WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Schott Aktiengesellschaft v. James H Park, JIN-1
Case No. D2020-3423
1. The Parties
The Complainant is Schott Aktiengesellschaft, Germany, represented by Studio Barbero, Italy.
The Respondent is James H Park, JIN-1, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <ceran.net> (the “Domain Name”) is registered with DropCatch.com 493 LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2020. On December 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 16, 2020, 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 December 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 22, 2021.
The Center appointed Ellen B Shankman as the sole panelist in this matter on February 15, 2021. 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 November 24, 2019.
The trademark CERAN serves as a trademark of the Complainant and is protected as a registered trademark in numerous jurisdictions world-wide. The Complainant owns, inter alia, International Trademark Registration No. 265249 for CERAN (stylized word mark), (February 02, 1963 in Classes 9, 11, 21), International Trademark Registration No. 475889 for CERAN (December 14, 1982 in Classes 9, 11, 21), and Korean Trademark Registration No. 258792 for CERAN (February 23, 1993 in Class 39), covering a wide variety of goods related to glass and cooking. The Complainant has provided evidence that the CERAN trademark has also had extensive coverage and use. The trademark predates the registration date of the Domain Name registration.
The Complainant also provided evidence of a Cease and Desist letter that it sent to the Respondent that the Complainant claims did not receive response. Evidence of correspondence between the Respondent and a company hired by the Complainant to explore purchase of and obtain the selling price of the Domain Name was also provided. In addition, the Complainant provided screenshots of the “pay-per-click” pages that resolve from the Domain Name and links therein that go to sales of goods that compete with those of the Complainant.
The Panel also conducted an independent search to determine that the Domain Name resolves to a “pay-per-click” advertisement page that also identifies a link to contact to buy the Domain Name.
5. Parties’ Contentions
The Complaint contends that the Complainant, Schott Aktiengesellschaft, is one of the world’s largest companies active in the field of specialty glass and glass-ceramics and indisputably the worldwide leader of this sector.
The Complainant – founded in Germany in 1884 – has more than 130 years of outstanding development, materials and technology expertise and offers a broad portfolio of high-quality products and intelligent solutions under various brands such as, besides SCHOTT, e.g. AMIRAN, BOROFLOAT, CERAN, and others. In 1884, the founder Otto Schott developed specialized glasses with precisely defined properties for a wide variety of applications and turned his laboratory over the time into an industrial company of international stature. With the development of entirely new types of glass and new production methods, Schott not only became the founder of modern glass science and glass technology, but also of the specialized glass industry as a new industrial branch. Said materials in fact have now become an integral part in everyday life and, along with the glass-ceramics, are used by the Complainant to produce and commercialize products for various fields, including the home appliance, pharma, electronics, optics, life sciences, automotive and aviation industries.
In the home appliance field, the Complainant produces and markets cooktop panels under the trademark CERAN. With over 180 million products sold, SCHOTT CERAN is indeed the world’s best-selling cooktop panel brand. The origin of SCHOTT CERAN successful line of black glass-ceramic cooktop panels dates back to the early 1970s, when the Complainant had the idea of using the glass-ceramic developed in the 1960s for use in space telescopes, to manufacture cooktop panels. This material in fact turned out to be incredibly heat resistant and showed almost no thermal expansion and thus was perfect also for cooktop panels. SCHOTT CERAN brand started a revolution in the kitchen and quickly became a world bestseller that had a major impact on kitchen history. In 1987, the first induction range is introduced to the market and it has a black SCHOTT CERAN glass-ceramic cooktop panel. Since then, the Complainant always proved the market to be a pioneer in manufacturing cooktop panel, also by becoming the first environmentally friendly glass-ceramic that does not contain either arsenic or antimony as additives. The Complainant is consistently recognized as world leader in innovation among consumer products companies. In 2010 the Complainant received the German Innovation Award in the category Large Companies.
The Complainant operates within an extensive sales network consisting of over 15,000 employees in over 35 countries, also in the Republic of Korea, where the Respondent is based. The sales metrics of CERAN products in 2018 and 2019 were respectively over 9 million/10 million worldwide. The Complainant’s CERAN trademark also enjoys a worldwide-known reputation and has been included in various lists dedicated to the most successful brands in the world over the years. Amongst others, SCHOTT CERAN won the Iconic Awards Interior Innovation 2017 as “Best of Best” in the category of kitchen and household. It was also chosen as “Brand of the Century”- German standards in 2013, 2016 and 2019. Furthermore, the Complainant line CERAN EXCITE was the winner of the world-renowned iF Gold Award 2019. The lighting innovation for glass-ceramic cooktops received the design-label’s seal of quality for exceptional design and outstanding services in the discipline “product” in the “kitchen” category.
The Complainant has also invested a substantial amount of time and resources to promote and advertise its trademark and the associated products through television and other media. Indeed, CERAN was and presently is strongly supported by intensive advertising campaigns worldwide, including the Republic of Korea where the Respondent is based. The Complainant invested over EUR 8.5 million to promote CERAN trademark. Besides the traditional advertising channels, CERAN has been also widely promoted via Internet, in particular with a strong presence online through the most popular social media with channels and pages specifically dedicated to this trademark.
The Complainant contends that in light of the Complainant’s significant investments in R&D, marketing, sales and distribution channels, as well as the existence of a truly impressive client base for these products, CERAN is undisputedly a famous and well-known trademark worldwide, including in the Republic of Korea, where the Respondent is based. As to the assessment of the Respondent’s bad faith at the time of registration, in light of the fact that the trademark CERAN is certainly well-known worldwide, including in the Republic of Korea where the Respondent is prima facie based, and has been used since about 50 years, the Respondent could not have possibly ignored the existence of the Complainant’s trademark at the time of registration of the Domain Name, entirely incorporating it.
