WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kienbaum Consultants International GmbH v. Peter Pankovic
Case No. D2012-0222
1. The Parties
The Complainant is Kienbaum Consultants International GmbH of Gummersbach, Germany, represented by Harte-Bavendamm, Germany.
The Respondent is Peter Pankovic of Jaritea, Romania.
2. The Domain Name and Registrar
The disputed domain name <kienbaum-executive.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2012. On February 8, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 9, 2012, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 16, 2012 providing the registrant and contact information disclosed by eNom, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 20, 2012.
The Center verified that the Complaint together with the amendment 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 February 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2012.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on March 22, 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.
Regarding the language of the proceeding, the Center ascertained from the concerned Registrar, eNom, that the language of the Registration Agreement is English. Accordingly, the Panel determines that pursuant to paragraph 11(a) of the Rules the language of the proceeding is English, i.e., the language of the registration agreement.
4. Factual Background
The Complainant is part of the Kienbaum Group, founded in Germany in 1945, which is the market leader in Germany for executive search and human resources management services. The Kienbaum Group comprises, in addition to the Complainant, six other companies, and employs 720 persons in 13 offices in Germany and has also 20 offices outside Germany, including in Romania.
The Complainant is the company, within the Kienbaum Group, holding the rights in the trademarks containing KIENBAUM.
For instance, the Complainant is the owner of the following trademarks:
German trademark No. 39929257 KIENBAUM, registered on October 22, 1999 and duly renewed on June 1, 2009;
International trademark No. 726516 KIENBAUM registered on November 19, 1999 in the designated member states Armenia, Azerbaijan, Belarus, Switzerland, China, Czech Republic, Georgia, Croatia, Hungary, Japan, Kirgizstan, Kazakhstan, Moldova, Poland, Russian Federation, Slovakia, Tajikistan, Turkmenistan, Turkey, Ukraine, United States of America, Uzbekistan. The only countries for which the International Registration was not renewed in 2009 were the Czech Republic, Hungary, Poland;
German trademark No. 39929259 KIENBAUM (colour device), registered on December 2, 1999 and duly renewed on June1, 2009;
Community trademark No. 01186998 KIENBAUM, registered on July 12, 2000 and duly renewed on May 27, 2009;
Singapore trademark No. T0118015 E KIENBAUM, registered on July 12, 2003 and renewed on November 21, 2011;
Indian trademark No. 995517 KIENBAUM registered on March 2, 2010;
In addition, the Complainant has registered and is using the trademark KIENBAUM as a domain name and is the proprietor of many domain names, e.g. <kienbaum.com>, <kienbaum.de>, <kienbaum.ag>, <kienbaum.at>, <kienbaum.be>, <kienbaum.bis >, <kienbaum.ch>, <kienbaum.cn>, <kienbaum.co.in>, <kienbaum.co.jp>, <kienbaum.co.uk>, <kienbaum.com.es>, <kienbaum.com.pt>, <kienbaum.com.ru>, <kienbaum.com.tr>, <kienbaum.cz>, <kienbaum.dk>, <kienbaum.es>, <kienbaum.eu>, etc., as well as domain names with the name “kienbaum” and a descriptive addition, such as <kienbaum-coaching.de>, <kienbaum-consultants.com>, <kienbaum-consultants.de>, <kienbaum-consultants.eu>, <kienbaum-partner.com>, <kienbaum-headhunter.de>.
The Complainant also owns rights in “Kienbaum” as a business name under § 5 (1), (2) German Trademark Act as, under German Trademark Law, the effective use of a distinctive name as a business identifier, either by a domain name in use such as <kienbaum.de>, which is used by the Complainant, or in the form of the company Kienbaum Consultants International GmbH, conveys upon the owner of such domain name and business name an exclusive right in this name, given in particular that “Kienbaum” is not a common civil name in Germany, having no particular meaning and thus is highly distinctive.
The disputed domain name was created on November 22, 2011.
5. Parties’ Contentions
(i) The Complainant submits that the disputed domain name reproduces the trademark KIENBAUM in which the Complainant has rights, and is confusingly similar to that trademark insofar as the disputed domain name contains that trademark in its entirety.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent has not used, or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Furthermore, the Complainant contends that the Respondent is not and cannot be said to be making any legitimate noncommercial or fair use of the disputed domain name, and has no connection to the Complainant, from which he received no authorization.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. It alleges that by registering the disputed domain name the Respondent has intentionally attempted to mislead the Complainant's customers, such as Haribo. The Respondent, by creating an e-mail address with the disputed domain name is sowing deliberate confusion and/or deception with the Complainant’s trademark KIENBAUM, disrupting its legitimate use and troubling its customers. Lastly, the fact that the Respondent has sought to protect its details from being published by using privacy services further exemplifies its bad faith.
