WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gerber Technology LLC v. E. Bosch, Bosch Snijtechnieken

Case No. D2020-0682

1. The Parties

The Complainant is Gerber Technology LLC, United States of America (“United States”), represented by Abelman Frayne & Schwab, United States.

The Respondent is E. Bosch, Bosch Snijtechnieken, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <gerberspareparts.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2020. On March 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing:

(a) it is the Registrar for the disputed domain name;

(b) registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint;

(d) the language of the registration agreement is English; and

(e) confirming that the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.

The Center sent an email communication to the Complainant on March 20, 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 amended Complaint on April 3, 2020.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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 April 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2020.

On April 29, 2020, however, the Center received an email from one Jack Joseph requesting that someone from the Center telephone him. On May 1, 2020, the Center emailed a reply inquiring what Mr Joseph wished to discuss. No further communication was received from Mr Joseph.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 6, 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

According to the Complaint, the Complainant has been providing integrated software and hardware solutions under the trademark GERBER to tens of thousands of customers in the aerospace, construction, furniture, fashion and apparel, transportation, textiles, packaging, wind energy and graphics industries. The Complainant is particularly known for the provision of cutting systems for the textile industry.

The Complaint includes evidence of a number of registered trademarks held by the Complainant. For present purposes, it is sufficient to note:

- European Union Registered Trademark No. 003991676, GERBER, in respect of a range of goods and services in International Classes 7, 9, 16, and 37, which was filed on August 17, 2004 and entered on the Register on November 16, 2005; and

- United States Registered Trademark No. 3,282,346, GERBER, also in respect of a range of goods and services in International Classes 7, 9, 16, and 37 and which was filed on June 14, 2004 and registered on August 21, 2007

The Complainant has marketed its products and services from a website to which the domain name <gerbertechnology.com> resolves. That domain name was registered in 1998. The Complainant also registered <gerberscientific.com> in 1996 and <gerbersparepart.com> on June 19, 2013.

On November 30, 2013, the Respondent registered the disputed domain name.

The disputed domain name does not resolve to an active website at the time this decision is being prepared.

According to print outs from the Wayback Machine at <archive.org> included in the Complaint, as at January 9, 2018, the disputed domain name resolved to the webhost’s parking page which stated “gerberspareparts.com is bezet”. According to the Complaint, that translates into English as “gerberspareparts.com is available”. According to Google Translate, however, it translates to “gerberspareparts.com is occupied”.

The next available page stored by the Wayback Machine is for August 4, 2018. On that date, the disputed domain name redirected to a website at <cuttersresource.com>. That page shows an image of a machine bearing another of the Complainant’s trademarks and the words “Cutting Edge”. The first text box states:

“Cutters Resource has gathered a broad range of experienced buyers, sellers, technicians and services providers, and other cutting industry professions that can and will, quickly deal with you needs, whatever they may be.”

On March 17, 2020, the disputed domain name redirected to the same <cuttersresource.com> domain name, which was displaying a very similar, but re-arranged website to that which was showing on August 4, 2018.

Cutters Resource is listed as a distributor in the United States of Kuris Spezialmaschinen products. It appears that Kuris is one of the Complainant’s competitors. The Respondent is also listed as a distributor of Kuris products for the Netherlands.

On February 25, 2019, the Complainant commenced a proceeding in United States District Court for the Eastern District of Tennessee against a Mr Joseph of Cutting Resource, alleging infringement of copyright and other matters. That proceeding was settled. According to the Complaint, the terms included a denial by Mr Joseph that he had registered or was using the disputed domain name and he agreed that he would not claim any rights in, or oppose the transfer to the Complainant of, the disputed domain name.

5. Discussion and Findings

No response has been filed.

The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of the trademark GERBER in, amongst other places, both the European Union and the United States.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), sections 1.7 and 1.11.

Disregarding the “.com” gTLD, the disputed domain name differs from the Complainant's trademark by the addition of the expression “spare parts”. The Complainant’s trademark is fully contained within the disputed domain name. Moreover, it is well established under the Policy that the addition of descriptive elements like “spare parts” does not avoid a finding of confusing similarity. See e.g., WIPO Overview 3.0, section 1.8.

Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.

The disputed domain name is plainly not derived from the Respondent's name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. On the contrary, it appears that the Respondent is associated with one of the Complainant’s competitors. The redirection of the disputed domain name to the Cutters Resource website, where commercial services are being offered, rules out any possible non-commercial use. It is also well established that the unauthorised use in a disputed domain name of someone’s trademark to offer for sale goods and services of a competitor does not qualify as a good faith offering of goods or services under the Policy.

These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: See e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

As noted above, the Complainant has been operating in its field for over 50 years. It has numerous registered trademarks and those for the term “Gerber” alone have been registered for many years prior to the registration of the disputed domain name. The Respondent is a distributor in the Netherlands of the products of Kuris, one of the Complainant’s competitors. In addition, “Gerber” is not a descriptive term for the types of products the Complainant and Kuris offer. It has significance in relation to such products only by reason of its significance as the Complainant’s name and trademark.

In these circumstances, it appears highly likely that the Respondent was well aware of the trademark significance of the disputed domain name and registered it for that reason. The Respondent’s use in redirecting the disputed domain name to the Cutter Resources website, also a distributor of Kuris products, constitutes use in bad faith under the Policy.

Accordingly, the Complainant has established all three requirements under the Policy.

6. 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, <gerberspareparts.com>, be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: May 18, 2020