WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Julius Blum GmbH v. Contact Privacy Inc., Customer 0139963223 / Luhua Gao, Gaoluhua Cor. ltd
Case No. D2015-2215
1. The Parties
The Complainant is Julius Blum GmbH of Höchst, Austria, represented by Patentwälte Torggler & Hofinger, Austria.
The Respondent is Contact Privacy Inc., Customer 0139963223 of Toronto, Canada / Luhua Gao, Gaoluhua Cor. ltd of Zhong Shan, China.
2. The Domain Name and Registrar
The disputed domain name <chinablum.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 December 7, 2015. On December 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 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. The Center sent an email communication to the Complainant on December 8, 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 amended Complaint on December 10, 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 the proceeding commenced on December 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on January 14, 2016. 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.
On January 29, 2016, due to exceptional circumstances, the Panel extended the due date for rendering its decision until February 2, 2016.
4. Factual Background
The Complainant was founded in 1952. It states it is one of the largest manufacturers of high quality furniture fittings in the world. The Complainant has more than 6,800 employees worldwide.
The Complainant’s BLUM trade mark, first registered in 1997, is registered in many countries including in China where the Respondent is located. The registrations provide trademark protection for different types of furniture fittings in Classes 6 and 20 of the Nice Classification.
The Complainant owns and has registered the domain name <blum.com> and maintains an active website at “www.blum.com”.
The disputed domain name was registered on April 30, 2015.
5. Parties’ Contentions
The Complainant asserts:
(1) “The disputed domain name chinablum.com is nearly identical and confusingly similar to the […] trademarks of the Complainant, as the Complainant’s mark ‘blum’ is fully incorporated and the addition of the geographical prefix ‘china’ to ‘blum’ has no trademark significance and does not eliminate a likelihood of confusion with Complainant’s trademarks. Geographical additions do not alter the underline meaning of a domain name, so as to avoid confusing similarity.”
(2) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or in any way authorized the Respondent to register the trade mark BLUM as a domain name. By creating a domain name that uses the mark BLUM together with a geographical wording, the Respondent is improperly confusing consumers into believing that they have reached the Complainant’s website for China or creating a false impression that the Respondent is associated or affiliated with the Complainant. Customers seeking spare parts or support for the Complainant’s products and entering the disputed domain name would expect to contact the Complainant’s Chinese subsidiary. Instead, they would be led to a website not affiliated or associated with the Complainant. Further, when one clicks on the phrase “Enter to Blum Flagship”, instead of being led to the Complainant’s website or an authorized website that is affiliated to the Complainant, one is led to a page with offerings of the furniture fittings of a competitor of the Complainant.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant states it has spent an enormous amount of money in advertising and promoting its marks in China, and has a successful business in China. As a result of the Complainant’s long use, widespread advertising and extensive sales, the BLUM mark has become famous and well-recognized in China. The Respondent is intentionally attempting to attract, for financial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. The disputed domain name was designed to suggest that there is an affiliation between the Respondent and the Complainant or that the Complainant endorses the Respondent’s activities even though no such affiliation or endorsement exists.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As required by paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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
The issues to be considered under paragraph 4(a)(i) of the Policy are firstly, whether the Complainant has rights in a trade mark or service mark, and secondly, whether the disputed domain name is identical or confusingly similar to that mark. The confusing similarity assessment would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.
The Panel finds that the Complainant has established it has rights in the BLUM trade mark. The Panel is also of the view that the disputed domain name is confusingly similar to the Complainant’s BLUM trade mark. The disputed domain name comprises the Complainant’s BLUM mark in its entirety and is combined with the word “China”. The Panel does not find the addition of the geographical term “China” to serve to remove the confusing similarity with the Complainant’s BLUM mark. Numerous earlier decisions under the Policy have established the principle that the addition of a descriptive, generic or geographical word to a trade mark does little to avoid confusion.
The Panel notes the Complainant’s further argument, in relation to paragraph 4(a)(i) of the Policy, claiming that the Respondent “is using the dispute domain name in connection with the sale and advertisement of furniture fittings which are goods that are explicitly listed in the Complainant’s trade mark registrations”, hence, “in summary there is no doubt that likelihood of confusion exists”. The assessment to be made under this heading is typically not on the content of the website at the disputed domain name, which is discussed by the Panel under the second and third element of the Policy. (See paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The first criterion of paragraph 4(a) of the Policy is therefore established.
B. Rights or Legitimate Interests
Paragraph 4(b) of the Policy provides that a complainant must establish a prima facie case that a respondent has no rights or legitimate interests in the disputed domain name. Thereafter, the respondent has the burden of rebutting the presumption.
The Panel finds that the Complainant has established a prima facie case of the Respondent’s absence of rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name. The evidence in no way shows that the Respondent has made use of, or demonstrable preparations to use, the disputed domain name, or name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The evidence in fact shows that the Respondent was aware of the Complainant and of its BLUM trade mark and used that as a “bait” to attract consumers to the website and to redirect consumers to the products of the Complainant’s competitor. This cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
The Respondent did not file a Response and has not rebutted the Complainant’s case. The Panel therefore finds for the Complainant.
The second criterion of paragraph 4(a) of the Policy is therefore established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its web site or location.
For the reasons mentioned earlier, the Panel finds that there has been bad faith registration and use. The evidence supports a finding that the Respondent must have known of the Complainant and its rights in the mark BLUM when it registered the disputed domain name. Looking into how the disputed domain name was used, it resolved to a website that shows the Complainant’s stylised BLUM trade mark and which contained a link to a site of the Complainant’s competitor. The Respondent’s registration and use of the disputed domain name were clearly in an attempt to create confusion to attract Internet users to its website for commercial gain (paragraph 4(b)(iv) of the Policy). Such use cannot be considered to be good faith use. In the absence of any evidence which would show the contrary, the Panel finds for the Complainant.
The third criterion of paragraph 4(a) of the Policy is therefore established.
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 <chinablum.com> be transferred to the Complainant.
Date: January 30, 2016