WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Simyo Gmbh v. José Castrellón, Cyber Cast Intl
Case No. D2014-2245
1. The Parties
The Complainant is simyo Gmbh of Düsseldorf, Germany, represented by Siebeke Lange Wilbert, Germany.
The Respondent is José Castrellón, Cyber Cast Intl of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <simyo-prepaid.com> is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2014. On December 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 29, 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 January 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2015.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on February 3, 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.
4. Factual Background
The Complainant is a German corporation marketing goods and services in the telecommunications field. It provides these goods and services by itself and also through licensees in Germany, France, Spain and the Benelux including by its licensee in the Netherlands, Koninklijke KPN NV (“KPN”). KPN provides communication services and markets “high-end” telecommunication devices such as mobile telephones and tablets at its website “www.simyo.nl”. The Complainant renders the trademark SIMYO in a distinctive font and in, or in association with, a distinctive orange colour.
The Complainant is the owner of Community Trademark No. 004319307, SIMYO, registered from September 22, 2006 for goods and services in international classes 9, 35, 37, 38, 39, 42 and 43. It is also the owner of Community Trademark No. 004384855, SIMYO within an irregular block device, registered from April 17, 2008 for goods and services in the same international classes.
The website at the disputed domain name, at the time of the Complaint, prominently displays the Complainant’s SIMYO trademark in the same distinctive font and using the same distinctive orange colour as the Complainant and its licensees. The language of the website is Dutch. At that website the Respondent offers communication devices such as mobile telephones and tablets in direct competition with the Complainant but at prices which are very substantially below those quoted by the Complainant.
The parties to this Complaint were also parties to an earlier Complaint in Simyo GMBH v. José Castrellón, Cybercast, WIPO Case No. D2014-1660,<simyo-webshop.com> in which the circumstances were substantially similar to those in the present Complaint. The decision in that case ordered transfer of the domain name and was dated November 13, 2014.
In accordance with the Rules, that decision would have been communicated to the Respondent very shortly thereafter.
The disputed domain name was created on November 19, 2014.
The Panel further notes that the Respondent has been the subject of at least three other complaints under the Policy in which the Respondent has been found to engage in conduct substantially similar to that in the present Complaint.
5. Parties’ Contentions
The Complainant contends as follows:
(i) The disputed domain name wholly contains the Complainant’s well-known trademark coupled with the descriptive word “prepaid”.
(ii) The Complainant has not licensed or otherwise authorized the Respondent to use its name and trademark SIMYO.
(iii) The Respondent must have known of the Complainant’s well-known trademark when it registered the disputed domain name only a few days after receiving an adverse decision in Simyo GmbH v. José Castrellón, CyberCast, WIPO Case No. D2014-1660 relating to the domain name <simyo-webshop.com>.
(iv) The website at the disputed domain name includes the word “Simyo” rendered in the same font and using the same orange colour scheme as that of the website of the Complainant’s licensee.
(v) At that website the Respondent offers telecommunication devices such as mobile phones and tablets at prices which are substantially below those offered by the Complainant and by other reputable traders in the telecommunications industry and which are, in its opinion ridiculously low, sometimes less than 50% of the prevailing market price
(vi) In consequence the Complainant alleges that the Respondent has no genuine intention of supplying the advertised goods, and goods paid for online are not delivered. The Complainant adduces no evidence as to this.
(vii) The Complainant’s website replicates the look and feel of the Complainant’s website and uses the Complainant’s name, trademark and distinctive font and colour and the Dutch language for the purpose confusing and misleading consumers into thinking that the website at the disputed domain name is the website of, or is associated with, the Complainant and/or its Dutch licensee thereby causing damage to the reputation of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name wholly contains the Complainant’s trademark. The generic Top Level Domain (“gTLD”) “.com”, is of no significance in comparing the domain name with the trademark for the purpose of the Policy and the addition of the descriptive word “prepaid” does not serve to distinguish the disputed domain name from the Complainant’s trademark. Rather it tends to increase the likelihood that consumers would assume the disputed domain name would lead to an area of the Complainant’s business relating to prepaid devices and services. The only distinctive element of the disputed domain name is the Complainant’s trademark and accordingly the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark SIMYO in respect of which it has established rights.
B. Rights or Legitimate Interests
The Respondent registered the disputed domain name only days after receiving notice of the UDRP decision adverse to it in Simyo GmbH v. José Castrellón, CyberCast, WIPO Case No. D2014-1660 discussed above. For that reason and also for the reasons expressed by the learned panelist in that case the Respondent must have been fully aware of the Complainant’s trademark rights when it registered the disputed domain name. The Complainant’s use of the disputed domain name to offer goods in competition with the Complainant cannot found a right or legitimate interest. The Respondent has not attempted to offer evidence of any other basis upon which such right or legitimate interest could be claimed.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
For the reasons discussed above it is apparent that the Respondent registered the disputed domain name in full knowledge of the rights of the Complainant in the trademark SIMYO. Such registration was clearly in bad faith.
The Respondent’s subsequent use of the disputed domain name indicates a clear intention to create at the disputed domain name a website which is likely to be taken to be the website of, or associated with, the Complainant and/or its Dutch licensee. At the website it offers for sale, in the Dutch language, goods in direct competition with the Complainant using the Complainant’s trademark, its look and feel, its font and its colour scheme. That is enough to constitute bad faith in accordance with paragraph 4(b)(iv) of the Policy irrespective of whether the offering of goods at the website was genuine or not.
The Panel therefore finds that the disputed domain name was registered and is being 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 disputed domain name <simyo-prepaid.com> be transferred to the Complainant.
Desmond J. Ryan AM
Date: February 16, 2015