WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
REISSWOLF International AG, REISSWOLF Akten- und Datenvernichtung GmbH & Co. KG v. WhoisGuard Protected, WhoisGuard, Inc. / John Elbers
Case No. D2020-0401
1. The Parties
The Complainants are REISSWOLF International AG (“First Complainant”), Germany, and REISSWOLF Akten- und Datenvernichtung GmbH & Co. KG (“Second Complainant”), Germany, represented by Eisenführ, Speiser & Partner, Germany.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / John Elbers, Germany.
2. The Domain Name and Registrar
The disputed domain name <reisswolf-deutschland.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 February 19, 2020. On February 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 March 3, 2020, 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 March 5, 2020.
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 March 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2020.
On April 7, 2020, the Center sent an email to the Parties, noting that, due to an administrative oversight, the Center’s Written Notice was not faxed to the Respondent, and granting the Respondent a five-day period to indicate whether it wished to participate in the proceedings. The Respondent did not submit any response.
The Center appointed Kaya Köklü as the sole panelist in this matter on April 17, 2020. 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 Complainants are two companies, a mother company and a fully-owned subsidiary, which are both active in a variety of services in the field of data privacy, inter alia, archiving and document management, security digital services, and data protection with respect to physical and digital data.
The First Complainant is the substantive owner of the trademark REISSWOLF and has empowered the Second Complainant to register the designation REISSWOLF as a trademark in various jurisdictions.
The Second Complainant is the formal owner of the REISSWOLF trademark, which is registered as a word and figurative trademark in a large number of jurisdictions, e.g., as European Union Trade Mark Registration No. 009552472 (registered on November 17, 2011). The relevant trademarks particularly cover protection for software and related services.
The Respondent is composed of a domain name privacy registration service and an individual person from Germany, both of them jointly referred to as the “Respondent” in the present Decision.
The disputed domain name was registered on January 24, 2020.
At the time of the Decision, the disputed domain name did not resolve to an active website. However, as evidenced in the Complaint (cf. Annexes 18 and 19 to the Complaint), the disputed domain name formerly resolved to a website, which was a complete copy of the First Complainant’s original website at “www.reisswolf.com”.
5. Parties’ Contentions
The Complainants request the transfer of the disputed domain name to the First Complainant.
The Complainants are of the opinion that the disputed domain name is confusingly similar to their REISSWOLF trademark.
Furthermore, the Complainants argue that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainants particularly argue that the Respondent must have been well aware of the Complainants’ REISSWOLF company name and trademark, when registering and taking control over the disputed domain name.
The Complainants believe that the Respondent was fully aware of the Complainants and the REISSWOLF trademark, when registering the disputed domain name. The Complainants are further of the opinion that by copying the Complainants’ original website, the Respondent apparently tries to mislead Internet users, who are searching for products and services provided by the Complainants.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Procedural Issues
Pursuant to section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consolidation of multiple complainants filing a joint complaint against a single respondent is subject to the discretion of the appointed panel.
In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, the appointed panel should take into account whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.
Having this in mind, the Panel notes that both Complainants in the present administrative proceedings are members of the same company group. Additionally, their Complaint is based on the same set of facts against the same Respondent.
Hence, the Panel considers that it is fair and equitable in the circumstances of the case to permit the consolidation as requested, as both Complainants are not only affiliated companies but also have common interests.
Consequently, the Panel allows the Complainants to jointly proceed with their Complaint. The Panel will therefore, for the purpose of this Decision, hereinafter refer only to “the Complainant”, whenever appropriate.
6.2. Substantive Issues
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.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the WIPO Overview 3.0.
Also, it is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the views stated therein.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered trademark rights in REISSWOLF by virtue of various trademark registrations, which provide trademark protection also in Germany, where the Respondent is apparently located.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered REISSWOLF trademark. The disputed domain name fully incorporates the Complainant’s REISSWOLF trademark. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would generally not prevent a finding of confusing similarity. The mere addition of the country name “Deutschland”, which means “Germany” in the English language, does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s REISSWOLF trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark REISSWOLF.
In the absence of a Response, the Respondent has failed to demonstrate any of the non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of rights or legitimate interests in the disputed domain name.
Further, the Panel points out that due to the confusing similarity to the Complainant’s trademark, the disputed domain name also carries a high risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).
As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The unopposed allegation of potential phishing, and the evidence submitted in support of such phishing (Annexes 18 and 19), as well as the likelihood of confusion caused by copying the Complainant’s official website, is in view of the Panel sufficient evidence of the Respondent’s bad faith.
Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop.
The fact that the disputed domain name has been inactivated by the Registrar upon request from the Complainant (cf. Annexes 6 and 20 to the Complaint), does not change the Panel’s findings in this respect.
The Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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 disputed domain name <reisswolf-deutschland.com> be transferred to the First Complainant.
Date: May 1, 2020