WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PI-Design AG and Bodum AG v. Wijdan, Juned K./ PrivacyProtect.org
Case No. D2011-1994
1. The Parties
The Complainants are Pi-Design AG of Triengen, Switzerland and Bodum AG of Triengen, Switzerland, , represented by Schreiber, Hahn, Sommerlad Rechtsanwälte, Germany.
The Respondents are Wijdan, Juned K. of Maluku, Indonesia and PrivacyProtect.org of Nobby Beach, Australia.
2. The Domain Name and Registrar
The disputed domain name <bodumkaffeebereiter.com> is registered with PT Ardh Global Indonesia.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2011. On November 15, 2011, the Center transmitted by email to PT Ardh Global Indonesia (“Registrar”) a request for registrar verification in connection with the disputed domain name. When no reply was received from the Registrar in a timely fashion, the Center on November 17, 2011 and November 21, 2011 sent an email reminder, which the Center followed with a further email communication to the Registrar on November 22, 2011, stressing the need for the Registrar’s immediate response to prevent further delay and the possible disruption of the proceeding through cyberflight or other means.
The Registrar responded to the Center on November 23, 2011, in a communication which indicated that the disputed domain name had been “suspended”, but otherwise was unresponsive to the Center’s request for registrar verification. The Registrar indicated the delay was the result of time needed for contacting its client. On November 25, 2011 the Center again contacted the Registrar, noting that the Registrar’s WhoIs registrant and contact information as of that date was different than the WhoIs registrant and contact information for the disputed domain name on the date the Complaint was filed. In view of paragraph 8 of the Policy, the Center requested confirmation from the Registrar confirm that the registrant and contact information as of the filing of the Complaint had been restored and that the disputed domain name was under registrar lock.
On December 2, 2011, the Registrar transmitted an email to the Center confirming that the disputed domain name was under registrar lock and indicating that the WhoIs information was privacy protected. However, the Registrar did not disclose the identity and contact information for the underlying registrant, if different from that at the time of the filing of the Complaint. Subsequently, the Center sent an email communication to the Complainants on December 9, 2011 providing the registrant and contact information as shown on the public WhoIs as of that date, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed an amendment to that effect on December 14, 2011. The Complainants previously amended the Complaint on November 23, 2011 to clarify that a transfer of the disputed domain name to the Complainant Pi-Design AG was requested.
The Center verified that the Complaint together with the two amendments to 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 December 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2012.
The Center appointed William R. Towns as the sole panelist in this matter on January 20, 2012. 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 Bodum AG (“Bodum”) develops, manufactures and sells a line of household products, including coffee makers, under the BODUM mark. The Complainant Pi-Design AG (“Pi-Design”) is the owner of all intellectual property rights of Bodum and holds valid and subsisting trademark registrations for BODUM in numerous jurisdictions around the world, and has granted Bodum exclusive, worldwide rights in the BODUM mark. Bodum sells its BODUM-branded products through retail outlets and over the Internet, including on the Complainants’ website at “www.bodum.com”.
The disputed domain name <bodumkaffeebereiter.com> was registered on July 29, 2011. The German word “Kaffeebereiter” translates in English to “coffee maker”. The disputed domain name presently does not resolve to an active website,1 but prior to the filing of the Complaint the disputed domain name resolved to a portal website which displayed offerings primarily of the Complainants’ household products but also some competing products. Internet visitors could not purchase the products directly on this website, but the website contained links directing Internet visitors to third-party websites (such as “www.amazon.de”) where the Complainants’ products as well as competing products could be purchased.
At the time of the filing of the Complaint, the Respondent Wijdan, Juned K. was the registrant of the disputed domain name, according to the Registrar’s WhoIs records. At some time subsequent to the filing of the Complaint, the WhoIs information was changed to list the Respondent PrivacyProtect.org as the domain name registrant. The Registrar has indicated that PrivacyProtect.org is a privacy protection service, but has not indicated whether there was a change in the underlying or beneficial ownership of the disputed domain name after the filing of the Complaint.
5. Parties’ Contentions
The Complainants assert that the disputed domain name is confusingly similar to the BODUM mark, in which the Complainants have established rights through registrations and continuous and exclusive use. The Complainants further assert that the trade name “Bodum” is protected world-wide under Article 8 of the Paris Convention.
