World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Otto GmbH & Co KG v. Savetyuk Aleksandr Vitaliaevich

Case No. D2012-1311

1. The Parties

Complainant is Otto GmbH & Co KG of Hamburg, Germany, represented by Gorodissky and Partners, Ukraine.

Respondent is Savetyuk Aleksandr Vitaliaevich of Kiev and Brovary, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <otto-kiev.com> is registered with Center of Ukrainian Internet Names (UKRNAMES) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2012. On June 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2012. The Respondent did not reply to the Complaint. Accordingly, the Center confirmed Respondent’s default on August 7, 2012.

The Center appointed Clark W. Lackert as the sole panelist in this matter on August 24, 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.

The Complaint was submitted in the English language. The language of the registration agreement for the disputed domain name is Russian. On July 10, 2012, the Center sent a communication to Complainant requesting that Complainant submit evidence that the parties had agreed to conduct the proceedings in English or a translation of the Complaint in the Russian language. On July 12, 2012, Complainant submitted a version of the Complaint translated into the Russian language.

4. Factual Background

Complainant Otto GmbH & Co KG is a German retailer which sells clothing products in retail outlets and over the Internet via its websites using its OTTO name and trademark. Complainant has registered its OTTO trademark in multiple forms in numerous jurisdictions for a broad range of goods and services including clothing products and wholesale and retail services. These trademark registrations include those which are valid in the Ukraine, Respondent’s country of residence. Complainant owns and maintains multiple Internet domain names which feature its OTTO trademark including <otto.com>, <ottogroup.com>, and <otto.ua>. The websites featured at these domain names display Complainant’s OTTO trademark and advertise the goods and services provided under Complainant’s OTTO trademark.

Respondent is an individual who resides in the Ukraine.

The disputed domain name was created on July 8, 2010. The content of the disputed domain name is in Russian; it features Complainant’s OTTO trademark and advertises clothing products for sale.

5. Parties’ Contentions

A. Complainant

Complainant Otto GmbH & Co KG states that its company was founded in Germany by an individual named Werner Otto in 1950 and has since expanded its business to include subsidiaries in 20 countries and nearly 400 retail locations. Complainant claims to employ 50,000 people and that it has spent millions of Euros advertising and promoting the goods and services provided under its OTTO trademark throughout the world.

Complainant notes that its websites feature its OTTO trademark alongside information regarding its products and information for consumers seeking to purchase such products in Complainant’s retail locations and through Complainant’s authorized independent retailers. Complainant has provided pages from one of such websites directed to Ukrainian consumers which is located at “www.otto.ua” and features Complainant’s trademark, on-line catalogs, and information for Ukrainian consumers seeking its goods.

Complainant claims that the disputed domain name is confusingly similar to the OTTO trademarks in which Complainant has rights because it uses Complainant’s OTTO trademark in its entirety with the term “Kiev”, which Complainant notes is the name of the capital city of the Ukraine. Complainant notes that the use of “Kiev” with Complainant’s OTTO trademark to compose a domain name is likely to lead consumers to believe that the disputed domain name and its content are related to Complainant’s business in the Ukraine. Complainant alleges that the overall commercial impression created by the disputed domain name is not distinct from its OTTO trademark and maintains that the use of “Kiev” in the disputed domain name does not detract from its OTTO trademark or the overall commercial impression of the disputed domain name because “Kiev” is a geographic designation. Complainant also notes that the disputed domain name is composed with a hyphen in a similar manner to the domain name maintained by Complainant for its business in the Ukraine, namely <otto-ua.com>.

Complainant maintains that Respondent does not have a business relationship with Complainant and has not been authorized to use Complainant’s OTTO trademarks. The disputed domain name’s content is cited in the Complaint as a basis for Complainant’s claim that Respondent is exploiting Complainant’s OTTO trademarks, specifically the use of Complainant’s trademarks in the content of the disputed domain name by Respondent and the advertisement of goods and services identical to those provided by Complainant under its OTTO trademarks. Complainant alleges that Respondent is not commonly known by the disputed domain name and does not have any trademark or service mark rights in the terms used to compose the disputed domain name.

Complainant claims that the content of the disputed domain name is likely to confuse Internet users into believing that the disputed domain name is an official cite of Complainant or one of Complainant’s representatives. In support of this contention, Complainant cites design similarities between the webpages featured at the disputed domain name and those featured at Complainant’s domain names and the similarity in composition between the disputed domain name <otto-kiev.com> and Complainant’s official domain name for the Ukraine <otto-ua.com>. Complainant also cites references to its online catalog of goods which are featured on pages available at the disputed domain name as further evidence that consumer confusion is likely. Furthermore, Complainant claims that the disputed domain name has been registered by Respondent for commercial gain, citing Respondent’s use of the disputed domain name to sell products to consumers using Complainant’s OTTO trademarks.

Regarding bad faith, Complainant claims that Respondent’s registration of the disputed domain name is an attempt to intentionally attract Internet users to its website for commercial gain and that the literal elements used when registering the disputed domain name is evidence an attempt to create a likelihood of confusion with Complainant’s OTTO trademark as to the source, affiliation, sponsorship, or endorsement of Respondent’s web site by Complainant. Further, Complainant cites Respondent’s use of the OTTO trademark in the disputed domain name as evidence that Respondent is aware of Complainant and alleges that the design and content of the disputed domain name demonstrate that Respondent is using Complainant’s OTTO trademark for commercial gain.

