WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Blanco GmbH + Co KG v. true to
Case No. D2012-0843
1. The Parties
The Complainant is Blanco GmbH + Co KG of Oberderdingen, Germany, represented by Melbourne IT DBS Inc., United Kingdom of Great Britain and Northern Ireland.
The Respondent is True to of Cheshire, United Kingdom of Great Britain and Northern Ireland..
2. The Domain Name and Registrar
The Disputed Domain Name <blanco-sink.com> is registered with GoDaddy.com, LLC .
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2012. On April 20, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Disputed Domain Name. On the same date, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On May 1, 2012, the Center informed the parties of the close expiry of the Disputed Domain Name. On the same date, Mr. Wood, the administrative contact person of the Respondent, sent an email communication to the Center stating that he would be happy for “the domain to lapse”. On May 3, 2012, the Center informed the parties that according to paragraph 126.96.36.199 of the ICANN Expired Domain Deletion Policy provides, “in the event that a domain which is the subject of a UDRP dispute would be deleted or would expire during the course of the dispute, the Complainant in the UDRP dispute would have the option to renew or restore the disputed domain name under the same commercial terms as the registrant”. Moreover, the Center informed the parties of the possibility to suspend the proceeding in case they would wish to explore a possible settlement between the parties. On May 8, 2012, the Complainant informed the Center of the receipt of a communication from Mr. Wood and stating that no settlement was possible.
On May 8, 2012, the Center received an informal Response from Mr. Wood. On the same date, Mr. Wood sent an email communication stating that he was not willing to renew the Disputed Domain Name.
On May 9, 2012, the Center informed Mr. Wood that the Complaint filed against the Respondent was being verified and that once the formal requirements confirmed, it would be notified. The Center also informed that the Response would be due within twenty (20) calendar days of the date of commencement of the administrative proceeding. Finally, the Center informed Mr. Wood that if no further communications or formal Response received from Respondent by the due date for Response, the Center would forward the above referenced communication to the Panel for consideration (on appointment) in lieu thereof.
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 May 9, 2012.
On May 14, 1012, the registrar informed the parties that the Disputed Domain Name had been renewed as per Complainant’s request.
In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2012. No formal Response was received from the Respondent. Consequently, on May 30, 2012, the Center notified the parties of the commencement of the Panel Appointment Process.
The Center appointed Charné Le Roux as the sole panelist in this matter on June 8, 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 is a German company, founded in 1925, and is a very large producer of kitchen sinks. It has subsidiary companies in Germany, Austria, Switzerland, Belgium, France, United Kingdom, Ukraine, Czech Republic, United States of America, the Russian Federation, Canada, China, India and over 1200 employees worldwide. It had a turnover, in 2010 of 242 million Euros. The Complainant offers its kitchen sink products worldwide under the trade mark BLANCO and owns registered trade marks for this mark, including a United Kingdom trade mark registration dated January 1991 and a Community trade mark registration dated October 2002. The Complainant also owns domain names for <blanco.co.uk> (registered in 1998) and <blancogermany.com> (registered in 1995), from which it operates its websites. It also owns domain names incorporating the term “sink” such as <sinkscentres.az> and <sinksandmore.az>. It furthermore owns domain names incorporating the word “blanco” with words denoting its principal business interests, such as <blanco-steelart.com>, <blanco-catering.de>, <blanco-kitchentechnology.de> and <blancoseramik.com>.
The Respondent registered the Disputed Domain Name on May 3, 2011. The website at the Disputed Domain Name resolved, at the time of the Complaint, to a pay-per-click website showing sponsored links such as “buy kitchen sink taps”, “franke sinks” and “kitchen sink”.
5. Parties’ Contentions
The Complainant submits that it is a very large producer of kitchen sinks and that it has spent a significant amount of money promoting and developing the BLANCO trade mark to promote its business in this regard. It submitted evidence to the existence of trade mark registrations for BLANCO in the United Kingdom and European Union, dated January 1991 and October 2002 respectively. The Complainant also submitted evidence of a number of BLANCO domain names owned by it, as well as domain names incorporating the term “sink”, as set out above.
The Complainant contends that the Disputed Domain Name is confusingly similar to its BLANCO trade mark in that it wholly incorporates the BLANCO trade mark, combined with the generic term “sink”, but that the generic term does not detract from the confusing similarity.
The Complainant contends that the Disputed Domain Name was designed to lead consumers who are searching for the Complainant to the Respondent’s website.
The Complainant also contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
a) the Respondent does not own any registered trade marks or trade names incorporating the BLANCO trade mark;
b) the Respondent is not commonly known by the Disputed Domain Name. Instead, the public available WhoIs information lists the Respondent’s name as True To; and
c) the Respondent is not using the Disputed Domain Name in any way that would give it legitimate interests or rights in the name, but rather misleads the public by diverting them to the website to which the Disputed Domain Name resolves, which is a pay-per-click website providing a connection to goods or services competing with the Complainant, in order to generate a commercial benefit.
