WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ferag AG v. Daniel Mann, West Highland Services Ltd /Registration Private, Domains By Proxy, LLC
Case No. D2015-2327
1. The Parties
Complainant is Ferag AG of Zurich, Switzerland, represented by Rentsch & Partner, Switzerland.
Respondent is Daniel Mann, West Highland Services Ltd of York, United Kingdom of Great Britain and Northern Ireland/Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America, respectively.1
2. The Domain Name(s) and Registrar(s)
The disputed domain name <ferag-movers.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2015. On December 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 4, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 5, 2016.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 29, 2016.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 8, 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.
4. Factual Background
Complainant is a Swiss company specialized, inter alia, in the development and manufacture of conveying and processing systems in the graphical and direct mailing industry.
Complainant has provided evidence that it is the owner of the following registered trademarks with respect to the designation FERAG:
- Word mark FERAG, International Registration No. 998025, Registration Date: July 15, 2008, Status: Active;
- Word mark FERAG, Swiss Federal Institute of Intellectual Property (IGE/IPI), Registration No. 569243, Registration Date: March 14, 2008, Status: Active.
Moreover, Complainant has evidenced to be the registered owner of the domain names <ferag.ch> as well as <ferag.com>; these domain names redirect to Complainant’s official website at “www.ferag.com” promoting Complainant’s business and related products.
The disputed domain name <ferag-movers.com> was created on October 5, 2013 and was used to resolve to a website which offered moving but also repair and stock services for “all models of FERAG”; by the time of the rendering of this decision, it redirects to a standardized default page telling that “the site is currently unavailable”.
Complainant requests the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant contends to be the leading global supplier of systems for industrial finishing and intelligent post-press processing for the newspaper, magazine and commercial printing industries. Complainant claims to have started using the FERAG trademark already back in the 1950s and that it has built up a substantial reputation and goodwill by virtue of sales of its products and the provision of related services under said trademark.
Complainant submits that the disputed domain name is confusingly similar to the FERAG trademark as it fully incorporates the latter, with the mere addition of the generic term “movers”.
Complainant further claims that Respondent has no rights or legitimate interests with respect to the disputed domain name since (1) it was registered without consent and without knowledge on the part of Complainant, (2) Ferag Limited, who allegedly runs the website under the disputed domain name, acquires, relocates and deposes of identical machines and corresponding equipment, including Complainant’s FERAG brand-name products, and (3) in the pre-procedural correspondence between Complainant and Ferag Limited, a representative of the latter confirmed that using the disputed domain name could cause confusion over the FERAG trademark.
Finally, Complainant asserts that the disputed domain name was registered and is being used in bad faith by Respondent since the way that the disputed domain name was used clearly demonstrates that for Respondent the sole purpose of holding the disputed domain name is to generate additional revenue at the expense of Complainant, to profit from the goodwill of a trademark belonging to someone else and to pretend an actually non-existing technical, legal or economical business relationship with Complainant, which allows the assumption that Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online locations, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location or of a product or service on his website or location.
Respondent did not file any Response with the Center before the due date of January 27, 2016.
Complainant, however, has provided some pre-procedural correspondence with a company apparently based in the United Kingdom called Ferag Limited; such correspondence includes a cease and desist letter sent by Complainant’s UK legal representative to Ferag Limited on November 13, 2015 as well as various emails sent between Complainant’s UK legal representative and the alleged managing director of Ferag Limited in which the latter confirmed e.g. on December 10, 2015 that Ferag Limited would specialize in moving FERAG machinery, that they have temporarily taken down their website and that they would shortly put it back up with a clear disclaimer that Ferag Limited is not in any way connected to, authorized by or associated with Complainant; moreover, that Ferag Limited would no longer use the identical FERAG trademark, however, that they would continue to trade as “Ferag Movers” and to use the disputed domain name.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That 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.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <ferag-movers.com> is confusingly similar to the FERAG trademark in which Complainant has shown to have rights.
The disputed domain name incorporates the FERAG trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9), that the addition of a generic or descriptive term or geographic wording to a trademark in a domain name is normally insufficient in itself to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the dictionary term “movers” is not at all capable to dispel the confusing similarity arising from the incorporation of Complainant’s FERAG trademark in the disputed domain name.
Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate noncommercial of fair use thereof without intent for commercial gain.
This finding is reinforced by the circumstance that there is no disclaimer on the website at the disputed domain name, so that there is no indication of the lack of relationship between Complainant and Respondent.
The Panel notes that the respondent to a UDRP proceeding is the domain name holder, that is to say the registrant of the disputed domain name (see Rules, paragraph 1). In the case at hand, Respondent, therefore, is Daniel Mann, West Highland Services Ltd who has been confirmed by the Registrar to be the underlying Registrant of the disputed domain name <ferag-movers.com>. This Respondent has not replied to any of Complainant’s assertions, neither as they were included in the Complaint or in the Amendment to the Complaint nor in the pre-procedural communication with Ferag Limited. Against this background, there is no reason whatsoever for the Panel to believe that Daniel Mann has any rights or legitimate interests with respect to the disputed domain name absent any indications that it has any relation to (in terms of being commonly known by, or licensed or authorized to use) the disputed domain name <ferag-movers.com> or the designation “Ferag” as such.
The Panel is certainly aware of the pre-procedural communication between Complainant and Ferag Limited that refers, inter alia, to the purpose for which the disputed domain name was made use of on the Internet. However, the Panel cannot confirm based on the case file if there is any relationship between Respondent and Ferag Limited and on which possible grounds Ferag Limited may or may have not made use of the disputed domain name. Therefore, the Panel has not taken the substance of such pre-procedural communication into account in more detail.
Accordingly, also the second element under the Policy set forth by paragraph 4(a)(ii) in the case at hand is fulfilled.
C. Registered and Used in Bad Faith
On the basis of the findings under B. above, the Panel finally holds that the disputed domain name has been registered and is used in bad faith.
In the absence of any indications as to the contrary, the Panel agrees with Complainant’s undisputed line of argumentation that Respondent, by using Complainant’s FERAG trademark as a distinctive part of the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to its own website at “www.ferag-movers.com”, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location or of a product or service on his website or location. Such circumstances are evidence of registration and making use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The fact that the disputed domain name is currently not available does not impact the Panel’s finding above.
Therefore, the Panel finds that also the third element under the Policy as set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.
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 <ferag-movers.com> be transferred to Complainant.
Stephanie G. Hartung, LL.M.
Date: February 19, 2016
1 It is evident from the case file that Registration Private, Domains by Proxy, LLC is a privacy protection service and that Daniel Mann is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.