WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ED Enterprise AG v. Midwest Electronics
Case No. D2012-1413
1. The Parties
The Complainant is ED Enterprise AG of Grünwald, Germany, represented by RWZH rechtsanwälte, Germany.
The Respondent is Midwest Electronics of Illinois, United States of America (“USA”) / Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona USA.
2. The Domain Name and Registrar
The disputed domain name <blaupunkt-usa.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2012. On July 12, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On July 14, 2012, 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.
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 July 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August14, 2012.
The Center appointed Edoardo Fano as the sole panelist in this matter on August 31, 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 Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of the Respondent’s response.
The language of the proceeding is English, being the language of the Registration Agreement.
4. Factual Background
The Complainant is ED Enterprise AG, a German Company in the business of licensing and investing, owner of several trademarks among which BLAUPUNKT. Since 1920 the trademark BLAUPUNKT has been used all over the world for radios and other technical apparatus.
The Complainant is the owner of around 200 trademark registrations for BLAUPUNKT, among which:
- German Trademark Registration BLAUPUNKT, No. 518311;
- International Trademark Registration BLAUPUNKT and device, No. 314163;
- United States Trademark Registration BLAUPUNKT and device, No. 74354162;
- United States Trademark Registration BLAUPUNKT, No. 72045714;
- Community Trademark Registration BLAUPUNKT and device, No. 001812825.
The Complainant provided evidence in support of the above.
The disputed domain name <blaupunkt-usa.com> was registered on December 2, 2009. At the time of filing the Complaint, the disputed domain name pointed to a landing page “under construction”.
5. Parties’ Contentions
The Complainant states that the disputed domain name <blaupunkt-usa.com> is confusingly similar to its trademark BLAUPUNKT, being a combination of the generic word “usa” and the Complainant’s trademark BLAUPUNKT.
Moreover, the Complainant affirms that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register and/or use the disputed domain name and it is not making a noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant further asserts that its trademark BLAUPUNKT enjoys worldwide reputation and the Respondent could not have registered the disputed domain name without knowledge of the Complainant’s trademark rights.
Finally, the Complainant argues that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website.
The Respondent has made no formal substantive reply to the Complainant’s contentions and is in default; in reference to paragraphs 5(e) and 14 of the Rules no exceptional circumstances explaining the default have been put forward.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn (see also Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of 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 Complainant is the owner of the trademark BLAUPUNKT both by registration and acquired reputation and that the disputed domain name <blaupunkt-usa.com> is confusingly similar to the trademark BLAUPUNKT.
Regarding the addition of the generic word “usa”, the Panel notes that it is now well established that the addition of generic terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the word “usa” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.
It is also well accepted that a top-level domain suffix, in this case “.com”, may be ignored when assessing the similarity between a mark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a formal substantive Response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has a right or legitimate interest in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.
The Panel therefore finds that the Policy, paragraph 4(a)(ii), has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] 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) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line 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 [the respondent’s] web site or location.”
As regards to the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark BLAUPUNKT is clearly established and the Panel finds that the Respondent knew or must have known that the Complainant and/or its trademark, and that therefore the disputed domain name was registered in bad faith.
As regards the use in bad faith, at the time of filing the Complaint the disputed domain name pointed to a landing page “under construction”. The Panel considers that bad faith may exist even if the Respondent has done nothing but register the disputed domain (so-called “passive holding”, as set forth in the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
On the other hand, at the present time the website at the disputed domain name is a page with several links, possibly automatically generated, referring to third party products and services as well as to products manufactured by the Complainant (namely “autoradio”).
Therefore, the Panel considers that this use of the website associated with the disputed domain name must be considered in bad faith since some of the links on the website at the disputed domain name, even in the case they are automatically generated, were referring to third party products or services while others more referring to the same products manufactured by the Complainant. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.4.
All of the above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <blaupunkt-usa.com> be transferred to the Complainant.
Dated: September 6, 2012