WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
dm-drogerie markt GmbH & Co. KG v. Whois Agent, Domain Protection Services, Inc. / Iouane Severins
Case No. D2018-1149
1. The Parties
The Complainant is dm-drogerie markt GmbH & Co. KG, c/o Christian Klapperich of Karlsruhe, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Whois Agent, Domain Protection Services, Inc., of Denver, Colorado, United States of America / louane Severins of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
2. The Domain Name and Registrar
The disputed domain name <dm-de.net> is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 23, 2018. On May 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2018, 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. The Center sent an email communication to the Complainant on May 31, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 31, 2018.
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 June 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 22, 2018.
The Center appointed Adam Taylor as the sole panelist in this matter on July 4, 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, based in Germany, operates a chain of over 3,000 retail stores in 12 European countries under the name "dm", selling cosmetics, healthcare items, household products, and food. The Complainant has almost 60,000 employees.
The Complainant owns a number of registered trade marks for the term "dm" including international trade mark no. 924429 DM, registered on March 9, 2007, in multiple classes.
The Complainant operates a website at "www.dm.de".
The disputed domain name was registered on March 27, 2018.
The disputed domain name has been used for a paid redirect to a website at "www.charming.party" which engages in data mining by inviting users to participate in a competition and then to enter personal information in order to claim a prize.
5. Parties' Contentions
A summary of the Complainant's contentions is as follows:
The term "dm" has no inherent meaning in German and English and is a strong mark.
The disputed domain name is confusingly similar to the Complainant's trade mark.
The Complainant's trade mark is clearly recognisable within the disputed domain name. The only difference is the suffix "-de" which reflects the German country code top level domain name ("ccTLD"). The Respondent is trying to capitalise on typo-squatting and giving the impression that the disputed domain name relates to the Complainant's website in Germany.
The Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent is using the disputed domain name for a paid redirect to a website engaging data mining activities. Accordingly, the Respondent is not engaging in non-commercial or fair use of the disputed domain name.
There is no evidence of a bona fide offering of goods or services and the Respondent is not commonly known by the name comprised in the disputed domain name.
The disputed domain name was registered and has been used in bad faith.
The Respondent has intentionally attempted to create a likelihood of confusion with the Complainant's trade mark. The Respondent has registered or used the disputed domain name for fraudulent purposes, taking advantage of the reputation of the Complainant's trade mark.
The Respondent had actual knowledge of the Complainant's trade marks, shown by use of the Complainant's trade mark plus the ccTLD for the country where the Complainant is located. The Respondent sought to redirect Internet users looking for the Complainant's website.
The lack of any conceivable legitimate use for the disputed domain name is further evidence of bad faith, as is the use of a privacy service.
The disputed domain name constitutes passive holding in bad faith. It is solely used to redirect users to third party websites.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in the mark DM by virtue of its registered trade marks as well as unregistered trade mark rights deriving from its extensive Europe-wide use of that name.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant's distinctive trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the geographical suffix "-de", also reflecting the "de" ccTLD for Germany, is insufficient to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name for a fraudulent purpose. Such use of the disputed domain name could not be said to be bona fide.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name combines the Complainant's distinctive and well-known trade mark with the "de" ccTLD suffix for Germany, where the Complainant is located. In the Panel's view it is likely that the disputed domain name was intended as a typo-squatting variation of the Complainant's <dm.de> domain name. In any case, it is clear to the Panel that the Respondent registered the disputed domain name with the Complainant's trade mark in mind.
And, given the evidence of use of the disputed domain name for a fraudulent purpose, namely data mining, the Panel readily concludes that it was registered and is being used in bad faith by the Respondent.
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, <dm-de.net> be transferred to the Complainant.
Date: July 18, 2018