WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ASAP LTD Import-Export S.p.A v. Guenther Schmalz
Case No. D2013-0359
1. The Parties
The Complainant is ASAP LTD Import-Export S.p.A of Firenze, Italy, represented by Studio Legale SIB, Italy.
The Respondent is Guenther Schmalz of Monaco.
2. The Domain Name and Registrar
The disputed domain name <asapgermany.com> (the “Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 25, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 27, 2013 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 amended Complaint on February 28, 2013.
The Center verified that the Complaint together with the amended 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 March 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2013.
The Center appointed Ian Lowe as the sole panelist in this matter on April 10, 2013. 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 an Italian company incorporated in 1993 active in the distribution throughout Europe of shoes and clothing of well-known brands, including WALKOVER, KORK, DR. MARTENS and UGG. The sign ASAP" has been used as the Complainant’s company name and as a trademark since 1993 as a result of which it has acquired significant reputation and goodwill in the name.
The Complainant is the owner of registered trademarks ASAP in a number of countries including Community Trademark No. 009619305 ASAP LTD (and device) registered as of December 22, 2010 for services in classes 35 and 39 including the selling and distribution of clothing and shoes.
The WhoIs publicly available information for the Domain Name dated March 7, 2013 describes the Respondent as “Trademark Attorney of Confidential Concepts S.A.M.” and states that the record was updated on February 25, 2013. The WhoIs record dated February 8, 2013 (before the filing of the present Complaint) shows that the registrant at that date was Absolutee Corp. Ltd. of Hong Kong which registered the Domain Name on June 12, 2012.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its ASAP trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Leaving aside the “.com” suffix, that may be ignored when assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy, the Domain Name comprises the entirety of the Complainant's ASAP trademark together with the non-distinctive, geographical term “Germany”. Although the Community trademark relied upon in particular by the Complainant is a device mark, the text “asap” is by far the most distinctive element of the trademark. In addition the Complainant has traded under the name “asap” since 1993. The Panel is therefore satisfied that the Complainant has registered trademark rights in ASAP and that it has also acquired unregistered trademark rights in ASAP as a result of its longstanding use of the name.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the trademark ASAP in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint. The Domain Name resolves to a web page (the “Website”) that very substantially replicates the home page of the Complainant's website with a very similar nighttime city skyline and almost identical text (save for the addition of the word “Germany”) in terms of both the name “ASAP” and the tabs named “shoes”, “clothing” and “accessories”. As a result, the Panel finds that the Respondent must have had the Complainant in mind when acquiring the Domain Name as must the Respondent's predecessor who originally set up the web page. Given the nature of the Website and the Domain Name, the Panel finds that the Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in the Domain Name. In the absence of a Response, there is no rebuttal of this strong prima facie case. The Panel cannot conceive of any such rights or legitimate interests.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
As stated above, the Panel considers it self-evident that the Respondent must have had the Complainant's ASAP trademark in mind when he acquired the Domain Name given the nature of the Website. In view of the Panel's finding that the Respondent has no rights or legitimate interests in the Domain Name, it follows that the Domain Name was registered or otherwise acquired in bad faith.
The Panel considers that the Respondents’ use of the Domain Name for a website comprising a very substantial reproduction of the Complainant's home page, whose get up is almost identical to that of the Complainant, is bound to lead Internet users visiting the Website to believe that it is associated with the Complainant or is otherwise authorized by it. Although there is no evidence of overt current commercial exploitation of the Website, in the Panel’s view it’s mimicking of the Complainant's home page and reproduction of the Complainant’s stylized device mark represents an actual or threatened exploitation of the Complainant’s trademark with a view to commercial gain.
In the circumstances, the Panel finds that the Domain Name was registered and is being used in bad faith.
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 <asapgermany.com> be transferred to the Complainant.
Date: April 25, 2013