Based on the above, Complainant has requested that ownership of the disputed domain name

<otto-kiev.com> be transferred from Respondent to Complainant.

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceedings

The Complaint was submitted in English. The language of the registration agreement is Russian. In compliance with a request issued by the Center, Complainant submitted a Russian translation of the Complaint.

The Complaint was served on Respondent in the Russian language. Respondent did not reply to the Complaint.

The Panel has the authority to determine the language of the proceedings based upon the circumstances of the case. The Panel notes that the original Complaint was filed in the English language and that a Russian translation of the Complaint was served on Respondent. In view of the original language submission and Respondent’s lack of participation in the proceedings, the decision is being issued in the English language. The Panel foresees no prejudice to either of the parties of issuing the decision in English.

B. Identical or Confusingly Similar

The disputed domain name is composed of the literal elements “Otto” and “Kiev”, which are separated by a hyphen (-). This composition ensures that the literal elements “Otto” and “Kiev” can be identified separately and are thus distinguishable. The literal element “Otto” is identical to the OTTO trademark in which Complainant has rights. Complainant’s trademark rights in OTTO precede the creation of the disputed domain name. The question is whether the inclusion of “Kiev” creates a distinct impression which would render the disputed domain name <otto-kiev.com> distinguishable from the OTTO trademark in which Complainant has rights.

It has been held by prior panels that geographic terms do not add distinctiveness to a domain name. These decisions include domain names which have used city names. For example, the decision in a complaint involving multiple domain names including <harley-davidson-london.com> <harley-davidson-london.net> concluded that the domain names were confusingly similar to the HARLEY DAVIDSON trademark in which the complainant had rights, citing the term “london” as non-distinctive (See H-D Michigan, Inc. v. Metal Horse Motorcycles, WIPO Case No. D2003-0781). The Panel notes that the use of “london” in that case (a city in England) and the use of “Kiev” in the present case are comparable. Additional cases involving domain names combining trademarks and city names in a similar manner have also been decided in favor of complainants for Paragraph 4(a)(i) of the Policy such as Luxottica Fashion Brillen Vertriebs GmbH/Luxottica Group S.p.A. v. Bingbing Chen, WIPO Case No. D2011-0217 (<raybanberlin.com>) and Harrods Limited v. Zhang Fashu, WIPO Case No. D2010-0414 (<harrodstokyo.com>).

The Panel finds that use of disputed domain name <otto-kiev.com> is confusingly similar to the OTTO trademark in which Complainant has rights. The term “Kiev” used in the disputed domain name is a geographic term which does not add distinction or create a different commercial impression from the OTTO trademark owned by Complainant. Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Complainant’s trademark rights in OTTO precede the creation of the disputed domain name. There is no evidence in the record that Respondent is licensed to use Complainant’s OTTO trademarks, that Respondent is associated with or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in OTTO as a trademark or trade name.

The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The record shows that Complainant has established trademark rights in OTTO in multiple jurisdictions including Ukraine, the country cited as Respondent’s jurisdiction of residence. Complainant’s trademark rights precede the creation of the disputed domain name.

Respondent’s use of OTTO in the disputed domain name indicates that he/she was aware of Complainant’s trademark when registering the disputed domain name. Any doubts in favor of Respondent are minimized upon consideration of Respondent’s lack of formal reply to the Complaint and the composition of the disputed domain name as <otto-kiev.com> which mimics the <otto-ua.com> domain name utilized by Complainant for its business activities in the Ukraine.

The Content of the disputed domain name indicates that Respondent is aware of Complainant. Specifically, the content features Complainant’s OTTO trademarks and photographs of the same types of clothing items sold by Complainant under its trademarks. Moreover, the content references Complainant’s online catalog and incorporates a copyright line which reads OTTO Internet shopping, women and men’s clothing, all rights reserved. This content is indicative of efforts by Respondent to trade off the goodwill of Complainant’s trademarks and has the potential to cause consumer confusion because it suggests that the domain name is authorized by, affiliated with, or otherwise related to Complainant. Confusion is especially likely given that the disputed domain name has been composed as <otto-kiev.com>, as this composition could lead consumers to believe that Respondent is a Ukrainian agent for Complainant which is based in the city of Kiev. Registration of a domain name incorporating another party’s trademark and use of the domain name to display content related to goods or services provided under that trademark has been held to be indicative of a respondent’ s knowledge of the goods or services provided under the trademark. See, e.g., Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517.

By registering the disputed domain name <otto-kiev.com> and advertising goods identical to those provided by Complainant under OTTO trademark, Respondent is diverting traffic from Complainant’s domain names in violation of paragraph 4(b)(iv) of the Policy. There is no evidence in the record to refute this conclusion. Registration of a domain name which is identical or confusingly similar to a trademark for the purpose of displaying content related to products or services is indicative of bad faith in violation of paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <otto-kiev.com> be transferred to Complainant.

Clark W. Lackert
Sole Panelist
Dated: August 31, 2012

 

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