an economically-linked person, and therefore attempts to attract Internet users by creating a likehood of confusion with the Complainant’s trademark.
For all the above-mentioned reasons, the Complainant requests that the Disputed Domain Name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant is required to establish that each of the following three conditions is met to obtain the relief it has requested:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name <alverde-shop.com> is similar to the Complainant’s ALVERDE trademarks in which the Complainant has multiple trademark registrations in various European jurisdictions, since 1990.
Indeed, the word “alverde” is incorporated in its entirety in the Disputed Domain Name.
The fact that the word “shop” is added to Complainant’s trademark does not eliminate the similarity between Complainant’s trademark and the Disputed Domain Name, as “shop” is a descriptive component of the Disputed Domain Name. In numerous cases, it has been held that a domain name that wholly incorporates a Complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the UDRP.
Therefore, the Panel finds that the Complainant has carried out its burden of proof under Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Disputed Domain Name was registered on June 1, 2011, long after the filing and registration by the Complainant of its multiple trademarks comprising solely the name “alverde”.
Complainant denies any direct connection with Respondent and contends Respondent’s use of the trademark is unauthorized (Complaint, Annex H). These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interests in the Disputed Domain Name on the part of Respondent. This then shifts the burden to Respondent to show by concrete evidence that he has rights or legitimate interests in the Disputed Domain Name.
The Respondent has not provided any response showing that he had rights or legitimate interests in the Disputed Domain Name.
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the Disputed Domain Name: (i) there is no evidence before the Panel that the Respondent has any proprietary or contractual rights in any registered trademark corresponding in whole or in part to the Disputed Domain Name; (ii) there is no element that indicates that the Respondent, or any entity or organization of which he would be a member, has been commonly known by the Disputed Domain Name, (iii) there is no evidence that the Respondent is authorized or licensed by the Complainant to use the ALVERDE trademark or to register and use the Disputed Domain Name; and (iv) there is no question as to its commercial purpose of the sale of ALVERDE products.
The fact that Respondent was offering for sale Complainant’s products on its website does not allow Respondent to register the Disputed Domain Name. In this respect, several WIPO UDRP panels have ruled that a re-seller, even an authorized re-seller, cannot use another mark in a domain name without the express consent of the mark owner, consent that obviously does not exist here. See, e.g., The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co. Inc., WIPO Case No. D2000-0113.
In addition, the Panel is satisfied that the presentation of Respondent’s website was likely to mislead Internet users into believing that the site was operated or endorsed by or affiliated with Complainant. In particular, the dominant position of the “alverde” logo and the presentation of the copyright information, without any statement as to the true ownership of the site or any disclaimer of association with Complainant, create a strong impression that the site is an official site of Complainant.
In this context, such use of the Complainant’s trademark cannot constitute a bona fide offering of goods or services.
The fact that the Panel has noticed that the Disputed Domain Name is now used to point to a noncommercial website does not affect the Panel’s view.
On the contrary, this can be regarded as a late attempt by the Respondent, after notice of the dispute was made to him, to avoid the transfer of the Disputed Domain Name by falsely suggesting that the Disputed Domain Name would be used legitimately. In fact, the Panel shall not be misled by such late attempt and finds that the Respondent has not provided evidence of a genuine legitimate interest in the Disputed Domain Name.
Such current use of the Disputed Domain Name cannot be regarded by the Panel, in light of all the circumstances of the case, as a fair use of the Disputed Domain Name.
Therefore, and in the absence of any contrary evidence, the Panel finds that Respondent has no rights to, or legitimate interests in the domain name <alverde-shop.com>. The Panel therefore considers that the requirements of the Policy, paragraph 4(a)(ii) are fulfilled.
C. Registered and Used in Bad Faith
As demonstrated by Complainant, Respondent was notably offering for sale on its website genuine ALVERDE trademarked goods by reference to the trademark.
Thus, there is no doubt, in the Panel’s opinion, that when registering the Disputed Domain Name Respondent knew that he was registering a protected trademark.
Respondent has not proven that he had any right whatsoever to do so.
Accordingly, the Panel considers there is sufficient evidence to find that the Disputed Domain Name was registered in bad faith.
It is also clear from the evidence that the Disputed Domain Name is being used in bad faith. The Panel is convinced by Complainant’s evidence that Respondent has intentionally attempted to attract, for commercial gain, Internet users and consumers by creating a likehood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of his website. The association of the descriptive component “shop” with the trademark ALVERDE in the Disputed Domain Name, the dominant position of the “alverde” logo and the presentation of the copyright information on Respondents website, without any statement as to the true ownership of the site or any disclaimer of association with Complainant, are circumstances that may lead users to believe that Complainant is operating or is associated to the operation of this website.
The Panel also wishes to emphasize that the lack of company details on the Respondent’s website is also evidence of Respondent’s bad faith, since it shows that Respondent has tried to hide its identity.
In conclusion, there are cumulative circumstances which the Panel finds to be indicative of bad faith.
In this regard, the fact that the Disputed Domain Name is now used to point to a noncommercial website does not affect the Panel’s finding.
Therefore, the Panel finds that the domain name <alverde-shop.com> was registered and used by Respondent in bad faith and considers the requirements of the Policy, paragraph 4(a)(iii) to be fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that Disputed Domain Name, <alverde-shop.com>, be transferred to the Complainant.
Dated: October 13, 2011