The Complainant is Staatliches Hofbräuhaus from München, Germany, represented by Boehmert & Boehmert, Germany.
The Respondent is Domain Admin of Nobby Beach, Queensland, Australia / Prakhar Bindal, Axsiom Domains Pvt Ltd of Gurgaon, Haryana, India, self-represented.
The disputed domain name <hofbraubeer.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2015. On June 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 2015, 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 Respondent and contact information in the Complaint. The Complainant filed an amendment to the Complaint on July 3, 2015.
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 Respondent of the Complaint, and the proceedings commenced on July 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was initially July 28, 2015. The Center received informal communications on behalf of the Respondent on July 8 and 9, 2015. Following such email communication, the proceedings were suspended at the request of the Complainant until July 28, 2015, in order that the Parties explore a possible settlement. At the request of the Complainant dated July 21, 2015 the proceedings were re-instituted and the due date for Response was August 6, 2015.
The Respondent has not submitted a Response.
The Center appointed Mihaela Maravela as the sole panelist in this matter on August 17, 2015. 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.
As regards the language of the proceeding, pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, 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. In its verification response the Registrar confirmed that the language of the Registration Agreement for the disputed domain name was the English language. Consequently, the English language is the language of the proceeding.
The Complainant is a brewery in Munich, Germany, owned by the Bavarian state government. The brewery and the respective Inn called “Hofbräuhaus am Platzl” or just “Hofbräuhaus München” were founded in 1589 by William V, Duke of Bavaria. In recent times Hofbräu München, still in the possession of the Bavarian state, is one of the last two traditional Munich breweries still in Bavarian ownership. There are several franchise partners operating Hofbräuhaus Inns all over the world, including in Newport, Kentucky, Las Vegas, Nevada, Pittsburgh, Pennsylvania, Chicago, Illinois, Cleveland, Ohio, in the United States of America and Shanghai and Jiangyin in China. The Complainant owns a portfolio of HOFBRÄU trademarks for its goods and services.
The disputed domain name was registered in December 26, 2014, and is linked to a webpage with sponsored listings.
The Complainant contends that the disputed domain name <hofbraubeer.com> is confusingly similar to the trademark registrations of the Complainant. The use of the letter “a” in the disputed domain name instead of the letter “ä” in the Complainant’s trademark is a common adaption for languages not including the letter “ä” which represents a vowel sound in German language. Also, inclusion of a generic term into the disputed domain name, such as beer, is not sufficient to avoid the finding of a likelihood of confusion. There is a significant risk that consumers who are actually looking for the website of the Complainant are misdirected and this risk is increased by the fact that the generic term “beer” describes the actual goods the Complainant’s trademark has been registered and the Complainant is famous for.
The Complainant also contends that there is no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the domain name. The holder of the disputed domain name has neither published any real content on the website neither plans to do so since the domain name is offered for sale, therefore at least prima facie, the Respondent does not have any rights or legitimate interests in regard to the disputed domain name.
Moreover, the Complainant argues that the disputed domain name was registered in bad faith since at the time of the registration HOFBRÄU beer had already been established for more than 400 years and built up an international reputation for half of century. The Respondent uses the disputed domain name in bad faith, primarily for the purpose of selling the domain name to the Complainant or one of its competitors, meanwhile making profit by misleading Internet users who actually look for the Complainant’s services. As stated in the Complaint, the fact that the Respondent has asked 6,500 USD for the sale of the disputed domain name clearly indicates that the Respondent is aware about the Complainant’s trademark and its corresponding value as a domain name. This price is far in excess of his acquisition costs and therefore in itself proves that the Respondent registered and uses the disputed domain name in bad faith.
The Respondent did not submit any formal response within the Response due date. However, on July 9, 2015 an email message was provided to the Center on behalf of the Respondent in reply to the notification of Complaint and commencement of administrative proceedings whereby it was stated that there is no need for the UDRP to proceed since “I have settled this issue with Fred who is the President at HofBrauHaus and the domain is in process of being transferred to them”.
No further communication was received from the Respondent.
Noting the fact that the Respondent has not filed a formal Response, the Panel shall consider the issues referred to it, based on the statements and documents submitted to the Panel, including the communication from the Respondent referred to above.
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.)
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) that the Respondent has 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.
The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark.