The Complaint argues that the Domain Name was registered by the Respondent without authorization and that the Domain Name redirects to a website where Internet users can find several sponsored links to various commercial websites, mainly related to glass and glass-ceramics cooktop panels, for which CERAN trademark is secured and protected, and kitchen appliances. By definition, a “sponsored link” is generating revenues for the registrar and/or for the domain name holder. For instance, by clicking on “PIANOCOTTURA VETROCERAMICA”, the Internet users are redirected to internal pages of the website, publishing various sponsored links related to third-parties’ online stores offering for sale glass and glass-ceramics cooktop panels of competitors. Regarding bad faith use, as indicated above, the Domain Name is linked to a web page where, as described above, Internet users can find a number of sponsored links to various commercial websites mainly related to products of the Complainant’s competitors. As a result, also the Respondent may earn commission whenever an Internet user visits the website and clicks on one of the sponsored links.
Moreover, the Respondent engaged in a pattern of bad faith registrations targeting well-known trademarks. James H Park was involved prima facie in 13 prior UDRP cases, concluded with decisions rendered in favor of the Complainants, and figures as the Registrant of at least four domain names consisting of third-parties’ distinctive signs, namely <uberpromocode.com>, <iferrari.com>, <lavazzafirma.com> and <nutellabar.com>.
The Complainant claims that as soon as the Complainant became aware of the registration and infringing use of the Domain Name, it instructed a web agency to contact the Respondent in order to ascertain his real intention as to the Domain Name. The web agency sent an email on July 30, 2020 – to the email address indicated in the public WhoIs – requesting to the Respondent what was the project related to the Domain Name and the possible availability to consider transferring it, making reference to the trademark owner in its inquiry. After an exchange of correspondence as regards the actual entity that would have purchased <ceran.net> (if the web agency or the potential client), on July 31, 2020, the Respondent requested USD 2,700 for the transfer of the Domain Name, mentioning that said sum was lower than his usual asking prices, that are in the area of USD 4,000 (amount that he would have probably demanded in case of direct contact from the trademark owner instead than from a web agency that mentioned it only as prospect client), as follows: “My domain selling price is 4000 USD on average. This price is 2700USD”. The amount of USD 2,700 requested is to be considered well in excess of the out-of-pocket costs directly related to the Domain Name.
Subsequently, the Complainant claims that its authorized representative thus sent a Cease and Desist letter to the Respondent on August 19, 2020, via email, requesting the transfer of the Domain Name. As the Respondent did not provide any response, reminders were sent on September 16, 2020 and on October 29, 2020. Even if all these communications were successfully delivered, as per return receipt enclosed to the Complaint, the Respondent opted to disregard them and did not provide any formal response as of the date of the Complaint. The Respondent’s failure to respond is also evidence of bad faith.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark CERAN, in respect of glass and cooktops. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the “.net” Top-Level Domain to the term CERAN 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. 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
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Since the Respondent did not respond substantively to this Complaint, the facts regarding the use and fame of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for CERAN.
Further, the Panel finds that the Domain Name integrates the Complainant‘s mark CERAN in its entirety and that the Domain Name is identical to the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
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 rights or legitimate interests 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, 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. In addition, the Panel agrees with the Complainant that the Respondent’s willingness to sell the Domain Name for a consideration well over the out-of-pocket costs constitutes additional evidence that the Respondent has no rights or legitimate interests in the disputed Domain Name. See Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628.
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
By registering the Domain Name that comprises the Complainant’s CERAN trademark in its entirety, together with links that resolve to competitive cooktops, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. In light of the facts set forth within this Complaint, the Panel finds that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the Domain Name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Further, “it defies common sense to believe that the Respondent coincidentally selected the precise domain without any knowledge of the Complainant and its trademarks.” See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Further the Panel finds that the Complainant provided persuasive evidence that the Respondent is currently offering to sell the Domain Name, which constitutes bad faith under Policy paragraph 4(b)(i) because the Respondent has demonstrated an intent to sell, rent, or otherwise transfer the Domain Name for valuable consideration in excess of the Respondent’s out-of-pocket expenses. The Panel agrees with the Complainant’s contention that, indeed, the Respondent’s purpose in registering the Domain Name, which incorporates CERAN mark in its entirety, was probably to capitalize on the reputation of the Complainant’s trademark by diverting Internet users seeking information about this distinctive sign to its own website, where sponsored links are published. See Hoffmann-La Roche Inc. v. Doroven, WIPO Case No. D2010-1196.
A respondent’s use of a complainant’s mark to attract Internet users otherwise seeking said complainant evinces a finding of bad faith is also consistent with the Policy paragraph 4(b)(iv). See section 3.1.4, WIPO Overview 3.0 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.”). These criteria apply in the present case, which supports that Panel’s finding that the Respondent registered and is using the Domain Name in bad faith. The Panel also agrees that a pattern of abuse by the Respondent has been established, and thus supports the Panel’s finding that registration and use of this Domain Name is done in bad faith.
Further, the Panel agrees as recognized in section 3.5, WIPO Overview 3.0, where it is stated that “a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.” See Skyscanner Limited v. Domain May Be for Sale, Check Afternic.com Domain Admin, Domain Registries Foundation, WIPO Case No. D2018-1987, and SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497. In addition, the finding that the amount of USD 2,700 requested is to be considered well in excess of the out-of-pocket costs directly related to the Domain Name as evidenced in several cases, such as Benetton Group SpA v Domain for Sale, WIPO Case No. D2001-1498 (where an amount as low as USD 450 was also considered in excess of the documented out-of-pocket costs).
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, and the use of the Domain Name, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names 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 <ceran.net> be transferred to the Complainant.
Ellen B Shankman
Date: February 25, 2021