WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Blanco GmbH + Co KG v. Above.com Domain Privacy / Transure Enterprise Ltd
Case No. D2012-2145
1. The Parties
The Complainant is Blanco GmbH + Co KG of Oberderdingen, Germany, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondents are Above.com Domain Privacy from Beaumaris, Victoria, Australia; and Transure Enterprise Ltd from Tortola, British Virgin Islands, Overseas Territory of the United Kingdom and Northern Ireland.
2. The Domain Name and Registrar
The Disputed Domain Name <blancoshoponline.com> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 30, 2012. On October 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on November 12, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 14, 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 Respondents of the Complaint, and the proceedings commenced on November 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 5, 2012.
The Center appointed Stéphane Lemarchand as the sole panelist in this matter on December 18, 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 over 1200 employees worldwide and in 2010 they had a turnover of EUR 242 million. It has subsidiary companies in Germany, Australia, Switzerland, Belgium, France, United Kingdom, Ukraine, Czech Republic, United States of America, the Russian Federation, Canada, China, India and long term partners in about 100 further countries. The Complainant offers its kitchen sink products worldwide under the trademark BLANCO and owns registered trademarks for this mark, including a United Kingdom trade mark registration filed in November 1987 and an Australian trademark registration filed in May 1986. The Complainant also owns, directly or through its subsidiaries, several domain names incorporating BLANCO trademark, including <blanco.co.uk> (registered in 1998) and <blanco-australia.com> (registered in 2003) from which it operates websites.
The Respondents registered the Disputed Domain Name on June 7, 2012. The website at the Disputed Domain Name resolved, at the time of the Complaint, to a pay-per-click website showing sponsored links leading to all kinds of product categories.
The Complainant sent a cease and desist letter to the Respondents in August 28, 2012.
5. Parties’ Contentions
The Complainant submits that it is one of the largest producers of kitchen sinks in the world and that it has spent a significant amount of money promoting and developing the trademark BLANCO worldwide.
It submitted evidence to the existence of trade mark registrations for BLANCO in the United Kingdom and Australia, i.e.:
- UK registration for BLANCO, No. 1326276 filed in November 7, 1987 to designate storage and display articles and containers, baskets, dispensers, sinks, sink tops, shelves and racks, partitions and panels in class 6.
- Australian registration for BLANCO, No. 445650 filed in May 21, 1986 to designate non-metallic sinks in class19.
The Complainant also submitted evidence of a number of BLANCO domain names that it owns or is owned by subsidiaries, as set out above.
The Complainant contends that the Disputed Domain Name is confusingly similar to its BLANCO trademark in that it wholly incorporates the BLANCO trademark, combined with the generic terms “shop” and "online", but that the generic terms does not detract from the confusing similarity.
The Complainant also contends that the Respondents lack rights or legitimate interests in the Disputed Domain Name in that:
a) the Respondents do not own any registered trademarks or trade names corresponding to the Disputed Domain Name;
b) the Respondents are not commonly known by the Disputed Domain Name;
c) the Complainant did not authorized the Respondents to register the Disputed Domain Name;
d) the Respondents are not using the Disputed Domain Name in a way that would give it legitimate interests or rights in the name, but rather used it to divert the public to a website, which is a pay-per-click website providing a connection to goods or services, 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. The Complainant highlights in this respect that the Respondents have a clear record of cybersquatting considering the high number of cases against it, and is not making a legitimate noncommercial or fair use, only registering the Disputed Domain Name to benefit from the attractive value of the Complainant’s trademark BLANCO for its own commercial gain.
The Complainant requests that the Disputed Domain Name be transferred to it.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the Disputed Domain Name in order to succeed in this proceeding:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that 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 has registered rights in the trademark BLANCO, as well as domain names incorporating the trademark BLANCO, in several jurisdictions. From the documents provided in the Complaint, it is obvious that the trademark BLANCO is used in several jurisdictions, including in Australia for several years, and well before registration of the Disputed Domain Name.
