WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chocoladefabriken Lindt & Sprüngli AG v. Sebastian Kochan

Case No. D2016-1849

1. The Parties

The Complainant is Chocoladefabriken Lindt & Sprüngli AG of Kilchberg, Switzerland represented by BrandIT GmbH, Switzerland.

The Respondent is Sebastian Kochan of Dresden, Germany, self-represented.

2. The Domain Name and Registrar

The disputed domain name <lindt.kaufen> is registered with 1&1 Internet SE (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2016. On September 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 15, 2016, the Center sent an email communication to the Parties in English and German, informing them that the language of the Registration Agreement for the disputed domain name was German, and invited the Parties to submit comment on the language of the proceeding. On September 16, 2016, the Complainant requested that English be the language of the proceeding. The Respondent made no submission by the specified date for comment on the language of the proceeding.

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 and 4, the Center formally notified the Respondent in both English and German of the Complaint, and the proceedings commenced on September 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2016. On September 28, 2016, the Center received an informal communication from the Respondent in German. No formal Response was submitted.

In light of the Respondent’s communication, on September 28, 2016, the Center invited the Parties to request suspension in order to explore settlement. On October 4, 2016, the Complainant requested that the Center proceed to a decision on the merits.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on October 18, 2016. 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 major international manufacturer of premium chocolate, with a global presence, headquartered in Switzerland. Currently, the Complainant’s chocolate is made by its 12 production sites in Europe and the United States of America. The products are sold all over the world by many subsidiaries and branches, as well as a comprehensive network of independent distributors spread across more than 120 countries. With a total workforce exceeding 13,000 employees, the Complainant’s Group reported sales worth CHF 3.65 billion in 2015.

The Complainant has operations in Germany where it operates under the local official website “www.lindt.de” to connect to German customers.

The Complainant submitted evidence that it holds trademark rights for LINDT. The trademark rights were granted for both word and figurative trademarks, in several classes and in numerous jurisdictions all over the world, including Germany. The rights include international trademark and European Union Trade Marks, with the earliest German registration dating to September 27, 1906 (the “Trademarks”).

The Complainant indicates it has also registered a number of domain names containing the term “lindt”, e.g., <lindt.com>, <lindt.net>, <lindt.de> and <lindt.ch>. The Complainant indicates it is using these domain names to connect to a website through which it informs potential customers about its LINDT mark and its products and services.

The Complainant also brings to the Panel’s attention that it has been established in previous UDRP decisions that LINDT is considered a well-known trademark (quoting inter alia Chocoladefabriken Lindt & Sprüngli AG v. Lasco Maxim, WIPO Case No. D2015-1430, and Chocoladefabriken Lindt & Sprüngli AG v. Whois Privacy Services Pty Ltd, WIPO Case No. D2015-0311).

The Respondent registered the disputed domain name <lindt.kaufen> on March 2, 2016, well after the Complainant secured rights in the Trademarks. The evidence presented by the Complainant as well as the Panel’s own research show that the disputed domain name <lindt.kaufen> does not currently resolve to an active website or other online presence. However, the Complainant provides evidence that before sending a cease-and-desist letter to the Respondent, the disputed domain name was linked to a pay-per-click site which contained chocolate advertisements using the name of the Complainant’s products and references to the Complainant’s company.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that the disputed domain name <lindt.kaufen> is identical to the Trademarks, since it directly and entirely incorporates the word element “lindt” used in the Trademarks. The Complainant also contends that the addition of the new generic Top-Level Domain (“gTLD”) “.kaufen” (in English: “buy”) does not add any distinctiveness to the disputed domain name.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that it has rights in the name and Trademarks LINDT and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant also affirms that the Respondent has not been licensed, permitted or authorized by the Complainant to use its Trademarks, or to seek registration of any domain name incorporating said Trademarks.

In addition, the Complainant contends that the disputed domain name <lindt.kaufen> does not correspond to the name of the Respondent, and that, to the best knowledge of the Complainant, the Respondent is not commonly known as “lindt”.

Finally, the Complainant claims that it did not find any fair or legitimate noncommercial use of the disputed domain name <lindt.kaufen>.

(c) The disputed domain name was registered and is being used in bad faith.

The Complainant submits that the disputed domain name was registered and used in bad faith by the Respondent.

The Complainant contends that since the Trademarks significantly predate the registration of the disputed domain name and since the Complainant has a strong business position in Germany (where the Respondent resides according to WhoIs), the Respondent must have been aware of the Trademarks at the time of registration.

The Complainant also contends that it tried to contact the Respondent by sending a cease-and-desist letter on March 11, 2016, in which it requested the Respondent to voluntary transfer the disputed domain name. Since there was no reply to this letter, the Complainant sent a reminder on March 21, 2016, which was also left unanswered. The Complainant indicates that the failure of a Respondent to respond to a cease-and-desist letter, or a similar attempt at contact, has been considered relevant in finding bad faith in previous UDRP decisions.

