WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chrono24 GmbH v. Sam Manning
Case No. D2015-0243
1. The Parties
The Complainant is Chrono24 GmbH of Karlsruhe, Germany, represented by NACHTWEY IP, Germany.
The Respondent is Sam Manning of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <chrono24outlet.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 February 13, 2015. On February 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 18, 2015, 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 February 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 13, 2015.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 1, 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 Chrono24 GmbH is a German company that operates an online-shop for new and used luxury watches.
The Complainant is owner of the trademark CHRONO24, which is registered as Community Trademark number 009027038, registered on December 6, 2010. The Complainant is also owner of the international Registration number 1117202 for the CHRONO24, registered on June 28, 2012.
At the time of filing the Complaint, the disputed domain name was offering watches online.
The disputed domain name was registered on January 6, 2015.
5. Parties' Contentions
The disputed domain name is confusingly similar to the trademark in which the Complainant has rights.
According to the Complaint, the trademark is used for an online-shop located at "www.chrono24.com", which has 6 million monthly site visits and over 3 million unique users. Complainant states that such domain name has more than 50 million page views (as of January 2013). According to the complaint due to this high volume of traffic, the trademark CHRONO24 is well-known in the business.
The Respondent registered the disputed domain name and used it for an online-shop using the same target group, selling the same product (new and used luxury watches) and using a confusingly similar domain name.
The Complaint states that the disputed domain name is composed of the trademark of the Complainant CHRONO24 and the word "outlet". Therefore, the first part of the disputed domain name is identical to the trademark, whereas this part has more distinctiveness as the last part. The Complainant states that the word "outlet" implies some kind of relationship to the original shop: outlets are known as shops for goods made for the last season or second quality. But those goods and services are always related to the original brand and never offered by another company. Therefore, Complainant concludes that the relevant consumers will be misled as both signs are nearly similar and the disputed domain name is used to take advantage of the prominence trademark of the Complainant.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is in the same business as the Complainant. The Respondent was contacted and informed about the trademark conflict. However, after sending a second letter with the extract from the OHIM register, no answer was received.
The Complainant states that the disputed domain name <chrono24outlet.com> was used in bad faith. In addition, the complaint states that a nearly identical logo (with same colors and structure) of the Complaint was being used by the Respondent (a screenshot dated January 20, 2015 is attached in Annex 4 of the Complaint).
According to the Complaint, the Respondent tried gain attraction by using a confusingly similar domain and creating confusion in the market by using marks and color used by the Complainant as to show the source or affiliation of the Respondent.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Even though the Respondent has defaulted, paragraph 4 of the UDRP requires that, in order to succeed in this UDRP proceeding, the Complainant must still prove its assertions with actual evidence demonstrating:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Because of the Respondent's default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Ltd. v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(e) of the Rules ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.") Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel's findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
The Complainant has established it has rights in the trademark CHRONO24. The only difference between the disputed domain name and the Complainant's trademark is the "outlet" term. The Panel finds that the disputed domain name is identical to the Complainant's mark as CHRONO24 is incorporated in its entirety in the disputed domain name and it is a well-established principle that elements such as ".com"or "org" may be disregarded when determining if there is identity or confusing similarity.
The Respondent has taken the CHRONO24 trademark in its entirety and merely added the generic word "outlet". The added word is insufficient to differentiate the disputed domain name and the CHRONO24 trademark, and actually enhances the connection given the meaning of the term "outlet".
Consequently, the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1 (after complainant makes prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests ("you" and "your" in the following refers to the particular respondent):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Panel finds credible and is persuaded by the Complainant's assertions that the Respondent is not authorized to use of the Complainant's mark in the disputed domain name.
By failing to respond to the Complaint, the Respondent did not pick up its burden to demonstrate rights or legitimate interests. And no other facts in the record tip the balance in the Respondent's favor. Accordingly, the Complainant has established that the Respondent lacks any rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants' trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service offered on the Respondent's website or location.
In the Panel's view, it is obvious that at the time the Respondent registered the disputed domain name it must have had the CHRONO24 trademark in mind. According to this Panel, the disputed domain name was set up to offer watches online with the idea of imitating the Complainants website. At the time of filing the Complaint, the disputed domain name contained a logo similar to Complainant logo as can be seen in Annex 4 of the complaint. The logo that was available in the disputed domain name contained the design of a watch with the terms "chrono24" and "outlet" with orange and green colors. The logo currently available at Complainant's website is also a watch with the terms "chrono24" in orange and green colors. In both logos, the trademarked term CHRONO24 has two different colors.
The Panel is therefore satisfied that the Respondent registered the disputed domain name with the Complainant in mind.
Furthermore, the use of the disputed domain name for offering online watches using the CHRONO24 trademarks is evidence of bad faith use pursuant to paragraph 4(b)(iv) of the Policy.
The fact that the Complainant had a cease and desist letter and reminders sent to the Respondent, to which the Respondent did neither reply nor or take the requested remedial action to cease all activities and use of the disputed domain name, as well as that the Respondent did not reply to the Complaint, further contribute to the Panel's finding of bad faith registration and use of the disputed domain name.
Consequently, the third and last element of paragraph 4(a) of the Policy is also met.
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 <chrono24outlet.com> be transferred to the Complainant.
April 15, 2015