WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harman International Industries, Incorporated v. Jose Arnaldo Viera Falanga Netto
Case No. D2018-0771
1. The Parties
The Complainant is Harman International Industries, Incorporated of Northbridge, California, United States of America, represented by SILKA Law AB, Sweden.
The Respondent is Jose Arnaldo Viera Falanga Netto of Ribeirao Preto, Sao Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <jblreplica.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 April 6, 2018. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 April 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2018.
The Center appointed Luca Barbero as the sole panelist in this matter on May 24, 2018. 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
The Complainant designs and engineers connected products and solutions for automakers, consumers and enterprises worldwide, including connected car systems, audio and visual products, and enterprise automation solutions.
The Complainant employees approximately 30,000 people across the Americas, Europe and Asia.
The Complainant is the owner of several trademark registrations for JBL, including the Brazilian trademark registration Nos. 904047288 for JBL (word mark), filed on September 12, 2011 and registered on December 23, 2014, in International class 9; and 903944693 for JBL (figurative mark), filed on August 11, 2011 and registered on February 18, 2015, in International class 9.
The Complainant is also the owner of several domain names incorporating the trademark JBL, including <jbl.com>, registered on March 21, 1995, and <jbl.com.br>, registered on September 17, 1998.
The disputed domain name <jblreplica.com> was registered on December 26, 2017 and is currently pointed to a website apparently designed to promote and offer for sale various electronic and technological products and making explicit reference to the trademark JBL in the product list. Although JBL products are not available at the time being, the screenshots submitted by the Complainant – which were not contested by the Respondent – show that the website previously displayed images of JBL products with the indication of prices and a basket icon to be selected to make purchases.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the trademark JBL.
The Complainant also states that the Respondent has no rights or legitimate interests in the disputed domain name since the Respondent (i) is not known by the name “Jbl”; (ii) is not using the disputed domain name in connection with a bona fide offering of goods or services, as it is pointing the disputed domain name to a website which misappropriates the Complainant’s copyrighted images and creates the impression that it is operated by the Complainant or one of its authorized distributors; and (iii) collects potential customers’ personal data through its online form, with the risk that said information be used for fraudulent purposes.
As to bad faith at the time of registration, the Complainant points out that, in light of its prior registered trademarks valid in Brazil and of its active business presence in such country through the Complainant’s authorized dealer Brazil Center Electronics LLC and its long-term customer called Brazil-based Gabisom Audio Equipment, with which it cooperated at the Rock in Rio festival, the Respondent cannot claim that it did not have knowledge of the trademark JBL at the time of registration. The Complainant also asserts that the Respondent’s awareness of the trademark is supported by the use of the disputed domain name and the partial reproduction of the Complainant’s logo and color scheme (orange and white) on the correspondent website.
The Complainant informs the Panel that it sent a cease and desist letter to the Respondent, by email, in which it notified it of the unauthorized use of the trademark JBL and copyrighted images and requested the transfer of the disputed domain name, but the Respondent did not reply. The Complainant submits that the Respondent’s failure to respond to a cease and desist letter is relevant for the finding of bad faith.
The Complainant also highlights that the Respondent is using the disputed domain name, corresponding to the Complainant’s prior registered and well-known trademark, without any rights or legitimate interest or good faith intention.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the 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.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the trademark JBL based on the trademark registrations cited under Section 4 above.
The disputed domain name incorporates the trademark JBL in its entirety, with the addition of the term “replica” and the generic Top-Level Domain (“gTLD”) suffix “.com”.
As found in a number of prior cases decided under the Policy, where a trademark is recognizable within a domain name, the addition of geographic or descriptive terms does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In addition, as stated in section 1.11 of the WIPO Overview 3.0, the applicable gTLD in a domain name is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test.
The Panel notes that the term “replica” added to the Complainant’s trademark in the disputed domain name is not sufficient to distinguish or differentiate the disputed domain name from the Complainant’s trademark. See, along these lines, Turlen Holding SA v. San Lintun, WIPO Case No. D2016-0730; and Cartier International A.G. v. Chong James, buysellkey, WIPO Case No. D2015-0404.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.
According to the evidence on record, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name.
In addition, there is no evidence that the Respondent might have been commonly known by the disputed domain name.
Moreover, the Panel finds that, in view of the use of the disputed domain name documented by the screenshots submitted by the Complainant, the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use before receiving any notice of the dispute.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
The Panel finds that, in view of the Complainant’s prior registration and use of the trademark JBL in connection with the Complainant’s products in several countries of the world, including Brazil – where the Respondent is based – the Respondent was or could have been aware of the Complainant’s trademark at the time of registration.
Furthermore, the fact that the disputed domain name has been pointed to a website featuring the Complainant’s JBL trademark and products demonstrates that the Respondent was indeed aware of the Complainant and its trademark.
With reference to the use of the disputed domain name, as highlighted above, the Respondent has pointed the disputed domain name to a website advertising and offering for sale purported JBL products along with competitors’ goods, without publishing any evident disclaimer apt to inform users as to the lack of affiliation with the Complainant. Therefore, the Panel finds that the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by causing a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website, according to paragraph 4(b)(iv) of the Policy.
The Panel also finds that the Respondent’s failure to reply to the Complainant’s cease and desist letter and to submit a Response amount to additional circumstances evidencing the Respondent’s bad faith.
Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by 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 <jblreplica.com> be transferred to the Complainant.
Date: June 7, 2018