WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fritz Schäfer GmbH v. Whois Privacy Protection Service Inc. / Tamas Kiss
Case No. D2015-0355
1. The Parties
Complainant is Fritz Schäfer GmbH of Siegerland, Germany, represented by Hogan Lovells International LLP, Germany.
Respondent is Whois Privacy Protection Service Inc. of Washington, United States of America / Tamas Kiss of Hamisphere, the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <ssi-schaefer-uk.com> is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 2, 2015. On March 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. On March 10, 2015, Complainant filed an amendment to the Complaint. On March 12, 2015, the Center received Complainant's confirmation email regarding Respondent identity.
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 Respondent of the Complaint, and the proceedings commenced on March 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 7, 2015.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on April 21, 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
Complainant is in the business of supplying warehousing and logistics systems, and the owner of the international trademark SSI SHAEFER, registered on July 4, 2001 and duly renewed.
The disputed domain name was registered on February 23, 2015.
The email address […]@ssi-schaefer-uk.com, associated to the disputed domain name, was used to attempt to fraudulently collect personal data on Complainant's employees.
5. Parties' Contentions
The disputed domain name is identical to the registered trademark SSI SHAEFER, the addition of the "–uk" is irrelevant.
Respondent did not register the disputed domain name in good faith, nor for a bona fide offering of goods or services, nor is he well known by the name "ssi-schaefer-uk".
Respondent used an email address linked to the disputed domain name in order to illegally obtain personal data from Complainant's employees.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is required to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under the Rules, paragraph 14(b), the Panel shall draw such inferences from Respondent's default as it considers appropriate. Nevertheless, the Panel may rule in Complainant's favor only after Complainant has proven that the above-listed elements are present.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, Complainant is required to establish that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights. The Panel finds that Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to Complainant's trademark. The Panel further notes that the registration dates of Complainant's trademark well pre-date the registration date of the disputed domain name.
The disputed domain name reproduces entirely the trademark SSI SCHAEFER with the addition of hyphens and the geographical term "UK". Such suffix might well be understood as a geographic descriptor since it corresponds to the widely-used acronym of "United Kingdom". The addition of such suffix is not enough to avoid similarity nor does it add anything to avoid confusion with Complainant's trademark. Prior UDRP panel decisions support this Panel's view (Cf. The Coca-Cola Company v. Telex Departments / PrivacyProtect.org, WIPO Case No. D2013-1869; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; The Coca-Cola Company v. Tantamount Property Trust, WIPO Case No. D2001-0327; Revlon Consumer Products Corporation v. Jose Gilson de Almeida, WIPO Case No. D2010-1189).
The Panel therefore determines that the disputed domain name is confusingly similar to Complainant's trademark and that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on her evaluation of all of the evidence presented, can demonstrate Respondent's rights to or legitimate interests in the disputed domain name. These circumstances include:
(i) before any notice to Respondent of the dispute, Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that there is no business relationship between Complainant and Respondent, that it has not authorized Respondent to make any use of Complainant's SSI SCHAEFER trademark and that Respondent is not commonly known by the disputed domain name.
Complainant contends that there is no active website to which the disputed domain name resolves, and that Respondent is using the disputed domain name as an email address in fraudulent correspondence.
This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right or legitimate interest in the disputed domain name by Respondent, but rather the opposite may be validly inferred.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name and that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by Respondent includes, but is not limited to:
(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on its website or location.
The Panel is convinced that Respondent has registered and is using the disputed domain name in bad faith.
The Panel shares Complainant's view that Respondent is deliberately attempting to create a likelihood of confusion among Internet users and/or to tarnish Complainant's SSI SCHAEFER trademark, for the illegitimate collection of personal data of Complainant's employees. The Panel believes that the available record provides sufficient evidence to justify an assessment of bad faith registration and use.
The Panel believes that Respondent must have been well aware of the SSI SCHAEFER trademark when it registered the disputed domain name. Indeed, Complainant was specifically targeted by the fraudulent emails and its employees were the target of the phishing attempts.
The Panel thus concludes that Respondent registered and is using the disputed domain name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <ssi-schaefer-uk.com> be transferred to Complainant.
Date: April 28, 2015