The Complainant further contends that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant and given the prominence of its BLANCO trade mark worldwide in connection with kitchen supplies, the Respondent registered the Disputed Domain Name exclusively with the attractive value of the Complainant’s trade mark BLANCO in mind.
The Complainant mentions the Respondent’s reaction to its cease and desist letter, to the effect that the word “blanco” in the Disputed Domain Name is a generic word in Spanish, meaning “white”. The Complainant takes the view that considering the fact that the Disputed Domain Name contains the word “sink” in English, together with the word “blanco”, that registration was not made with reference to the generic term “white”, but rather to the Complainant and its business. The Complainant submits that the Respondent could have used the word “sink” in Spanish, or a country code top level domain name specifically to target Spanish speaking people.
The Complainant requests that the Disputed Domain Name be transferred to it.
Mr. Wood (who appears to be the administrative contact of the Respondent) only filed an informal response to the Dispute on May 8, 2012. The Panel will make no distinction between Mr. Wood and True to, and for the purpose of this Decision, will refer to the “Respondent”. The Panel accepts in its discretion and in order to provide a fair opportunity to the Respondent to be heard, both the informal response, as well as the Respondent’s statement made to the Center on May 1, 2012 with the following wording:
“[…] Thank you for your email. Given the current circumstances I am only too happy for the domain to lapse. Is this feasible? Kindest regards, Tony”
In its informal response, the Respondent submits, without the disputing the Complainant’s trade mark rights, that there are no trade marks for the combination of the terms “blanco” and “sink”.
The Respondent also submits that the Disputed Domain Name was not registered in bad faith because the domain parking functionality is a default function when purchasing a domain name from the Registrar. It advises also that it has not, in fact, and as a consequence of its ownership of the Disputed Domain Name, received any financial or commercial remuneration from the pay-per-click links.
The Respondent contends that it did not purchase the Disputed Domain Name with the intention of misleading consumers, but that it is a private individual trading as True To Limited and that it is involved in a teaching and learning program aimed at teaching the Spanish language to English speaking children based in the United Kingdom. The Respondent contends, in connection with its election of the Disputed Domain Name , that an opportunity arose around learning opportunities within the kitchen environment.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove:
i) that the Disputed Domain Name is identical or confusingly similar to the trade mark in which it has rights;
ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainant owns registered rights in the trade mark BLANCO.
The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s BLANCO trade mark. The addition of the word “sink”, which is a generic word and non-distinctive, does not serve to distinguish the Disputed Domain Name from the Complainant’s BLANCO trade mark.
The first requirement of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel considers that the Respondent’s use of the Disputed Domain Name is not in connection with the bona fide offering of goods and services, such as to confer on the Respondent rights or legitimate interests for the purposes of the Policy. The Respondent has up to the date of the Complaint, only used the Disputed Domain Name for a pay-per-click website, with the intention to generate an income from it. The fact that the Respondent has not, in fact, generated any income is of no consequence.
The Panel rejects the Respondent’s version that the Disputed Domain Name was registered with the aim of creating a learning opportunity for United Kingdom based English speaking children in the Spanish language within the kitchen environment. The Respondent’s submissions in this regard are simply implausible. It is noteworthy that the Respondent has not in the year that it has owned the Disputed Domain Name, used the website attached to it for the alleged learning opportunity.
The Panel takes cognizance, in any event, of the Respondent’s intimation in its communication with the Center that it no longer has an interest in the Disputed Domain Name.
The second requirement of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel is persuaded that the Respondent registered and used the Disputed Domain Name intentionally to attract Internet users to its website, by creating the likelihood of confusion with the Complainant’s BLANCO trade mark as to the source and affiliation of the Respondent’s website. The following factors weighed heavily with the Panel in this regard:
a) that the Disputed Domain Name was registered well after the Complainant registered its trade mark BLANCO for kitchen sinks in the United Kingdom and European Union, where the Respondent is located;
b) that the Respondent combined the Complainant’s BLANCO trade mark with a generic word indicating one of the Complainant’s primary products;
c) that the Respondent did not use the website attached to the Disputed Domain Name for the purpose for which it claims it was registered, namely a teaching platform for English speaking children residing in the United Kingdom to learn the Spanish language, but rather as a pay-per-click website featuring sponsored links for goods competing with those of the Complainant.
The Panel finds that the Respondent clearly had the intention, when it registered the Disputed Domain Name, to profit from and exploit the goodwill associated with the Complainant’s BLANCO trade mark.
In accordance with paragraph 4(b)(iv) of the Policy, the Panel is satisfied that there is evidence of registration and use of the Disputed Domain Name in bad faith.
The third requirement of paragraph 4(a) of the Policy has been met.
For all 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 <blanco-sink.com> be transferred to the Complainant.
Charné Le Roux
Dated: June 21, 2012