(iv) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Procedural Aspects
The Respondent is formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondent within the time limit set by the Policy and the Rules.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that the Panel shall proceed to a decision on the basis of the Complaint.
Paragraph 10(a) of the Rules gives the Panel broad discretion to conduct the proceedings and the Panel must ensure that the proceedings take place “with due expedition”.
Accordingly, in the interest of fairness and of deciding the case on the basis of the most complete available record, the Panel has undertaken some limited factual research into matters of public record insofar as it felt it needed the results of such research to reach its decision.
The Panel thus ascertained that the disputed domain name currently resolves in a free parking web page provided by a third party, which seems to be currently inactive.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name or other remedy have been met.
Under paragraph 14(b) of the same Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant.
In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
6.2 Requirements of Paragraph 4(a) of the Policy
A. Identical or Confusingly Similar
In comparing the trademark KIENBAUM to the disputed domain name, it is evident that the latter wholly incorporates the trademark, followed by the generic term “.com”. The addition of generic terms does not ordinarily serve to distinguish a domain name from registered marks. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672; Habit Holding Co. L.L.C. v. None/Michael Pimentel, WIPO Case No. D2004-1009 and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.
In the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, it had been held that “[…] the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”.
The added term “executive” in the disputed domain name cannot diminish the confusing similarity. It is a generic and descriptive term commonly used in connection with the consulting business, indicating that the consulting services are intended to be offered mainly to executive employees or shareholders of a business.
The sign “kienbaum” remains the only distinctive part in this domain name as the added descriptive term “executive” cannot be considered sufficient to avoid the confusion caused by the use of the trademark in the disputed domain name. See F. Hoffmann-LaRoche AG v. Clear Foto, WIPO Case No. D2009-0501; Betsson Malta Limited v. Panflio Greghini, WIPO Case No. D2009-0219; Jafra Cosmetics, S.A. de C.V. v. La Peer Beauty, WIPO Case No. D2007-1829; Accenture Global Services GmbH v. Alok Mishra, WIPO Case No. D2007-0559; Cap Gemini v. Anant Goel, WIPO Case No. D2011-1310.
On the contrary, the added term “executive” rather increases the confusing similarity as it is a generic term that is commonly used in the Complainant’s business and also by the Complainant itself. In conjunction with the consulting business, the term “executive” moreover refers to special consulting services for business management and human resources management. Moreover, one of the Complainant’s affiliated companies is called Kienbaum Executive Consultants GmbH.
This underlines the confusing similarity of the disputed domain name with the trademarks of the Complainant.
The Panel finds that the disputed domain name is confusingly similar to the trademark KIENBAUM, which it incorporates in its entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although a 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 proposition, requiring information that is primarily if not exclusively within the knowledge of the respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy 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 (as the Panel believes it has made in this case). See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent did not submit a Response, thus offering no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or a corresponding name or uses a corresponding name in a business. The website associated with the disputed domain name resolves in a free parking page, and no information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no legitimate interests in the disputed domain name; (ii) has never made a fair use of the disputed domain name, in relation with a bona fide offering of goods and services, and has not made demonstrable preparations of such use; and (iii) has no connection to or authorization from the Complainant. On the contrary, the record shows the Respondent has made preparations for an abusive use of the disputed domain name.
In the circumstances, the Panel is satisfied that the Complainant has established the second requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering a domain name confusingly similar to the Complainant’s trademark.
It is well known that the registration of a domain name confusingly similar to a trademark by any entity that has no relationship to that mark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
Furthermore, at the time the disputed domain name was registered, the Complainant had widespread use of its trademark KIENBAUM for numerous years. The notoriety of the trademark KIENBAUM is demonstrated when typing it in Google, as all results lead to the Complainant. Coupled with the presence of an office of the Complainant in Romania, where the Respondent is located, such notoriety make it highly unlikely that the Respondent would not have known of the Complainant's rights in the trademark prior to acquiring the disputed domain name. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, L.L.C. vs. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028.
According to the Complainant, the disputed domain name was registered by the Respondent to create misleading email-accounts and to use these with the intention of getting new clients to the detriment of the Complainant or of obtaining confidential information deriving from the relationship between the Complainant and its customers. In both cases, this would be bad faith registration and use.
In addition, the Panel can discern no legitimate basis for the Respondent’s use of privacy shield services and considers this fact under the present circumstances as further evidence of bad faith. See Gaylord Entertainment Company v. Nevis Domains LLC, WIPO Case No. D2006-0523.
The Panel concludes in these circumstances that the Respondent’s registration, use and present passive holding of the disputed domain name indicate bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <kienbaum-executive.com> be transferred to the Complainant.
Dated: April 4, 2012