The Complainant indicates that the disputed domain name is not used for any bona fide offerings even if it is not yet connected to any website. The Complainant also submits that the concept of passive holding of a domain name may apply even in the event of sporadic use, or the mere “parking” by a third party of a domain name, as according to the Complainant happens in the case at hand. The Complainant explains that according to UDRP decisions (quoting in particular Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) passive holding of a domain name in appropriate circumstances constitutes evidence of bad faith registration and use.

The Complainant submits that the inaction in relation to a domain name registration can also constitute a domain name being used in bad faith and that any attempt to actively use the disputed domain name would lead to confusion as to the source, sponsorship of the Respondent’s website among Internet users who might believe that the website is owned or somehow associated with the Complainant.

The Complainant further contends that the fact that, before sending the cease-and-desist letter, the disputed domain name was linked to a pay-per-click site which contained chocolate advertisement using the name of the Complainant’s products, also testifies to the Respondent’s bad faith.

Finally, the Complainant indicates that the Respondent, using its official email address indicated in WhoIs, registered numerous domain names, including well-known brands with protected trademarks such us <haribo.kaufen> and <nestle.kaufen>. The Complainant contends that such pattern of abusive conduct constitutes evidence of bad faith.

B. Respondent

The Respondent submitted an informal communication in German in which he expressed his denial of all accusations made in the Complaint. He further stated that he offered the Complainant the swift sale of the disputed domain name via “www.sedo.de” and was further willing to transfer the disputed domain name for financial compensation. He further requested only to be contacted in German.

6. Discussion and Findings

6.1. Language of the proceeding

In accordance with paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. While both Parties had the opportunity to submit a language request, the Panel notes that only the Complainant has done so in a timely manner, bringing forward arguments as to why the language of the proceeding should be English. Taking into consideration the Respondent’s communication, the Panel finds it .reasonable to conclude that the Respondent has sufficient knowledge of English to have understood the content of the Complaint. Having been notified of the proceeding in English and German, the Respondent has not otherwise participated in the proceeding in any way. Bearing in mind the need for the proceeding to be conducted with due expedition, as set out in paragraph 10(c) of the Rules, the Panel finds that requiring the Complainant to translate the Complaint and related documents in German would only cause unreasonable delay and expense to the Complainant. For the reasons set out above, the Panel determines English to be the language of the proceeding and has rendered its decision accordingly.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to LINDT, including international trademarks.

Secondly, the Panel finds that the disputed domain name <lindt.kaufen> fully incorporates the word element of the Complainant’s LINDT Trademarks, in which the Complainant has exclusive rights.

The gTLD “.kaufen” (German for “buy”) is typically disregarded under the first element confusing similarity test.

On the basis of the foregoing findings, in accordance with paragraph 4(a)(i) of the Policy, this Panel finds that the disputed domain name is identical to the Complainant’s Trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent is commonly known by the name “lindt” or is in any way affiliated with the Complainant or authorized or licensed to use the Trademarks or to seek registration of any domain name incorporating the Trademarks.

After having examined the website operating under the disputed domain name, as evidenced by the Complainant and the Panel’s own research and findings, this Panel finds that the website currently does not show any activities.¹ In addition, according to evidence provided by the Complainant, before the cease-and-desist letter was sent to the Respondent, the disputed domain name was linked to a pay-per-click site which contained chocolate advertisements using the name of the Complainant’s products and references to the Complainant’s company.

Therefore, and in view of the evidence of the Complainant, this Panel finds that there is no evidence showing that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), 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 you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”.

First of all, with regard to the Respondent’s registration of the disputed domain name, after reviewing the evidence presented by the Complainant, this Panel believes that the Respondent must have known and been aware of the Complainant’s rights on the prior LINDT Trademarks and the associated products and services at the time of registration of the disputed domain name.

Furthermore, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s use of the disputed domain name.

As asserted by the Complainant, and supported in the provided evidence, before the cease-and-desist letter was sent to the Respondent, the webpage was linked to a pay-per-click site which contained chocolate advertisements using the name of LINDT’s products and references to the Complainant’s company. It therefore appears that the disputed domain name was used to attract visitors for commercial gain by confusing them into believing that they are accessing a site affiliated to the Complainant but instead generating revenue through the pay-per-click links (Tatts Group Limited v. Fei Zhu, WIPO Case No. D2016-1181).

After having examined the website operating under the disputed domain name, as evidenced by the Complainant and the Panel’s own research and findings, the Panel finds that the website currently does not show any activities. The Panel has therefore considered whether, in the circumstances of this particular case, as set out above under Section 5(A)(c) above, whether the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith. The Panel concludes that it does.

The Panel further finds that in light of the Respondent’s communication in which it indicated that it would transfer the disputed domain name to the Complainant for financial compensation, that the Respondent likely registered the disputed domain name with the intention of selling it to the Complainant for an amount in excess of its out-of-pocket costs associated with the disputed domain name within in the meaning of paragraph 4(b)(i) of the Policy.

In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under 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 disputed domain name <lindt.kaufen> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: October 28, 2016

¹ A panel may undertake limited factual research into matters of public record, including visiting the website linked to the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.5.