WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giffits GmbH v. Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen
Case No. D2015-0586
1. The Parties
The Complainant is Giffits GmbH of Hamburg, Germany, represented by SKW Schwarz Rechtsanwälte, Germany.
The Respondent is Whois protection, this company does not own this domain name s.r.o. of Prague, Czech Republic / Hulmiho Ukolen of Helsinki, Finland.
2. The Domain Name and Registrar
The disputed domain name <giffits.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2015. On April 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2015, the Registrar transmitted by email to the Center its verification response informing that the language of the registration agreement was Finnish and disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 15, 2015 regarding the language of proceedings and on April 18, 2015 the Complainant requested that the proceedings were held in English. The Respondent did not make any submissions with regards to the language of the proceedings. The Center sent an email communication to the Complainant on April 22, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 27, 2015.
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 the Respondent of the Complaint, and the proceedings commenced on April 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2015. On May 15, 2015, the Complainant requested the suspension of these proceedings until May 22, 2015 in order to engage in settlement discussion. The proceedings were reinstituted on May 26, 2015 with a new date for Response of May 31, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2015.
The Center appointed George R. F. Souter as the sole panelist in this matter on June 5, 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 an advertising agency specialized in business-to-business gifts. Details of the Complainant’s registration of its GIFFITS trademark in Germany and the European Community (CTM), together with details of use and advertising of its GIFFITS trademark have been supplied to the Panel. The Complainant holds trademark registrations for GIFFITS since at least June 7, 1999.
The disputed domain name was registered on June 20, 2007.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is identical or confusingly similar to its GIFFITS trademark.
The Complainant alleges that, to the best of its knowledge, the Respondent has no rights or legitimate interests in the disputed domain name, operates no company under the disputed domain name, and owns no trademark rights in the GIFFITS trademark. Details of trademark searches covering Community trademark registrations and applications, International Registrations and various other countries, which disclosed no trademark rights to GIFFITS in the name of the Respondent have been supplied to the Panel.
The Complainant alleges that the disputed domain name was registered in bad faith, and alleges use in bad faith in that the disputed domain name is for sale for an asking price of over USD 15,000. The Complainant furthermore asserts that the Respondent uses the disputed domain name to display advertisements of competitors of the Complainant, namely other companies trading in advertising materials.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Language of the Proceeding
On April 15, 2015, the Center notified the Parties in both English and Finnish that the language of the Registration Agreement for the disputed domain name was Finnish, and the Complainant requested that the language of the proceeding should be English. The Respondent made no objection to this request. Hulmiho Ukolen does not appear to be a Finnish name, and the Finnish Population Register contains no reference to any resident of Finland under either the first name or surname Hulmiho or Ukolen, and the offer for sale of the disputed domain name is in English. In the Panel’s opinion, requiring the Complainant to submit its Complaint in Finnish in these circumstances would be unduly onerous. The Panel therefore exercises its discretion under paragraph 11 of the Rules and decides that the language of the proceeding in the present case should be English.
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.info”, “.net”, “.org”) may be generally considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name for the purposes of the Policy. The Panel agrees with this view and considers the gTLD indicator “.com” to be irrelevant in connection with the disputed domain name in the present case. What remains in the disputed domain name is merely the Complainant’s GIFFITS trademark, and it is self-evident that the disputed domain name is identical or confusingly similar to the Complainant’s GIFFITS trademark. The Panel, consequently, finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy in connection with the disputed domain name.
B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the present Panel agrees, that a prima facie case advanced by a complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainant as described above as sufficient to be regarded as a prima facie case, the Panel finds no evidence or inidication which could be the bais for any rights or legitimate interests and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the Complainant’s GIFFITS trademark was incorporated in its entirety, which gives rise to grave suspicion that the disputed domain name was deliberately “coined” from the Complainant’s trademark, as sufficient for the Panel to find that the disputed domain name was registered in bad faith.
It is well-established in prior decisions under the UDRP that an offer for sale of a disputed domain name for a price greatly exceeding its registration costs constitutes use in bad faith. An asking price of USD 15,000 clearly falls into the category of a price greatly exceeding registration costs, and the Panel finds that the Complainant has, accordingly, satisfied the dual requirements of paragraph 4(a)(iii) of the Policy. Furthermore, the Panel finds that the Respondent’s use of the website at the disputed domain name to display advertisements for the Complainant’s competitors to be evidence of registration and use of the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy. Having found for the Complainant on the basis of a sales offer of the disputed domain name greatly in excess of its registration costs and use of the website, the Panel has not found it necessary to decide on the grounds that the Respondent has registered over 60,000 domain names and, from prior decisions under the UDRP involving the Respondent, appears to have engaged in a pattern of abusive registrations.
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 <giffits.com> be transferred to the Complainant.
George R. F. Souter
Date: June 22, 2015