Here, the Complainant has demonstrated ownership of various HOFBRÄU registered trademarks, among which:
- German Trademark Registration No. DE00200117 HOFBRÄU registered on April 7, 1914;
- Community Trademark Registration No. CTM09822008 HOFBRÄU, registered on March 18, 2011;
- International Registration IR00301497 HOFBRÄU, registered on August 17, 1965.
The Complainant provided evidence in support of the above. These trademark registrations predate the registration of the disputed domain name (December 26, 2014).
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a straightforward comparison between the disputed domain name and the Complainant’s trademark rights.
Here, the disputed domain name incorporates the entirety of Complainant’s trademark, and the additional generic term does not reduce the prominence of Complainant’s trademark therein. The addition of the generic term “beer” only increases the likelihood of confusion because it relates to Complainant’s business and it is likely that consumers would be confused by the use of the trademark in the disputed domain name. (See Abdij Affligem v. Jiang Jun, WIPO Case No. D2013-0729).
The disputed domain name does not include the umlaut specific to German language, but this does not impede a finding of confusing similarity to the Complainant’s HOFBRÄU trademark. The disputed domain name is confusingly similar to the Complainant’s trademark. See for a similar finding SB Möbel Boss Handelsgesellschaft mbH & Co. KG v. Padi, WIPO Case No. D2011-1580.
In addition, it is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”) such as “.com”, is typically disregarded under the first UDRP element confusing similarity test.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, the Respondent’s use of, or 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) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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 consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) , which states: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]”.
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights. As such, the Complainant has established that it is the owner of the HOFBRÄU trademarks and claims that the Complainant has not licenced or otherwise authorised the Respondent to use the HOFBRÄU trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “Hofbräu”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.
By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any rights or legitimate interests in the disputed domain name.
Further, as discussed in section C. below, the Panel also finds that Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use, or that Respondent is commonly known by the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
As regards the registration in bad faith, this Panel is satisfied that the Respondent registered the disputed domain name with knowledge of the Complainant's HOFBRÄU trademarks given that the said trademarks have been used worldwide for many decades and the website to which the disputed domain name resolves contains sponsored listings with links to third-party websites offering beer and related products. Moreover, the Respondent has not denied knowledge of the Complainant. Under such circumstances, this Panel is of the view that bad faith registration can be inferred.
With respect to the bad faith use, the Panel finds that the website to which the disputed domain name resolves to sponsored links to other sites like “Brewing Beer” and “Budweiser Beer Company”, “Alcohol Beer”, Beer Advocate”. As held by other panels, it is well established that use of a complainant's trademark in a domain name with targeted sponsored links to third-party sites to attract Internet users to the respondent's website is bad faith registration and use. See for instance MBIT Trust, Inc. v. Glenn Gasner, WIPO Case No. D2009-1428 cited in Asahi Breweries Ltd. v. Whois Privacy Protection Service, Inc., Demand Domains, Inc., WIPO Case No. D2009-1481, Abdij Affligem v. Jiang Jun, supra.
In this respect, paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use.
Further, paragraph 4(b)(i) of the Policy states that where a registrant “has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name”, such behaviour may constitute evidence of bad faith registration and use.
The record shows that the disputed domain name has been put to sale and, when the Complainant made a bid for the disputed domain name, the minimum price requested on behalf of the Respondent was an amount of USD 6,500, which is in excess of the Respondent’s out-of-pocket costs directly related to the registration of the disputed domain name. Hence, the record appears to show that the Respondent primarily obtained the disputed domain name for the purpose of selling the disputed domain name to Complainant or Complainant’s competitors for valuable consideration. The record offers no evidence to refute this finding. See for a similar finding Abdij Affligem v. Jiang Jun, supra.
The Respondent apparently gave false contact information to the registrar in the form of a wrong telephone number and address. The provision of false contact information may under certain circumstances indicate an element of bad faith. Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In its email communication dated July 9, 2015, the Center was informed on behalf of the Respondent that the disputed domain name is in process of being transferred to the Complainant. Although the Complainant requested the proceeding be suspended in order that the Parties explore a possible settlement, no further communication was received from the Respondent and the proceedings were re-instituted following a request of the Complainant. This activity might be construed as bad faith use of the disputed domain name since no action seems to have been taken by the Respondent to actually transfer the disputed domain name to the Complainant while the Respondent had managed to gain further time generating pay-per-click revenue in the guise of making an alleged offer of settlement.
Having in view the above, the Panel is therefore satisfied that the Respondent has also used the disputed domain name 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 disputed domain name <hofbraubeer.com> be transferred to the Complainant.
Date: August 31, 2015