WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Simyo GmbH v. José Castrellón, CyberCast
Case No. D2014-1660
1. The Parties
The Complainant is Simyo GmbH of Düsseldorf, Germany, represented by Siebeke Lange Wilbert, Germany.
The Respondent is José Castrellón, CyberCast of Ricardo J. Alfaro, El Dorado, Panama.
2. The Domain Name and Registrar
The disputed domain name <simyo-webshop.com> (the "Domain Name") is registered with 1API GmbH (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 24, 2014. On September 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 25, 2014, 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.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 22, 2014.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on October 30, 2014. 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 owns since 2005 both a word and figurative community trademark of the European Union with the name Simyo, under the classes 9, 35, 37, 38, 39, 42 and 43.
The Complainant uses the SIMYO trademark in connection with its main activity as a mobile communications provider, which is operating either directly or through licenses in different European countries (Germany, France, Spain and Benelux).
Associated with this activity, the Complainant is also selling equipment for telecommunications like mobile phones, tablets, memory cards, and other similar equipment.
The Complainant has granted a license for said trademarks to a Dutch company - Koninklijke KPN NV - who markets and sells Simyo products in the Netherlands through a website "www.simyo.nl" and a telephone online store.
The Domain Name <simyo-webshop.com> was registered on August 29, 2014, and it directs consumers to an online shop where are offered for sale a number of telecommunications products and devices and where the content is presented in Dutch language.
5. Parties' Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the Domain Name subject of this dispute.
The Complainant contends the following:
- the Domain Name is confusingly similar to the Complainant's trademarks;
- the addition of the suffix "webshop" will not have any impact on the overall impression of the dominant part of the name, Simyo, instantly recognizable as the Complainant's trademark. It is well established that the addition of generic terms to a trademark does not prevent confusing similarity;
- the Respondent has no rights or legitimate interests in the Domain Name and it is neither an agent nor a licensee of the Complainant and has no connection or affiliation with the Complainant;
- the Respondent has not been commonly known by the Domain Name and the Respondent has not acquired any trademark or service mark rights in and to the Domain Name; the Respondent, at the time of the registration of the Domain Name, was surely aware of the trademarks of the Complainant;
- the graphical characters and color used in the website are all confusingly similar if not identical to the ones used in the legitimate Complainant's website;
- at the date of the submission of the Complaint, the Domain Name pointed to a website selling mobile telephones at a price which is significantly lower than the average price that can be found for such goods on the market. Therefore, the Respondent does not use the Domain Name in connection with a bona fide offering of goods and services.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has several trademark registrations for SIMYO, which is also its company name. Therefore it has been proven that the Complainant has rights in the SIMYO trademark.
The Domain Name <simyo-webshop.com> incorporates the word "Simyo" which constitutes the Complainant's trademark and its company name.
The only difference between the Domain Name and the trademark of the Complainant is the addition of the name of generic term "webshop". The addition of the mentioned word does not add a distinctive element to the Domain Name and does not render it dissimilar to the trademark of the Complainant. It is well established that the addition of generic terms to a trademark does not prevent confusing similarity. Moreover, in this case, the addition of the generic term "webshop" may add further confusion to the Internet user who is looking for websites associated to the trademark of the Complainant (see e.g. Carlsberg A/S v. Personal / decohouse, decohouse, WIPO Case No. D2011-0972; BP p.l.c. v. Kang-Sungkun Portraits Production, WIPO Case No. D2001-1097; Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709 and The Nasdaq Stock Market, Inc. v. Vidudala Prasad, WIPO Case No. D2001-1493).
Additionally, the Panel may disregard, when analyzing the identity or confusing similarity, the generic Top Level Domain ("gTLD") suffix - in this case ".com" - because in this case it is merely a necessary component of the Domain Name and does not give any distinctiveness (see i.e., Crédit Industriel et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457).
There are numerous UDRP decisions stating that confusing similarity, for the purposes of the Policy, is generally established inter alia when a domain name wholly incorporates a complainant's mark and only adds a generic word along with it (see i.e., F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0694; Deceininck NV, Thyssen Polymer GmbH v. Beloussov Dimitriy, WIPO Case No. D2007-0347; Société des Bains de Mer et du Cercle des Etrangers à Monaco v. LaPorte Holdings, LLC., WIPO Case No. D2005-0526).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this case. There is a prima facie case made by the evidence provided to the Panel that the Respondent has no rights or legitimate interests in the Domain Name (Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grande Media, WIPO Case No. D2007-0840 and UPIB, Inc. v. Texas Internet, WIPO Case No. D2004-0073).
The Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark SIMYO, nor has the Respondent been authorized to register and use the Domain Name.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Based on the evidence presented by the Complainant, the Panel considers that the Respondent registered and used the Domain Name in bad faith.
As sufficient evidence of registration in bad faith, the Panel finds that the Respondent registered the Domain Name (which corresponds to a widely known trademark with the addition of the word "webshop") most probably with knowledge of the Complainant's rights. Given the fame of the Complainant's marks, only someone who was familiar with the Complainant and/or its marks would have registered such a confusingly similar Domain Name, and more so when considering that the website at the Domain Name is using Dutch language - Dutch is the language of the business location and main market of the Complainant - and using color and character styles so similar to those used by the Complainant (see Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0850; AT&T Corp. v. Xinzhiyuan Management Consulting Co., Ltd., WIPO Case No. DCC2004-0001; British Sky Broadcasting Group plc, v. Mr. Pablo Merino and Sky Services S.A, WIPO Case No. D2004-0131; Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487).
There is no information as to the business activity of the Respondent that would justify the registration and the use of the Domain Name; nor is there evidence of any rights or legitimate interests in the Domain Name by the Respondent. The Panel believes that, in the absence of any rights or legitimate interests and in the absence of any contrary evidence from the Respondent, the Respondent's registration of Domain Name confusingly similar to the Complainant's trademark was done in bad faith (see Accor v. Howell Edwin, WIPO Case No. D2005-0980; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395; Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
The Domain Name was connected to a website offering mobile telephones for sale being sold at prices much lower than what normally available in the general market. The Panel is of the opinion that the Respondent has registered the Domain Name with the intent to profit from the reputation of the famous trademark of the Complainant to attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the websites (Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031, the panel stated that, "…by registering and using the disputed domain name incorporating the Complainant's widely-known and widely-registered trademark ELECTROLUX, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent's activities are approved or endorsed by the Complainant").
Taken together with the fact that the Respondent has not filed any Response in this proceeding in support of any good faith registration or use, the Panel believes that the Complainant has demonstrated that the disputed Domain Name has been registered and 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, <simyo-webshop.com> be transferred to the Complainant.
Date: November 13, 2014