WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cosentino, S.A.U. v. Georgi Hristov, Stone Center Group Ltd.
Case No. D2017-0484
1. The Parties
Complainant is Cosentino, S.A.U. of Cantoria, Spain, represented by Herrero & Asociados, Spain.
Respondent is Georgi Hristov, Stone Center Group Ltd. of Sofia, Bulgaria.
2. The Domain Name and Registrar
The disputed domain name <silestone-bg.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 March 8, 2017. On March 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2017, 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 March 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2017. The Center received a communication from the administrative contact of the disputed domain name on March 15, 2017. The Center notified the Parties of the commencement of the Panel Appointment process on April 5, 2017.
The Center appointed Dina Leytes as the sole panelist in this matter on April 18, 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.
4. Factual Background
Complainant, Consentino S.A.U., is a Spanish-based company that produces and distributes compound surface materials, including surfaces made of quartz. The company is family owned, and its work in the surfaces industry dates back to the 1940s. One of the products that Complainant produces and distributes is called “Silestone”, which is a quartz compound used most commonlyin kitchen countertops. Complainant is the owner of several trademarks internationally that incorporate the term “Silestone”, primarily in International Classes 11, 19, 20, and 27 (the “SILESTONE Marks”), including, inter alia, Spanish Trademark No. 1317438 SILESTONE, which was registered on October 5, 1989, in International Class 19 and International Trademark No. 543176 SILESTONE, which was registered on October 16, 1989 in International Class 19 in Japan, Luxemburg, Viet Nam, Croatia, Romania, Turkey, Algeria, Norway, France, Bulgaria, Belgium, Germany, Monaco, Morocco, Republic of Korea, Singapore, Italy, San Marino, Bosnia, Portugal, Serbia, Ukraine, Switzerland, the Netherlands, Liechtenstein and Egypt. These registrations predate the registration of the disputed domain name.
The disputed domain name <silestone-bg.com> was registered on June 8, 2011. Although the disputed domain name currently resolves to a page bearing the wording “Сайтът е временно недостъпен”, which translates from Bulgarian to English as “this site is temporarily unavailable”, the disputed domain name previously resolved to a website offering kitchen countertops and other kitchen-related products.
5. Parties’ Contentions
Complainant alleges that the disputed domain name <silestone-bg.com> is almost identical to one of its legitimate domain names <bg.silestone.com> as well as the SILESTONE Marks in which Complainant has rights. Complainant also alleges that the addition of the “-” symbol, and the letters “bg” do not reduce the likelihood of confusion because the letters “bg” are the country code for Bulgaria, and the addition of a geographic term does not change a finding of confusing similarity. Complainant cites to a number of UDRP decisions that support this position.
Complainant also alleges that Respondent has no rights or legitimate interests with respect to the disputed domain name. To the contrary, Complainant alleges that Respondent’s reproduction of Complainant’s registered trademarks in the disputed domain name misleads consumers into believing Respondent is an authorized distributer, sales or service agent of Complainant’s goods, which is not the case. Furthermore, Respondent allegedly also sells goods created by Complainant’s competitors. Complainant argues that Respondent uses Complainant’s goodwill to direct web traffic to the disputed domain name where allegedly competing goods are available for sale.
Complainant also alleges that Respondent registered and is using the disputed domain name in bad faith because in addition to incorporating its internationally famous SILESTONE Marks into the disputed domain name, Respondent is also displaying Complainant’s original advertisements, promotional materials, names, and logos in order to misleadingly direct the public to Respondent’s website, while also offering for sale goods in competition with that of Complainant.