The Complainants maintain that the Respondents have no rights or legitimate interests in the dispute domain name, which is a combination of the Complainants’ BODUM mark with “Kaffeebereiter”, the German words for “coffee maker”. According to the Complainants, the Respondents have not been authorized to use the BODUM mark, are not commonly known by the disputed domain name, and are not using the disputed domain name with a bona fide offering of goods or services. The Complainants maintain that the Respondents are not resellers or distributors of the Complainants’ products and that Internet visitors to the Respondents’ website interested in looking for the Complainants’ products are directed to third-party websites where both the Complainants’ products and directly competing products are sold. The Complainants further dispute that the Respondents are making a legitimate noncommercial or fair use of the disputed domain name.
The Complainants’ contend that the disputed domain name has been registered and used in bad faith by the Respondents. Given that the Complainants’ products are displayed on the Respondents’ website, the Complainants maintain it is obvious that the Respondents were aware of the Complainants’ BODUM mark when registering the disputed domain name, which also is comprised of the Complainants’ BODUM mark and “Kaffeebereiter”, a generic word describing the most prominent products offered under the mark. The Complainants contend that the Respondents have used the disputed domain name to attract Internet users to the Respondents’ website for commercial gain by creating a likelihood of confusion with the Complainant’s BODUM mark as to source, sponsorship, affiliation or endorsement of the website.
The Complainants further assert that the Respondents are using the disputed domain name to disrupt the Complainants’ business, including baiting Internet users seeking the Complainants’ products to switch them to competing products displayed on the Respondent’s website and offered for sale on third-party websites to which Internet users are directed. The Complainants have also provided documentation indicating that the Respondent Wijdan, Juned K. has registered more than 100 other domain names incorporating third-party trademarks or trade names, such as <caseiphone.org> and <wristbandipodnano.com>. In addition, the Complainants urge that the record reflects the abusive practice of cyberflight, which in this instance includes the use of a privacy protection service in an effort to avoid or frustrate this administrative proceeding.
The Respondents did not reply to the Complainants’ contentions.
6. Preliminary Procedural Issues
A. Multiple Complainants
The record reflects that the Complainants have a common legal interest in the BODUM mark, as discussed above. Under principles distilled in prior UDPR panel decisions, it has been recognized that complainants with a common legal interest may maintain a single complaint against a respondent or respondents, particularly in situations where they are the target of common conduct by a respondent affecting their legal rights similarly. See Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331; ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008-0936; MLB Advanced Media, The Phillies, Padres LP v. OreNet Inc., WIPO Case No. D2009-0985. See also National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021. The Panel finds such to be the case here.
B. Respondent Identity
As discussed earlier, at the time the Complaint was filed the Registrar’s WhoIs records reflected the Respondent Wijdan, Juned K. to be the registrant of the disputed domain name. Subsequently, the WhoIs registrant information for the disputed domain name was changed to list the Respondent PrivacyProtect.org as the registrant. PrivacyProtect.org is a privacy protection service, which the Registrar acknowledged. Nevertheless, the Registrar did not disclose whether there had been a change in the identity of the underlying owner of the disputed domain name subsequent to the filing of the Complainant. In these circumstances, the Panel accordingly considers it appropriate that the Complaint proceed against Wijdan, Juned K. and PrivacyProtect.org as Respondents.
7. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainants prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondents have no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) that the disputed domain name is confusingly similar to the BODUM mark, in which the Complainants have established rights. Regarding the question of identity or confusing similarity, the first element of the Policy functions essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the mark and the disputed domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression. Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011. See also RUGGEDCOM, Inc. v. James Krachenfels, WIPO Case No. D2009-0130 (at the heart of paragraph 4(a)(i) is whether the trademark and the disputed domain name look, sound, and “feel” sufficiently similar that Internet users looking for websites associated with the complainant would be likely to arrive at a website at the disputed domain name) (majority opinion).
