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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Josera GmbH & Co. KG v. Tornedalens

Case No. D2011-2104

1. The Parties

The Complainant is Josera GmbH & Co. KG of Kleinheubach, Germany represented by Astrid Nitz, Germany.

The Respondent is Tornedalens of Sweden.

2. The Domain Name and Registrar

The disputed domain name <josilac.com> is registered with Tucows Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2011. On December 1, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 1, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant, when informed by the Center that its Complaint was administratively deficient, filed an amendment to the Complaint on December 4, 2011.

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 December 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2011.

The Center appointed George R. F. Souter as the sole panelist in this matter on January 17, 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 the proprietor of German Trade Mark Registration No. 1157127, for the trade mark JOSILAC in respect of “foodstuffs for animals”, dating from July 6, 1989, and is also the proprietor of International Registration No. 819303, for the trade mark JOSILAC in respect of “foodstuffs for animals”, with extensions to Norway and Sweden, dating from October 6, 2003.

The disputed domain name was registered on February 10, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant states that it is the owner of the trade mark JOSILAC, and that it has used the trade mark constantly. It has provided details of a pan-European trade mark search, which disclosed no registered trade mark rights to the trade mark JOSILAC vested in any company other than the Complainant.

The Complainant contends that the disputed domain name is identical to its own trade mark JOSILAC.

The Complainant also alleges that the Respondent has no licence or allowance from it to use the disputed domain name or its trade mark for the Respondent’s own interests, and further alleges that the Respondent is not known by the disputed domain name. Accordingly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant has provided the Panel with a print-out of the disputed domain name in use, and claims that it presents products for the feeding of animals “for disrupting the business of the complainant”. The Complainant alleges that “the site is used for attracting visitors to the registrant’s site for commercial gain by creating a likelihood of confusion with complainant’s trademark, as the trademark is mentioned directly on top of the site”. The Complainant contends that the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name of the Respondent be transferred to the Complainant or be cancelled:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark (“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

It is well established in decisions under the UDRP that gTLD indicators (“.com”, “.info”, “.net”, “.org”) are legally irrelevant to the consideration of confusing similarity between a trade mark and a domain name. Taking this into account, it is clear that the disputed domain name and the Complainant’s trade mark JOSILAC are identical, and the Panel accordingly finds that the Complainant has satisfied the test of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Where the respondent has failed to demonstrate rights or legitimate interests in the disputed domain name, it is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy.

In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel can draw the appropriate conclusion under the Policy. The Panel accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Respondent’s website use clearly relates to sale of foodstuff for animals, and the Complainant’s trade mark JOSILAC is prominently displayed at the top of the website.

Because the Respondent lacked rights or legitimate interests in respect of the disputed domain name, and in view of the use displayed on the website operated under the domain name, thus potentially illegitimately harming the Complainant’s legitimate interests, the Panel finds that the disputed domain name was both registered and is being used in bad faith. The Complainant is, thus, deemed to have also satisfied the elements of 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 <josilac.com> be transferred to the Complainant.

George R. F. Souter
Sole Panelist
Dated: January 31, 2012

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