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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ic! berlin brillen GmbH v. WhoisGuard Protected, WhoIs Guard, Inc / cheap aj

Case No. D2019-2557

1. The Parties

The Complainant is ic! berlin brillen GmbH, Germany, represented by Habermann, Hruschka & Schnabel, Germany.

The Respondent is WhoisGuard Protected, WhoIs Guard, Inc, Panama / Cheap Aj, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <icberlinoptical.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 October 17, 2019. On October 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 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 October 18, 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 amendment to the Complaint on October 24, 2019.

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 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2019.

The Center appointed Andrew F. Christie as the sole panelist in this matter on November 18, 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 Complainant is a manufacturer of designer spectacles and sunglasses, which are sold under the name “ic! berlin” (represented in lowercase). The spectacles have been awarded several international design awards.

The Complainant is the owner of numerous trademark registrations, including German, European, and International trademark registrations, for the word trademark IC! BERLIN, the earliest of which dates from 2003 (i.e. Reg. No. DE30338931, registered on September 16, 2003). The Complainant uses the IC! BERLIN trademark in connection with the design, development, manufacture, sale, and marketing of spectacles, sunglasses, spectacle frames, cases, glasses, and temples. The Complainant operates a website at “www.ic-berlin.de”.

The disputed domain name was registered on October 7, 2019. The Complainant has provided undated screenshots of the website resolving from the disputed domain name, at which a range of glasses purporting to be “men’s/woman’s ic berlin” products are offered for sale in a range of currencies.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is highly similar to its IC! BERLIN trademark, and differs typographically only by the omission of the exclamation mark, which is due to the rules for domain names. The term “optical” in connection with the goods in question is considered to be merely descriptive, and the term “berlin” denotes the German capital. There is close similarity between “ic” and “ic!” which creates a likelihood of confusion among the public.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent is not offering bona fide goods, as the spectacles offered on the website resolving from the disputed domain name are priced below the Complainant’s retail price, suggesting that they are counterfeit; (ii) the Respondent, whose WhoIs data has been hidden on purpose, is not known to the Complainant, and thus cannot be an authorized dealer; and (iii) the contact details as shown under “Customer Service” on the website resolving from the disputed domain name relate to a Chinese operator which the Complainant has encountered in the past relating to websites offering counterfeits.

The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) it was clearly registered with the purpose to mislead possible consumers and customers who are interested in IC! BERLIN spectacles; and (ii) it was registered to disrupt the business of the Complainant, and to acquire commercial gain from selling counterfeit spectacles to consumers who have been led by the disputed domain name to the website erroneously thinking they will be able to order genuine IC! BERLIN spectacles at a cheaper price.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Once the Top-Level Domain “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark IC! BERLIN, minus the exclamation mark and the space (neither of which is a character that may be included in a domain name), followed by the word “optical”. The dominant element of the disputed domain name is the string “icberlin”, which is confusingly similar to the Complainant’s IC! BERLIN trademark. The addition of the word “optical” does not avoid the confusing similarity of the disputed domain name with the Complainant’s word trademark, which relates to the Complainant’s business of producing and selling optical products. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its IC! BERLIN trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name has been used to resolve to a website that offers goods which purport to be goods of the Complainant but which most likely are counterfeit goods. Moreover, the disputed domain name carries a risk of implied affiliation. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was registered many years after the Complainant first registered its IC! BERLIN trademark. The evidence on the record provided by the Complainant with respect to the use of its IC! BERLIN trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s IC! BERLIN trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

7. Decision

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 <icberlinoptical.com> be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: December 2, 2019

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