In this case, the disputed domain name incorporates the Complainants’ BODUM mark in its entirety, and the Panel finds that the disputed domain name is confusingly similar to the Complainants’ trademark under the above-described standard. The confusing similarity resulting from the use of the Complainant’s mark is not diminished by the addition of the generic term “Kaffeebereiter” (“coffee maker”), particularly as this is a prominent product sold under the Complainants’ mark. See Pfizer Inc. v. The Magic Islands, WIPO Case No. D2003-0870. See also National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain name incorporates the Complainants’ mark in its entirety and is confusingly similar. It is undisputed that the Respondents have not been authorized by the Complainants to use the Complainants’ mark. The Respondents notwithstanding have used the disputed domain name with a website displaying the Complainants’ BODUM-branded household products along with competing products, and providing links to third-party websites where both the Complainants’ products and competing products are offered for sale.
Pursuant to paragraph 4(c) of the Policy, the Respondents may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondents’ use of, or 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; or
(ii) the Respondents have been commonly known by the disputed domain name, even if they have acquired no trademark or service mark rights; or
(iii) the Respondents are making a legitimate noncommercial 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.
The Respondents have not submitted a Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondents’ registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
To the extent that the Respondents might claim to be resellers of the Complainants’ BODUM-branded products, the consensus view of UDRP panelists is that a reseller offering trademarked goods or services using a domain name containing the trademark may establish rights or legitimate interests in the domain name only where the following conditions are met:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
See WIPO Overview 2.0, paragraph 2.3. The leading decision is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (hereinafter “Oki Data”). Some panels subscribing to the principles established in Oki Data have determined it may be applicable to both authorized and unauthorized resellers. See WIPO Overview 2.0, paragraph 2.3.
Having regard to all of the relevant circumstances in this case, the Panel finds that the Respondents have not demonstrated, consistent with the fair use principles underlying Oki Data, use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Even a cursory review of the record in this administrative proceeding demonstrates that the Respondents have not complied with any of the Oki Data standards. First, the record indicates that the Respondents are not in fact selling any products on their website, but are instead displaying the products in connection with links to third-party websites, presumably generating advertising revenue therefrom. Further, the Respondents have displayed on their website not only the Complainants’ trademarked products but competing products as well, evocative of “bait and switch” tactics. In addition, the Respondents do not effectively and accurately disclose their relationship (or lack thereof) with the Complainants.
Based on the record before the Panel, the Respondents clearly had the Complainants’ BODUM mark in mind when registering or acquiring the disputed domain name. The Panel finds that the Respondents registered or acquired the disputed domain name in order exploit and profit from the Complainants’ trademark rights through the creation of initial interest confusion. In the absence of any effective disclaimer, Internet users easily could be confused whether the Respondents’ website is affiliated with or has the endorsement or sponsorship of the Complainants. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondents’ conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is clear from the relevant circumstances that the Respondents were aware of the Complainants and had the Complainants’ BODUM mark in mind when registering or acquiring the disputed domain name. The record in this administrative proceeding reflects the registration and use of the disputed domain name in order to capitalize on or otherwise take advantage of the Complainants’ trademark rights, through the creation of Internet user confusion. In view of the foregoing, the Panel concludes that the Respondents registered and have used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to their website for commercial gain, by creating a likelihood of confusion with the Complainants’ mark as to source, sponsorship or affiliation. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.
In addition, the record in this case in the Panel’s opinion reflects abusive conduct suggestive of cyberflight. Whether there was a change in the underlying ownership of the disputed domain name after the filing of the Complaint cannot be determined reliably from the instant record, but it is a reasonable inference from the totality of the record that the post-Complaint changes in the relevant WhoIs registrant data, including the use of a privacy protection service, were intended to conceal the registrant’s true identity or to frustrate an assessment of liability in relation to registration and use of the disputed domain name. See No Zebra Network Ltda v. Baixaki.com, Inc., WIPO Case No. D2009-1071. While this Panel does not consider a domain name registrant’s use of a privacy service in and of itself to constitute bad faith under the Policy, privacy services are subject to manipulation by a registrant seeking to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy or elsewhere. There is substantial indication of such manipulation in the circumstances of this case. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <bodumkaffeebereiter.com> be transferred to the Complainant Pi-Design AG.
William R. Towns
Dated: February 2, 2012
1 This appears to be the result of actions taken by the Registrar after receipt of notice of the Complaint.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.