Respondent did not formally reply to Complainant’s contentions in the time period provided by the Rules. However, Respondent’s administrative contact did transmit email correspondence to the Center on March 15, 2017. This correspondence does not constitute a formal response under paragraph 5 of the Rules as the communications do not substantively address the allegations of the Complaint. Following the Center’s formal notification of the Complaint, Respondent’s administrative contact sent a communication to the Center stating “I am writing on behalf of Oval Pixels Ltd. We would like our email address […] to be excluded from the correspondence regarding this dispute since we are not related to it. We were the web design company that developed the site, hosted under the name “silestone-bg.com”, for StoneCenterGroup Ltd., and we had bought the domain name and hosting on their behalf. But we have no part in this dispute.” On March 21, 2017 the Center acknowledged receipt of the administrative contact’s email and stated that, as its email address has been identified by the Registrar as Respondent’s email address, the Center would continue to send correspondence to that email address in accordance with the Center’s obligations under the Rules.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
The complainant bears the burden of proof on each of these elements. If a respondent does not submit a response to the complaint, a panel may draw appropriate inferences from such a default. However, the complainant must still support its assertions with actual evidence to succeed in a UDRP proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section Edition (“WIPO Overview 2.0”), paragraph 4.6 and the cases cited therein.
A. Identical or Confusingly Similar
The Panel finds that Complainant has trademark rights in the SILESTONE Marks. The Panel further finds that the disputed domain name is confusingly similar to Complainant’s SILESTONE Marks. The disputed domain name incorporates SILESTONE in its entirety, followed by the dash symbol “-” and the geographic term “bg”, Prior UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Hoffmann-La Roche Inc., Roche Products Limited v.Vladimir Ulyanov, WIPO Case No. D2011-1474; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; RapidShare AG, Christian Schm id v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059.
Furthermore, the incorporation of an additional character or symbol, does not reduce the confusing similarity between the disputed domain name and Complainant’s SILESTONE Marks. Prior UDRP Panels have held that the inclusion of dashes does not alter a finding of confusing similarity. See e.g., Google Inc. v. Dzone Inc., Yeonju Hong/ Whois Privacy Services Pty Ltd., WIPO Case No. D2011-1033; Guinness UDV North America, Inc. v. UKJENT, WIPO Case No. D2001-0684. Likewise, the term “bg” does not change the analysis, because the addition of a geographic term, such as the abbreviation “bg” for the country Bulgaria, does not affect a finding that the disputed domain name is identical or confusingly similar to Complainant’s trademark. See e.g., Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007−0768; Playboy Enterprises International Inc. v. Joao Melancia, WIPO Case No. D2006-1106; PepsiCo, Inc. v. Kieran McGarry, WIPO Case No. D2005-0629; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been met by Complainant.
B. Rights or Legitimate Interests
To prevail on this element, the complainant must make out at least a prima facie case that the respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that may be used to show a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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 Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Based on the record before the Panel, Respondent is not affiliated with Complainant, nor is Respondent an authorized dealer or service agent of Complainant’s goods, and is not known by the SILESTONE Marks. Respondent has not received any license, authorization or consent to use the SILESTONE Marks in any manner from Complainant. The Panel also finds that the inclusion of the country abbreviation “bg” used in connection with Complainant’s name gives the false appearance that the disputed domain belongs to the official dealer of Complainant’s goods in Bulgaria. See e.g., R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201.
The prima facie case presented by Complainant is sufficient to shift the burden of production to Respondent to demonstrate that Respondent has rights or legitimate interests in the disputed domain name. By failing to file a response, Respondent has not presented any evidence of any rights or legitimate interests Respondent may have in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that may evidence a respondent’s bad faith registration and use:
(i) circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product or service on respondent’s website or location.
Complainant has alleged that Respondent registered and is using the disputed domain name in bad faith for a number of reasons. The Panel finds that Complainant has demonstrated that Respondent registered and is using the disputed domain name in bad faith. By choosing the disputed domain name, it appears that Respondent sought to create the false impression that Respondent is either authorized to represent Complainant in Bulgaria or to misrepresent itself to be otherwise related to Complainant. Respondent used the disputed domain name to divert Internet users searching for Complainant’s website in Bulgaria to Respondent’s own website, which contained Complainant’s original advertisements, promotional materials, names, and logos. Complainant also submitted evidence that before the disputed domain name was locked, it displayed links to goods within the same industry that are in competition with Complainant’s products, evidently for commercial gain. Such activity serves to misleadingly direct the public to Respondent’s website without disclosing its lack of relationship with Complainant, and is sufficient evidence of Respondent’s bad faith registration and use under the Policy.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by Complainant.
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 <silestone-bg.com> be transferred to Complainant.
Date: May 1, 2017