It is a well-established principle that descriptive or generic additions to a trademark do not generally avoid confusing similarity of domain names and trademarks (as held in, inter alia, eBay Inc. v. ebayMoving c/o Izik Apo, WIPO Case No. D2006-1307). The Panel considers that the Complainant’s trademark BLANCO, which is placed in first position in the Disputed Domain Name, is instantly recognizable and remains dominant in the Disputed Domain Name, and that the adjunction of the generic terms “shop” and "online" does not differentiate the Disputed Domain Name from the Complainant’s trademark to exclude confusion. On the contrary, as put forward by the Complainant in the Complaint, the combination of the English terms "shop" and "online" to the trademark BLANCO, which corresponds a Spanish word, clearly indicates that the Disputed Domain Name was made with the Complainant's trademark in mind.
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that they have rights or legitimate interests in the Disputed Domain Name, among other circumstances, by showing any of the following elements:
(i) that before notice of the dispute, the Respondent used or made 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) that the Respondent have been commonly known by the Disputed Domain Name, even if they have acquired no trademark or service mark rights; or
(iii) that the Respondent 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 overall burden of proof for establishing that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Name lies with the Complainant.
However, the Complainant is required only to make out a prima facie case that the Respondents lack rights or legitimate interests. Once a prima facie case is made out, the burden shifts to the Respondents to come forward with appropriate evidence demonstrating their rights or legitimate interests in the Disputed Domain Name.
The Complainant states and the Panel accepts that it has never given the Respondents any license, permission or authorization to use the trademark BLANCO or to seek registration of any domain name incorporating that mark, or a variation of it.
There is no evidence that the Respondents own any rights corresponding to the Disputed Domain Name or have made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods.
The Panel considers that use of the Disputed Domain Name for redirection to a “parking website” which contained sponsored pay-per-click links including to commercial websites offering for sale different kind of goods and services does not provide a legitimate interest in the Disputed Domain Name.
Indeed, it is common knowledge that the way in which many of these services operate is that the domain parking service operators obtain “click through revenue” when Internet users click on the “sponsored links” on the displayed page. Many of these services will then provide the domain name registrant with part of that “click through” revenue.
Although there is nothing per se illegitimate in using a domain parking service, it is established that linking a domain name to such a service with a trademark owner’s name in mind and in the hope and expectation that Internet users searching for information about the business activities of the trademark owner will be directed to the parking service page, is a different matter and does not provide a legitimate interest in that domain name under the Policy (see, for example, Express Scripts, Inc. v. Windgather Investments Limited / Mr Cartwright, WIPO Case No. D2007-0267; and Owens Corning v. NA, WIPO Case No. D2007-1143).
In the absence of any further substantive explanation from the Respondent as to why it is that the Disputed Domain Name was registered, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondents lack rights or legitimate interests in the Disputed Domain Name.
Accordingly, and in the absence of any Response from the Respondents, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
C. Registered and Used in Bad Faith
The Complainant has numerous trademark registrations for BLANCO which well predate the registration date of the Disputed Domain Name. The Complainant's trademark was also used for several years as at that date, including in Australia where one of the Respondents is domiciled. The Panel finds that the Respondent must have been well aware of the Complainant’s mark at the time they registered the Disputed Domain Name.
The Panel is therefore satisfied that the Disputed Domain name was registered in bad faith.
The Panel’s finding in this regard is also supported by (but not dependent on) the Transure Enterprise Ltd (the Second Respondent)’s extensive history of registrations of domain names comprising other party’s trademarks which has led a previous panel to refer to the Second Respondent’s conduct as “not dissimilar to that of a serial cyber squatter”.
The Panel is also satisfied that the Disputed Domain Name is being used in bad faith, in particular for attracting Internet users to the Respondents’ website by creating a likelihood of confusion with the Complainant’s trademark. Pay-per-click sponsored links on the Respondents’ website are tailored to divert business to other brands of the Complainant’s products. There is therefore a demonstrated intent to attract Internet users to the Respondents’ website for commercial gain.
In light of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith.
Accordingly, the Complainant has proven the third element required by 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 <blancoshoponline> be transferred to the Complainant.
Date: December 27, 2012