WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Ralph Anderl v. Mr. Zuhai Luo
Case No. D2014-1751
1. The Parties
The Complainant is Mr. Ralph Anderl of Berlin, Germany, represented by Habermann, Hruschka & Schnabel, Germany.
The Respondent is Mr. Zuhai Luo of Guangdong, Shenzhen, China.
2. The Domain Name and Registrar
The disputed domain name <newicberlin.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 6, 2014. On October 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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. In response to a notification by the Center regarding the Complaint, the Complainant confirmed by email that there are no other current legal proceedings.
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 October 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 5, 2014.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on November 11, 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 is the managing director of the German company ic! berlin brillen GmbH. The Complianant's company is a manufacturer of designer spectacles and sunglasses sold under the brand Ic! Berlin.
The Complainant is the owner or co-owner of several trademarks with respect to IC, IC!, IC! BERLIN and IC!-BERLIN throughout the world, including the Chinese Trademark No. 1670323, registered in November 2001. The trademarks are exclusively licensed to the Complainant's company.
The disputed domain name was registered on September 11, 2014. The Respondent appears to be using the disputed domain name to market eyeglasses products, including products branded with the Complainant's trademarks.
5. Parties' Contentions
The disputed domain name <newicberlin.com> is identical or closely similar to the Complainant's trademarks. In particular, the remaining domain parts differ typographically from said trademarks only by the exclamation mark which is due to the rules for URL names. The term "new" is merely descriptive. In summary, there exists such close similarity and even identity between the disputed domain name and the trademarks of the Complainant that there will be likelihood of confusion among the relevant public.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not use the disputed domain name to bona fide offer goods. The spectacles offered on the Respondent's website are in a price range of USD 170, which for the respective models is below the retail price offered by the Complainant's company. The spectacles offered thus seem to be counterfeits of ic! berlin branded spectacles. The Respondent is not known to the Complainant and is not an authorized dealer of the Complainant's company.
The disputed domain name was registered and is being used in bad faith. The disputed domain name was clearly registered with the only purpose to mislead possible consumers, which suggests that the Respondent has no legitimate interest in using the disputed domain name. It was registered in bad faith with the aim to disrupt the business of the Complainant's company and to mislead possible consumers so as to acquire own commercial gain from selling counterfeit spectacles to consumers, who erroneously believe that they are ordering genuine ic! berlin branded spectacles. The fact of bad faith is further supported by the fact that the Respondent's website clearly uses the same photographic material as the Complainant's website, as can be seen by a comparison of both parties' websites.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
According to the consensus view of UDRP panels, the addition of generic terms such as "new" to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9; see. also the similar fact pattern in a recent case between the same parties, Ralph Anderl v. Zhuhai Luo, WIPO Case No. D2014-0707).
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks. The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Based on the Complainant's contentions, the Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
Moreover, there are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name.
The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has thus fulfilled paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Considering the evidence submitted by the Complainant, this Panel is satisfied that the Respondent used the disputed domain name to divert Internet traffic to an unrelated website containing the Complainant's logo, for the purpose of achieving commercial gain. Such conduct constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly, the Complainant has also satisfied paragraph 4(a)(iii) of the Policy.
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 <newicberlin.com> be transferred to the Complainant.
Date: November 21, 2014