WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Haas Food Equipment GmbH v. VistaPrint Technologies Ltd
Case No. D2015-2050
1. The Parties
The Complainant is Haas Food Equipment GmbH of Wien, Austria, represented by Preslmayr Rechtsanwälte OG, Austria.
The Respondent is VistaPrint Technologies Ltd of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and the Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <haas-melncke.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2015. On November 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 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.
On November 18, 2015 the Center issued a Complaint Deficiency Notification. The Complainant filed an amended Complaint on November 19, 2015.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint and amended Complaint, and the proceedings commenced on November 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2015.
The Center appointed Mihaela Maravela as the sole panelist in this matter on December 18, 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 globally active mechanical engineering enterprise. It operates the website “www.haas-meincke.com”. It owns the trademark registration No. 78533933 for the trademark HAAS before the United States Patent and Trademark Office, registered on November 16, 2004. It has been recently target of various criminal activities concerning other domain names that are confusingly similar to trademarks owned by the Complainant.
The disputed domain name has been registered on December 10, 2014 and does not resolve to an active website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is almost identical to the Complainant’s registered domain name <haas-meincke.com> and that the Complainant has registered the trademark HAAS. The Complainant is of the view that the difference between the disputed domain name and its domain name (the distinction of the letter “l” as the Complainant mentions) is a typical case of a deliberate misspelling of a mark (typo-squatting). For further arguments the Complainant refers to other UDRP cases concerning domain names that have been transferred to the Complainant such as Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285 (<has-mond0mix.com>), Haas Food Equipment GmbH v. VistaPrint Technologies Ltd, WIPO Case No. DCO2015-0016 (<haaas.co>) and Haas Food Equipment GmbH v. Andrea Rocco / Khan Arif, WIPO Case No. D2015-1210 (<haas-mondosmix.com>).
In addition, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The Complainant also contends that the disputed domain name should be considered as having been registered for fraud purposes as the Respondent attempts to attract business partners of the Complainant to correspond with the Respondent. This is the procedure that the Complainant contends it was used for other domain names confusingly similar to its trademark. The Complainant is of the view that the disputed domain name should be considered as having been registered in bad faith as it was registered on the same day as other domain names which have been used for fraudulent activities.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Noting the fact that the Respondent has not filed a Response, the Panel shall consider the issues referred to it, based on the statements and documents submitted to the Panel.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark.
Here, the Complainant has demonstrated ownership of HAAS registered trademark number 78533933, registered on November 16, 2004. The Complainant’s trademark registration predates the registration of the disputed domain name.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademark rights which have been proved. As a preliminary note, this Panel emphasises that the Complainant should compare in its submissions under UDRP its trademarks rights against the disputed domain name and not to compare the disputed domain name with other domain names registered by the Complainant. This is what paragraph 4(a)(i) of the Policy requires of complainants.
As regards the comparison required under 4(a)(i) of the Policy, the disputed domain name <haas-melncke.com> incorporates entirely the Complainant’s trademark HAAS as well as a misspelling of a commercial identifier used by the Complainant, respectively the term “meincke”, where the “i” was replaced with an “l”. In the Panel’s view, this would only enhance confusion and the risk of association with the Complainant’s trademark.
In addition, it is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”) such as “.com”, is typically ignored when assessing identity or confusing similarity between a trademark and a domain name.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, the 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) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial 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.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which states: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]”.
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights. As such, the Complainant has established that it is the owner of the HAAS trademark and claims that the Complainant has not licenced or otherwise authorised the Respondent to use the HAAS trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “Haas” (see for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957).
By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any rights or legitimate interests in the disputed domain name. See for similar finding KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-1910.
Further, as discussed in section C below, the Panel also finds that the Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that the Respondent’s use of the disputed domain name is a legitimate non-commercial or fair use, or that the Respondent is commonly known by the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name’s registration and use in bad faith.
However, the requirement of the Policy of a domain name “being used in bad faith” is not limited to positive actions (see, e.g., Beiersdorf AG v. Web4comm Srl Romania, WIPO Case No. DRO2005-0002). Applied to this case, even if the disputed domain name does not resolve to an active website, the Panel notes that passive holding does not preclude a finding of bad faith (see, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In this particular case, the following actions may be considered as use in bad faith:
- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;
- the Respondent has not contested any of the allegations made by the Complainant;
- any use of the disputed domain name would lead the public to the conclusion that it is associated with the Complainant.
Also, the fact that the disputed domain name wholly incorporates the Complainant’s trademark HAAS which is used in the Complainant’s line of business, indicates not only that the Respondent was aware of the Complainant’s business but also that it registered the disputed domain name to mislead Internet users into thinking it is some way connected, sponsored, endorsed by or affiliated with the Complainant’s services.
The Respondent provided no explanations for which he registered the disputed domain name.
Further, the Respondent has recently been involved in a number of other cases under the Policy, showing a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name as meant in paragraph 4(b)(ii) Policy (see Haas Food Equipment Gmbh v. VistaPrint Technologies Ltd, supra and also, for a similar finding, Statoil ASA v. VistaPrint Technologies Ltd, WIPO Case No. D2014-1949, HanesBrands Inc., DIM S.A.S., DBA LUX 1 S.A., DBApparel S.A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-1552).
In the Panel’s view these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel ascertains that the disputed domain name was registered and 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 <haas-melncke.com> be transferred to the Complainant.
Date: January 1, 2016