WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Geberit Holding AG v. Timur S Usmanov
Case No. D2016-2512
1. The Parties
The Complainant is Geberit Holding AG of Jona, Switzerland, represented by Nameshield, France.
The Respondent is Timur S Usmanov of Murmansk, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <geberit-store.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2016. On December 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2017. The Respondent sent an email communication in Russian to the Center on January 23, 2017. The Center acknowledged receipt of the Respondent’s communication and informed the Parties that according to paragraph 11 of the Rules the language of the administrative proceeding shall be the language of the Registration Agreement, unless otherwise agreed by the Parties and subject to the authority of the Panel to determine otherwise.
On January 26, 2017, the Center informed the Parties that it would proceed to appointment of the Panel.
The Center appointed Angela Fox as the sole panelist in this matter on February 13, 2017. 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 February 13, 2017, Timor Usmanov, the Respondent, sent an email to the Center reading,
“Hello. Can you explain what I want from your organization? I get emails in English. I understand that we are talking about my domain. But what you want and how can I help? Thanks in advance for your answer. With respect, Timur Usmanov.”
On February 17, 2017, the Center replied informing the Respondent that the Complaint filed under the Policy was notified by the Center on January 5, 2017, that the Response was due on January 25, 2017, that the Panel had been appointed, and stating that the Respondent’s email would be forwarded to the Panel for consideration.
4. Factual Background
The Complainant, Geberit Holding AG, is a Swiss company trading in the field of sanitary technology and fittings, including in particular bathroom ceramics. Its activities extend to most European countries and also the Russian Federation. It has more than 12,000 employees in over 40 countries worldwide, and generates net sales of some CHF 2.6 billion. Its shares are listed on the SIX Swiss Exchange, and since 2012 have been included in the SMI (Swiss Market Index).
The Complainant carries out its activities under its name and trademark, GEBERIT. It has registered GEBERIT in plain and stylized form under inter alia International Registration nos. 571872, 635104 and 878950, with registration dates of May 6, 1991, December 27, 1994 and February 9, 2006, respectively, covering construction-related services in Classes 37, 41 and 42, among others. Details of these were annexed to the Complaint.
The Complainant also owns multiple domain names containing the trademark GEBERIT, including <geberit.com>, which it registered in 1997 and uses in respect of its business.
The disputed domain name, <geberit-store.com>, was registered on November 16, 2016. It is in use for a website in the Russian language which offers for sale the Complainant’s GEBERIT-branded sanitary fittings. The trademark GEBERIT features prominently throughout the website, both to denote the website (i.e., “Geberit Store”) and to refer to products of the Complainant (e.g., “Geberit plattenbau Delta 51 white”).
5. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to the GEBERIT trademark, in which it has rights. The addition of a hyphen and the generic term “store” is not, it submits, sufficient to avoid confusion, given that the term “geberit” is dominant and the word “store” is merely descriptive. Moreover, the Complainant argues that the presence of the term “store” increases the likelihood of confusion, because it gives rise to an immediate association with the Complainant’s shops.
The Complainant further avers that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that the Respondent uses the disputed domain name to offer the Complainant’s products for sale without authorisation under the Complainant’s GEBERIT trademark, suggesting that the Respondent’s website is an official website of the Complainant. The Respondent is not associated with the Complainant and has not been authorized to use the GEBERIT trademark. The Respondent does not appear to be commonly known by a name corresponding to the disputed domain name.
Finally, the Complainant contends that the disputed domain name was registered and has been used in bad faith. The contents of the website demonstrate the Respondent’s knowledge of the Complainant and its business, and the Complainant submits that the Respondent registered the disputed domain name and is using it in order to simulate a website of a subsidiary of the Complainant and thereby to attract customers for the Respondent’s commercial gain.
The Panel notes the Respondent’s email to the Center of February 13, 2017, asking for an explanation of the proceedings and what was required of him. That email was in English, which is also the language of the Registration Agreement and therefore also the language of this administrative proceeding. In the Center’s email of February 17, 2017, and in the Center’s routine correspondence with the Respondent, the nature of the proceedings was clearly explained and the Respondent was made aware of the term set for a Response. Notwithstanding that, no Response was filed.
Consequently, the Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward.
Therefore, in accordance with paragraphs 14(a) and 14(b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) a respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has proved that it has registered trademark rights in GEBERIT.
The disputed domain name is <geberit-store.com>. It incorporates the whole of the Complainant’s trademark as its first element. The additional elements, namely the hyphen, the word “store” and the generic Top-Level Domain (“gTLD”) “.com” are descriptive or without meaning and are not sufficient to avoid confusing similarity.
