WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Geberit Holding AG v. Akin Toye
Case No. D2019-1607
1. The Parties
The Complainant is Geberit Holding AG, Switzerland, represented by Pinsent Masons LLP, United Kingdom.
The Respondent is Akin Toye, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <geberitbathroomltd.com> (“Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2019. On July 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 10, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 July 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2019.
The Center appointed Ellen B Shankman as the sole panelist in this matter on August 16, 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
The date of the Domain Name registration was confirmed by the Registrar to be July 10, 2018.
The trademark GEBERIT serves as a house-mark of the Complainant and is protected as a registered trademark in multiple jurisdictions world-wide.
The Complainant provided evidence of multiple trademark registrations for the mark GEBERIT including, inter alia, International Registrations Nos. 878950 (registered on February 6, 2016), 635104 (registered on December 27, 1994), and 571872 (registered on May 6, 1991) for a variety of sanitary goods that predate the date of the Domain Name registration.
The Panel also conducted an independent search to confirm that the Domain Name resolves to an active webpage that promotes bathroom and sanitary products. The Panel also determined that the Complainant has a website under “www.geberit.co.uk” that similarly promotes bathroom and sanitary products.
5. Parties’ Contentions
The Complainant contends that the Domain Name is nearly identical to the Complainant’s trademarks in the sense of the Policy. The Complainant contends that the term “bathroom” must be disregarded for the purpose of comparing the signs as it is a descriptive term in the English language which is easily understood by the general public. As far as the term “ltd” is concerned, the Complainant contends that the addition of the abbreviation commonly used to denote “limited” companies does not prevent the confusing similarity created by Respondent’s reproduction of the trademark in the Domain Name.
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant contends that the Respondent has no authorization to use the Complainant’s trademarks. The Complaint alleges that the current use of the Domain Name constitutes a flagrant infringement of the Complainant’s trademark rights the Respondent is offering for sale bathroom products and accessories, and said offer for sale is without consent by the Complainant. The Respondent therefore does not follow any legitimate purposes or constitutes a bona fide offering of goods and/or services.
The Complainant offered evidence that through representatives acting for the local operating company Geberit Nigeria Limited, submitted a complaint with the Nigerian Corporate Affairs Commission (CAC) on March 27, 2017. The Complainant requested that the CAC uses its powers pursuant to Section 31(4) of the Companies and Allied Matters Act, Cap C20, Laws of the Federation of Nigeria, 2004 to direct the Respondent’s company to change its name. The CAC upheld the Complaint and ordered the Respondent’s company to change its name by decision of June 22, 2017. The Complainant contends that the order is proof that the Respondent has no legitimate interest in registering the Domain Name.
The Respondent was undoubtedly aware of the Complainant’s GEBERIT mark which had been registered and enjoyed widespread international use for many years before the Respondent registered the Domain Name. The Complainant contends that the Respondent deliberately included the mark in the Domain Name to create confusion or unfairly to exploit the value of the Complainant’s marks.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark GEBERIT in respect of sanitary products. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the descriptive words “bathroom” and “ltd” does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the 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 Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for GEBERIT.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of the descriptive terms “bathroom” and “ltd” to the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256, and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, which includes the CAC Order, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complaint is a bare bones complaint in which the Panel would have liked to see more information provided regarding the Complainant and its reputation. Notwithstanding, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark GEBERIT and uses it for the purpose of misleading and diverting Internet traffic for competitive goods. Further, the Panel finds that the addition of the term “bathroom” to the Domain Name enhances both the likelihood of confusion and the registration in bad faith to suggest the offer of the Complainant’s products online. The evidence of the Respondent’s use Complainant’s for a website that is being used to promote bathroom products confirms that the Domain Name is also being used in opportunistic bad faith.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, the CAC proceedings and the contents of the Respondent’s website, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under 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 Domain Name <geberitbathroomltd.com> be transferred to the Complainant.
Ellen B Shankman
Date: August 18, 2019