WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

GIZEH Raucherbedarf GmbH v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Onder Kerim Can

Case No. D2017-2000

1. The Parties

The Complainant is GIZEH Raucherbedarf GmbH of Gummersbach, Germany, represented by Jonas Rechtsanwaltsgesellschaft mbH, Germany.

The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, Unites States of America ("United States") / Onder Kerim Can of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <gizehliquid.com> is registered with Aerotek Bilisim Taahut Sanayi Ve Ticaret Ltd. Sti. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 13, 2017. On October 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 2017, 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. In response to a notification by the Center on October 20, 2017 that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 26, 2017.

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 the Respondent of the Complaint, and the proceedings commenced on October 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 21, 2017.

The Center appointed Edoardo Fano as the sole panelist in this matter on November 24, 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.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.

The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is Gizeh Raucherbedarf GmbH, a leading German company in the field of smokers' articles distributing in more than 80 countries worldwide.

The Complainant owns several registrations including the trademark GIZEH, among which:

- European Union Trade Mark registration No. 011376142 GIZEH PURE, registered on April 12, 2013;

- European Union Trade Mark registration No. 009075912 GIZEH and design, registered on October 19, 2010;

- German Trade Mark registration No. 1009938 GIZEH, registered on October 30, 1980;

- German Trade Mark registration No. 665624 GIZEH and design, registered on November 2, 1954;

- International Trade Mark registration No. 184994 GIZEH and design, registered on May 23, 1955;

- International Trade Mark registration No. 1054371 GIZEH and design, registered on October 4, 2010.

The Complainant is also operating in Internet at the websites "www.gizeh-online.de" and "www.gizeh-online.com".

The Complainant provided evidence in support of the above.

The disputed domain name <gizehliquid.com> was registered on February 15, 2017. At the time of filing the Complaint, the website at the disputed domain name was a copy of the Complainant website at "www.gizeh-online.com", the only difference being the offer to sell e-cigarettes' liquid which is not presently one of the Complainant's products. The disputed domain name currently does not resolve to an active website.

5. Parties' Contentions

A. Complainant

The Complainant states that the disputed domain name <gizehliquid.com> is confusingly similar to its trademark GIZEH, as the word "liquid" is not sufficient to differentiate the disputed domain name from the Complainant's trademark.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent is not commonly known by the disputed domain name, nor is the Respondent making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

The Complainant has not licensed or otherwise permitted the Respondent to use its name or trademark or to apply for the disputed domain name.

The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith because, by reproducing a copy of one of the Complainant's official websites, the Respondent is intentionally attempting to attract for illicit commercial gain Internet users to the website at the disputed domain name, creating confusion with the Complainant's business.

B. Respondent

The Respondent has made no reply to the Complainant's contentions and is in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark GIZEH both by registration and acquired reputation and that the disputed domain name <gizehliquid.com> is confusingly similar to the trademark GIZEH.

Regarding the addition of the generic word "liquid", it is not sufficient to distinguish the disputed domain name from the Complainant's trademark.

It is also well accepted that a generic Top-Level Domain ("gTLD") suffix, in this case ".com", may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant's trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.

The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.

Should the products sold on the website to which the disputed domain name is redirecting Internet users be genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have a legitimate interest in using a domain name that is confusingly similar to the Complainant's trademark in circumstances that are likely to give rise to initial interest confusion.

According to the current state of UDRP panel decisions in relation to the issue of resellers as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions ("WIPO Overview 3.0"):

"(...) resellers, distributors, or service providers using a domain name containing the complainant's trademark to undertake sales or repairs related to the complainant's goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the 'Oki Data test', the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant's relationship with the trademark holder; and

(iv) the respondent must not try to 'corner the market' in domain names that reflect the trademark."

This summary is mainly based on the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

On the other hand, should the products offered for sale on the website to which the disputed domain name is redirecting Internet users be counterfeit products, that would be clear evidence that the Respondent does not have any rights or legitimate interests in the disputed domain name.

In the present case, the Panel is of the opinion that the evidence provided by the Complainant, regarding the use of the Complainant's trademark by the Respondent to sell liquid for e-cigarettes which is not presently one of the Complainant's products, is sufficient to support the allegation of counterfeiting.

The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has failed to rebut or deny this allegation.

The Panel therefore concludes that the Complainant has satisfied its burden in establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name is not being used in connection with a bona fide offering of goods or services.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that "for the purposes of paragraph 4(a)(iii) of the Policy, 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 has] registered or has 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 trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark 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) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the 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 [the respondent's] website or location or of a product or service on [the respondent's] website or location."

As regards to the registration in bad faith of the disputed domain name, the reputation of the Complainant's trademark GIZEH in the field of smokers' articles is clearly established and the Panel finds that the Respondent knew or must have known that the disputed domain name <gizehliquid.com> was confusingly similar to the Complainant's trademark, especially because the content of the relevant website was a copy of one of the Complainant's official websites, reproducing the trademarks and logos of the Complainant.

In addition, the disputed domain name was also used in bad faith since at the website, the Respondent was offering online the sale of smokers' articles, namely the same products as the Complainant, using the Complainant's trademarks and logos.

The Panel further notes that the Respondent is trying to attract Internet users to its website by creating likelihood of confusion with the Complainant's trademark GIZEH in order to sell counterfeit products, at least the e-cigarettes' liquid which is not a product manufactured and sold by the Complainant, bearing the Complainant's trademark GIZEH, an activity clearly detrimental to the Complainant's business.

The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to create confusion with the Complainant's trademarks and attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.

The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

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 <gizehliquid.com> be transferred to the Complainant.

Edoardo Fano
Sole Panelist
Date: December 6, 2017