Moreover, the presence of the descriptive word “store” reinforces the impression that the disputed domain name is that of, or is related to, the Complainant. GEBERIT is both the Complainant’s trademark and the name under which it trades, and consequently “geberit-store” is likely to be perceived as denoting a website of the Complainant, through which the Complainant’s GEBERIT-branded products can be purchased. UDRP Panelists have reached similar conclusions on the impact of the word “store” in domain names in Swarovski Aktiengesellschaft v. Huge/ Carol Carol, WIPO Case No. D2014-0406; and Adaptec, Inc. v. Sure Source, WIPO Case No. D2000-1488.
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the GEBERIT trademark.
Moreover, as the Complainant points out, there is nothing to suggest that the Respondent has been commonly known by the disputed domain name or a name corresponding to it.
The disputed domain name is in use for a commercial website, which means that there is no basis for a finding of a legitimate noncommercial or fair use in accordance with paragraph 4(c)(iii) of the Policy.
That still leaves, however, the question of whether the Respondent’s use amounts to use in connection with a bona fide offering of goods or services in line with paragraph 4(c)(i) of the Policy, such as to confer on the Respondent a legitimate interest in the disputed domain name.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), states the consensus view that a reseller, whether authorized or not, can be making a bona fide offering of goods or services and thus have a legitimate interest in a domain name, provided the use accords with certain criteria. These normally include that the reseller is actually using the disputed domain name to offer the trademarked goods or services, and only those goods and services; and that the linked website “accurately and prominently” discloses the nature of any relationship with, or lack of a relationship with, the trademark owner (see for example Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
The WIPO Overview 2.0 also notes, however, that “some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark (i.e., <trademark.tld>).”
In this case, the Panel notes that the disputed domain name does indeed appear to be in use to re-sell genuine goods of the Complainant. There is no suggestion in the Complaint that the goods are not genuine, or that any third-party goods are being offered through the Respondent’s site. However, it is not clear that the website discloses the fact that there is no relationship with the Complainant; it is in the Russian language, and the Respondent has not filed a Response to explain and defend its registration and use of the domain name.
Overall, the Panel is not persuaded that, in this case, the Respondent’s activities amount to a bona fide offering of goods or services. The disputed domain name is confusingly similar to the Complainant’s trademark, such that it suggests an online store targeting the Russian market which is operated by the Complainant or is in some way authorized by or connected to it. Visitors to the website are likely to assume from the disputed domain name that there is such a connection, and there is no evidence from the Respondent that, once at the website, the lack of such a relationship is explained in a clear and prominent way. Indeed, the Panel notes a copyright notice reading “© 2008 Geberit Store” at the bottom of the Respondent’s website, which indicates that the Respondent is actively seeking to present itself as the Complainant, as opposed to merely indicating that the linked website is an unrelated online store through which the Complainant’s products can be purchased.1 The use of a confusingly similar domain name in a manner that misleadingly suggests a commercial relationship or connection with the Complainant and its shops is not, in the Panel’s view, use in connection with a bona fide offering of goods.
The Panel finds that the Complainant has made out a prima facie case under this heading, and the Respondent has done nothing to refute it. The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, the following circumstance, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
In this case, the Respondent has been using the disputed domain name to resolve to a website offering the Complainant’s goods for sale. The disputed domain name inherently suggests that the associated website is an online store operated by the Complainant, or in some way authorized by or connected to the Complainant. There is no evidence that the Respondent has made any effort on its website prominently to disclose its status as an unauthorized reseller of GEBERIT products without any connection to the Complainant, and the copyright notice referred to in section 6.B. above indicates that the Respondent is seeking to impersonate the Complainant or at least to make it difficult to ascertain whether there is any connection with the Complainant.
Taken altogether, the circumstances of this case indicate that the Respondent registered and used the disputed domain name in bad faith. The Complainant is active in the Russian market and provided details of its Russian subsidiary with the Complaint. It is clear that the Respondent was aware of the Complainant’s business and trademarks when the disputed domain name was registered, and that this awareness is what prompted the registration of the disputed domain name. Moreover, the Respondent appears to have used the domain name to intentionally attract Internet users to its website by creating a likelihood of confusion with the Complainant. The disputed domain name inherently misleads Internet users into assuming that it resolves to a website of the Complainant, or is in some way associated with or authorised by the Complainant, and the content of the Respondent’s website does not appear to contradict that impression. Indeed, if anything, the reference to the copyright owner as “Geberit Store” reinforces it.
Such conduct is disruptive to the Complainant’s business because it diverts and misleads consumers that would otherwise have been directed to the Complainant’s own business in the Russian Federation.
The Panel finds that the disputed domain name has been 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, <geberit-store.com>, be transferred to the Complainant.
Date: March 12, 2017
1 The Panel notes that the date of the copyright notice pre-dates the registration of the disputed domain name by some eight years. No explanation was given for this. In the event, however, nothing turns on it for the reasons given in the decision.