WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Staedtler Mars GmbH & Co KG v. Suresh Jain
Case No. D2016-1918
1. The Parties
Complainant is Staedtler Mars GmbH & Co KG of Nürnberg, Germany, represented by Bettinger Scheffelt Kobiako von Gamm, Germany.
Respondent is Suresh Jain of Chennai, India, represented by Narayana Mudali.
2. The Domain Name and Registrar
The disputed domain name <staedtlerindia.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 September 20, 2016. On September 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2016. The first Response was filed with the Center online on September 23, 2016, before the commencement of the proceedings. The Center requested the sender to identify herself or himself and clarify her/his relationship to Respondent. The sender failed to respond to the Center's request. The second Response was filed with the Center online on September 29, 2016.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on October 28, 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 manufacturer and supplier of writing, coloring, drawing and creative products, in particular clay, with distribution partners in more than 150 countries and more than 2,000 employees worldwide.
Complainant is the owner of numerous trademark registrations throughout the world for its STAEDTLER mark, dating back to 1923. On September 29, 1978, Complainant was issued a trademark registration in India for STAEDTLER (Reg. No. 341272).
Complainant currently owns numerous domain names which utilize the STAEDTLER trademark, including <staedtler-india.com>; <staedtler.in>; and <staedtler.co.in>. Complainant's domain names redirect to <staedtler.us>, where Complainant maintains its website.
The disputed domain name was registered on March 24, 2014 and expires on March 24, 2017. The website at the disputed domain name is used to sell Complainant's products.
5. Parties' Contentions
Complainant asserts that the disputed domain name is confusingly similar to its STAEDTLER mark because the disputed domain name incorporates the STAEDTLER mark in its entirety, with only the addition of the generic country name "india" and the generic Top-Level Domain ("gTLD") ".com".
Complainant states that Respondent is not commonly known by Complainant's STAEDTLER mark, is not affiliated with Complainant in any way, is not an authorized dealer or distributor of Complainant's goods and is not licensed by Complainant to use its STAEDTLER mark. Complainant further alleges that Respondent has no legitimate rights or interests in the disputed domain name under Oki Data, because Respondent's website prominently displays Complainant's STAEDTLER mark and fails to accurately disclose its lack of a relationship with Complainant.
Finally, Complainant alleges that Respondent has registered and used the disputed domain name in bad faith because Respondent was clearly aware of Complainant's rights in the STAEDTLER mark, since it uses the mark and disputed domain name to sell Staedtler branded products, and this use of the mark is unauthorized and thus in bad faith. Complainant alleges that Respondent's use of the disputed domain name capitalizes on the illusion of direct affiliation with Complainant's business and goodwill. Complainant further asserts that Respondent's registration of the disputed domain name constitutes typosquatting, since it differs from Complainant's domain name only in the existence of a hyphen.
Respondent states that it did not register, and is not using, the disputed domain name in bad faith. Respondent alleges that it is merely a reseller of Staedtler branded products, which it obtains from Complainant's official importer.
Respondent asserts that it does not use Complainant's STAEDTLER mark merely to attract attention, that it does not intend to use a common typing mistake to attract visitors and that it has disclaimed affiliation with Complainant by listing its own business address and contact information on the website hosted at the disputed domain name.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the STAEDTLER trademark in view of its numerous trademark registrations. The Panel further finds that the disputed domain name is confusingly similar to the STAEDTLER mark because it incorporates the entirety of the trademark. The addition of the geographically descriptive term "india" and the gTLD ".com" do not ameliorate the entire reproduction of the STAEDTLER mark.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The evidence of record supports Complainant's allegations that it has not authorized or licensed Respondent to register or use the disputed domain name or to use the STAEDTLER trademark. Complainant has prior rights in the STAEDTLER trademark that precede Respondent's registration of the disputed domain name. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, thereby shifting the burden to Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Although Respondent asserts that it is using the disputed domain name to sell authentic STAEDTLER branded products, it fails the familiar tests first outlined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Respondent's website does not adequately disclose Respondent's relationship with Complainant. The first image that appears at the top of Respondent's landing page is the STAEDTLER word mark in logo format. Respondent then prominently displays Complainant's trademarks throughout its website, appearing to imitate the look and feel of Complainant's website. Moreover, Respondent does not accurately disclose the nature of its relationship to Complainant. At the bottom of the page, Respondent includes a "Store Location" banner:
This banner does not accurately disclose the nature of Respondent's relationship to Complainant. There is no express disclaimer. The repetition of Complainant's "trojan" design mark reinforces rather than disclaims a relationship. It does not help to declare that "All Logos/Trademarks/Designs are the property of their respective owners" because Respondent does not say who those owners are or clarify that it does not have any relationship to Complainant. Moreover, Respondent's statement that "We Are An Authorized Dealer" is not true. Accepting that Respondent sells authentic STAEDTLER products, this does not make Respondent "An Authorized Dealer." Certainly, this assertion, ambiguous at best, does not qualify as a disclaimer or in any way clarify Respondent's relationship to Complainant.
Additionally, Respondent includes on the webpage links to its related companies that sell a wide variety of stationary products that compete with Complainant's product line. In fact, these links are above and more prominent than the Store location banner. An Internet user is much more likely to follow those links before it deciphers the "Store Location" banner.
For these reasons, Respondent's webpage does not satisfy Oki Data. The Panel accordingly finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Regarding bad faith registration, the Panel finds that Complainant's STAEDTLER mark has been registered since 1923, and Respondent was clearly aware of Complainant's mark and rights thereto, as it intended to reference Complainant's mark through the registration and use of the disputed domain name in order to resell Complainant's products.
Regarding bad faith use, the Panel finds that by using Complainant's STAEDTLER mark in the disputed domain name and on the corresponding website and by imitating the look and feel of Complainant's website in order to resell Complainant's products without authorization, Respondent has "intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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] web site or location or of a product or service on [its] web site or location." Policy paragraph 4(b)(iv).
The Panel therefore finds that Complainant has carried its burden and satisfied paragraph 4(a)(iii) 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 <staedtlerindia.com> be transferred to Complainant.
Lawrence K. Nodine
Date: November 14, 2016