WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
item Industrietechnik GmbH v. Kevin Caulfield
Case No. D2015-0725
1. The Parties
The Complainant is item Industrietechnik GmbH of Solingen, Germany, represented by Boden Rechtsanwälte, Germany.
The Respondent is Kevin Caulfield, Westmeath, Ireland.
2. The Domain Name and Registrar
The disputed domain name <item24.net> is registered with Register.it Spa (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 22, 2015. On April 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 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 May 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 18, 2015.
The Center appointed Luca Barbero as the sole panelist in this matter on June 23, 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 company active in the market of aluminium profile kit systems in Europe and North America.
The Complainant is the owner of the Community Trademark registration Nos. 000306746 ITEM (figurative mark), filed on July 15, 1996, in classes 6, 7, 9, 19 and 20; and 004213484 ITEM (figurative mark), filed on December 22, 2004, in classes 6, 7, 8, 9, 11, 19, 20, 37, 40 and 42.
The Complainant is also the owner of 73 domain names consisting in the sign "item24", including the domain name <item24.com>, registered on June 26, 2005, and of further 14 domain names including "item24" in addition with other terms.
The disputed domain name <item24.net> was registered on February 14, 2013 and is redirected, at the time of the drafting of the decision, to a parking page of the concerned Registrar with sponsored links.
The Complainant states that the disputed domain name was redirected to the website "www.alvaris.eu" operated by the Complainant's competitor's Alváris Profile Systems GmbH and submits, in support of its allegations, a printout of the WhoIs records provided by Domaintools for the disputed domain name, showing as website title "Alváris Profile Systems" and a screen shot of the corresponding competitor's website.
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar to the trademark ITEM since the verbal element "item" is identical and "24" is just a synonym for a service "around the clock".
With reference to the Respondent's rights or legitimate interests in the disputed domain name, the Complainant states that it has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the Complainant's trademark, and that there is no evidence to support any of the possible circumstances which could support a Respondent's claim for rights or legitimate interests.
With respect to the bad faith requirement, the Complainant points out that it was informed by a customer of the use of the disputed domain name to redirect users to the website "www.alvaris.eu" operated by the Complainant's competitor Alváris Profile Systems GmbH, which manufactures aluminium profiles. The Complainant, therefore, contends that the Respondent is acting in favour of said company.
The Complainant further asserts that the Respondent's registration and use amount to bad faith since the Respondent intends to redirect users who search for the Complainant on the Internet to another website and, in consequence, disrupt the business of the Complainant.
In addition, the Complainant states that the Respondent is an employee of the Irish distributor of the company Alváris Profile Systems GmbH, highlighting that an email address composed of the Respondent's name initial and its surname is indicated on the website of Alváris Profile Systems GmbH as a contact information of a distribution partner of the company.
The Complainant informs the Panel that the Respondent registered also the domain name <mbsitem.info>, incorporating the acronym MBS which stands for Machine Building Systems, a UK supplier of the ITEM's modular aluminium profile system offering services for the Complainant under the domain name <mbsitem.co.uk>. The Complainant additionally notes that also the domain name <mbsitem.info> was redirected to the website "www.alvaris.eu". The Complainant therefore concludes that this circumstance demonstrates that the Respondent has engaged in a concerted and tactical action to register domain names with the identical names of competitors in order to disrupt their business, which is a clear evidence of the use of the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrate that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has provided evidence of two Community Trademark registrations for the figurative marks ITEM, constituted of the word "item" written in bold, in black and pink color, respectively.
As stated in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the first element of the UDRP serves essentially as a standing requirement and involves a comparison between the trademark and the disputed domain name to determine the likelihood of confusion by Internet users. According to paragraph 1.11 of the WIPO Overview 2.0, since figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. However, design elements in a trademark may be relevant to the decision in certain circumstances - such as where, for example, they form an especially prominent or distinctive part of the trademark overall.
In the case at hand, the Panel finds that, given the low threshold requirement established by paragraph 4(a)(i) of the Policy, the Complainant has satisfied its burden of proving that the disputed domain name is identical or confusingly similar to a trademark in which it has established rights, since the term "item" is the prominent part of both the Complainant's trademark and the disputed domain name.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
It is established in paragraph 4(a) of the Policy that the Complainant has the burden of proof. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with previous UDRP decisions, it is well-established that it is sufficient that the Complainant make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to prove any of the circumstances that could demonstrate, pursuant to paragraph 4(c) of the Policy, rights or legitimate interests in the disputed domain name.
According to the documents and statements submitted by the Complainant, there is no relation between the Respondent and the Complainant, the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademark or to register the disputed domain name.
In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain name or have used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or with a legitimate, noncommercial or fair use.
In light of the evidence submitted by the Complainant, the Panel finds that the Complainant has demonstrated that the disputed domain name was redirected to a website of a Complainant's competitor and finds that said use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant demonstrate that the disputed domain name has been registered and is being used in bad faith.
The Panel notes that the Complainant has registered and used the trademark ITEM in Europe since many years before the registration of the disputed domain name, and has registered several domain names consisting of the term "item24", including <item24.com>, which is pointed to a web page providing a list of the countries in which the Complainant's products are distributed, including Ireland, where the Respondent is based.
In addition, the Complainant has demonstrated that the disputed domain name was redirected to a website operated by one of the Complainant's competitors in the market of aliminium profiles, and that a Respondent's email address is mentioned on said competitors' website as contact information of its Irish distributor. Therefore, and in the absence of a Response, the Panel is satisfied that the Respondent operates in the same business as the Complainant and infers that it was very likely aware of the Complainant's trademark at the time of the registration of the disputed domain name.
The Panel is also persuaded that the Respondent's registration and use of the disputed domain name for redirecting Internet users, including customers and potential customers of the Complainant, to the website of a company which directly competes with the Complainant, constitutes bad faith registration the use. See, along these lines, Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537; Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 and NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768.
The Panel finds paragraph 4(b)(iii) of the Policy applicable in this case since the Respondent's use of the disputed domain name is apt to disrupt the Complainant's business. The Respondent's intention to disrupt the Complainant's activity can also be inferred from its registration of the additional domain name <mbsitem.info>, identical to the domain name <mbsitem.co.uk> operated by a Complainant's distributor, and the Respondent's redirection of this domain name to the Competitor's website to which also the disputed domain name resolved.
At the time of the drafting of this Decision, the disputed domain name resolves to a registrar parking page with sponsored links. Therefore, the Panel finds that, by using the disputed domain name in the ways described above, the Respondent has also intentionally attempted to attract, for commercial gain, Internet users to the website of a Complainant's competitor by creating a likelihood of confusion with the Complainant's trademark ITEM as to the source, sponsorship, affiliation, or endorsement of the website and/or the products and services promoted on said website according to paragraph 4(b)(iv) of the Policy.
In view of the above, the Panel 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 <item24.net> be transferred to the Complainant.
Date: July 7, 2015