WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kaufland Dienstleistung GmbH & Co. KG v. WhoisGuard Protected, WhoisGuard, Inc. / Mark Jones, maribis shop
Case No. D2019-0986
1. The Parties
The Complainant is Kaufland Dienstleistung GmbH & Co. KG of Germany represented by HK2 Rechtsanwälte, Germany.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of United States of America (“United States”) / / Mark Jones, maribis shop of United States.
2. The Domain Name and Registrar
The disputed domain name <kauflandgmbh.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2019. On April 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2019, 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 6, 2019 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 amended Complaint on May 7, 2019.
The Center verified that the Complaint together with the amended 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 May 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2019.
The Center appointed Knud Wallberg as the sole panelist in this matter on June 5, 2019. 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
According to the Complaint, the Complainant belongs to the Kaufland group of companies. The Kaufland group of companies and their affiliates operate over 1,200 “Kaufland” supermarkets or hypermarkets in Germany, Czech Republic, Slovakia, Poland, Croatia, Romania and Bulgaria.
The Complainant is the centralized purchasing company for the group, and it owns a number of trademarks for KAUFLAND including European Union Trademark registration no. 004226627, registered on December 23, 2004 for a wide range of goods and services in 27 classes.
The Complainant operates several websites under domain names that contains the KAUFLAND mark including <kaufland.com>.
The disputed domain name was registered by the Respondent on November 1, 2017. It resolves to a website which purports to be the website for a company called Kaufland GmbH Co. KG, and has also been used as an email address.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the trademark KAUFLAND, since it contains the mark in its entirety, with the addition of the term “gmbh”, which is an acronym for “Gesellschaft mit beschränkter Haftung” that is a very common and trusted form of incorporation in Germany.
The Respondent has not been authorized by the Complainant to use the Complainant´s trademarks, nor is the Respondent commonly known by “Kaufland” or “Kauflandgmbh”, or is in any way affiliated with the Complainant. In addition, the Respondent has not acquired any trademarks or other rights comprising the string “Kaufland” or “Kauflandgmbh”.
The Respondent uses the disputed domain name to operate a website which appears to offer services of a wholesaler, distributor, importer and exporter of a number of different goods under the name “Kaufland 018 GmbH & Co. KG”, which is the official name of a non-active company in the Kafland Group, just as the disputed domain name is used for a phishing scam, that targets third parties with emails misrepresenting a Company of the Kaufland-Group. The disputed domain name is thus registered and being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the disputed domain name 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.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <kauflandgmbh.com> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark KAUFLAND because it contains the mark in its entirety with the addition of the generic acronym “gmbh” as suffix. The generic Top-Level Domain “.com” does not dispel a finding of confusing similarity in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Further, given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this, and the way the Respondent has been and is using the disputed domain name (see below in Section C) does not support a finding of rights or legitimate interests.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the holder 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 holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 holder’s website or location or of a product or service on the holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case, in particular the extent of use of the Complainant’s trademark and the distinctive nature of the mark, and the Respondent’s unauthorized use of the identical name of a company belonging to the Complainant’s company group on the corresponding website, it is obvious to the Panel that the Respondent registered the disputed domain with knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that the disputed domain name it chose could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The disputed domain name has been and is still being used for an active website on which the Respondent presents himself as the company “Kaufland 018 GmbH & Co. KG”. This is clearly a false and misleading statement that gives Internet users the impression that the website is an official website of the Complainant or a website that is authorized by the Complainant, which is not the case.
The Complainant has furnished evidence that the Respondent is also using the disputed domain name actively to send fraudulent emails for commercial gain in which the disputed domain name is used as the “return address”. It is thus obvious to the Panel that the Respondent is using the disputed domain name in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy are therefore fulfilled in this case. See inter alia DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy, WIPO Case No. D2015-2135.
Noting that the disputed domain name incorporates a registered and used trademark, that no response has been filed, that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <kauflandgmbh.com> be transferred to the Complainant.
Date: June 19, 2019