WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dm-drogerie markt GmbH & Co. KG v. Domain Administrator, See PrivacyGuardian.org / Donald Greene and Domain Admin, Whois Privacy Corp.
Case No. D2018-2172
1. The Parties
The Complainant is Dm-drogerie markt GmbH & Co. KG of Karsruhe, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondents are Domain Administrator, See PrivacyGuardian.org (“First Respondent”) of Phoenix, Arizona, United States of America (“United States”) / Donald Greene of Springfield, Massachusetts, United States and Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas (“Second Respondent”).
2. The Domain Names and Registrar
The disputed domain name <dm-drogerlemarkt.net> is registered with Internet Domain Service BS Corp. The disputed domain name <dm-drogerle.net> is registered with NameSilo, LLC (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2018. On September 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 25, 2018, the Registrar NameSilo, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <dm-drogerle.net> which differed from the named First Respondent and contact information in the Complaint. On September 26, 2018, the Registrar Internet Domain Service BS Corp transmitted by email to the Center its verification response confirming that the Second Respondent is listed as the registrant of the disputed domain name <dm-drogerlemarkt.net> and providing the contact details. The Center sent an email communication to the Complainant on September 26, 2018, providing the registrant and contact information disclosed by the Registrar for the First Respondent, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 28, 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 October 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2018.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on November 2, 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 operates a chain of drugstores in Germany and is one of the largest retailer in its industry in Germany. The Complainant is the proprietor of the trademark DM, registered in various countries, such as in the European Union under number 011654456, registered on September 28, 2016, with priority from March 14, 2013.
The disputed domain name <dm-drogerle.net> was registered on August 1, 2018, and the disputed domain name <dm-drogerlemarkt.net> on July 26, 2018. The disputed domain names resolve to a website which mimics the Complainant’s official website and promotes an alleged raffle.
5. Parties’ Contentions
The disputed domain names are confusingly similar to the Complainant’s trademarks. The disputed domain names contain the Complainant’s trademark in its entirety, followed by the words “drogerle” or “drogerlemarkt”, which resemble the German words “drogerie” and “drogeriemarkt”, meaning “drugstore” and “drugstore market”. The replacement of the letter “i” for the letter “I” is an intentional typo as the capital letter “i” is closely similar to the lower case letter “l”.
The Complainant has no affiliation with the Respondents, the Respondents are not commonly known by the disputed domain names and do not offer bone fide goods or services under the disputed domain names.
The Respondents must have been aware of the Complainant when registering the disputed domain names because the Complainant is the operator of a famous chain of drugstores. The websites to which the disputed domain names relate reproduce the Complainant’s logo in its identical form. The Respondents use this logo to confuse Internet users and to collect personal data of the users of the websites of the Respondents.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Matter: Consolidation of Respondents
Section 4.11.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.
In the present proceeding, the Complainant contends that when the disputed domain names are entered into mobile devices, the content and layout of the websites under the disputed domain names is identical and that in both cases there is an alleged raffle.
The Respondents have not denied these assertions because of its default. The Panel also notes that the use of privacy services in the registration of the disputed domain names, and that only one underlying registrant was disclosed by one of the Registrars, remaining the other privacy service as the registrant for one of the disputed domain names.
Taken all of this into consideration, the Panel finds that the disputed domain names are subject to common control for the purposes of the Policy, thus the Panel permits the consolidation of the proceedings.
6.2. Substantive Matters
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondents have no rights or legitimate interests in respect of the domain names. The third element a complainant must establish is that the domain names have been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establishes that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain names are identical or confusingly similar to this trademark.
It is widely accepted among UDRP panels that the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.net”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
The disputed domain names contain the Complainant’s trademark DM in its entirety. The addition of the descriptive terms “drogerle” and “drogerlemarkt” would not prevent a finding of confusing similarity under the first element. The nature of such additional terms may however bear on assessment of the second and third elements (section 1.8 of the WIPO Overview 3.0).
Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondents have no rights or legitimate interests to the disputed domain names.
It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and section 2.1 of the WIPO Overview 3.0.
The Complainant has credibly submitted that the Respondents are not a licensee of the Complainant, nor have it been allowed by the Complainant to use the Complainant’s trademark in domain names or otherwise. The Complainant has also credibly submitted that the Respondents have no rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondents. In light of the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondents with any rights or legitimate interests in the disputed domain names. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establishes that the disputed domain names have been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that 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 that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [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) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) 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.”
Considering that the logo reproduced on the Respondents’ websites is identical to that of the Complainant, the Respondents must have been well aware of the Complainant when registering the disputed domain names. In the disputed domain names, the Complainant’s trademark is combined with two words that closely resemble the relevant generic word of the Complainant’s industry as set forth above. These generic words (with mere typos) increase the likelihood of confusion between the Complainant’s trademark and the disputed domain names.
Furthermore, the Respondents are using the disputed domain names for a disguised raffle, the real purpose of which is to collect personal data of Internet users. The disputed domain names have therefore been clearly used for fraudulent purposes.
Hence, the Panel finds that the disputed domain names were registered and are being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled.
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 names, <dm-drogerlemarkt.net> and <dm-drogerle.net>, be transferred to the Complainant.
Date: November 16, 2018