WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oetker Hotel Management Company GmbH v. Contact Privacy Inc. Customer 0159533740 / Aliya khan, hjhzcc
Case No. D2021-0122
1. The Parties
The Complainant is Oetker Hotel Management Company GmbH, Germany, represented internally.
The Respondent is Contact Privacy Inc. Customer 0159533740, Canada / Aliya khan, hjhzcc, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <oetkerscollection.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 January 15, 2021. On January 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2021, 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 January 28, 2021 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 January 29, 2021.
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 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2021.
The Center appointed Marilena Comanescu as the sole panelist in this matter on April 23, 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 Complainant Oetker Hotel Management Company GmbH, is part of the Oetker Group, one of the largest family-run business in Germany with a history dating back in 1891, with around 34,000 employees worldwide and yearly sales revenue of EUR 7,4 billion in its five business divisions.
The name “Oetker” derives from the Complainant’s founder, the pharmacist Dr. August Oetker.
The Complainant was incorporated under the company name “Oetker Collection” in 2008 and uses such name in relation to the hospitality industry. Currently, the Complainant manages ten five star luxury hotels around the world. The Oetker Collection hotels generated a turnover of EUR 170 million in 2019 and received numerous awards and accolades in the relevant industry.
The Complainant and its group hold numerous trademark registrations for OETKER COLLECTION and OETKER marks, such as the following:
- the European Union Trademark Registration No. 09697657 filed on January 31, 2011 and registered on June 16, 2011 for OETKER COLLECTION (word), covering goods and services in classes 16, 35, and 43;
- the European Union Trademark Registration No. 09697673 filed on January 31, 2011 and registered on June 16, 2011 for OETKER COLLECTION – MASTERPIECE HOTELS (word), covering goods and services in classes 16, 35, and 43; and
- the European Union Trademark Registration No. 0605188 filed on October 15, 1997 and registered on February 1, 1999 for OETKER (figurative), covering goods in classes 1, 5, 16, 29, 30, 31, and 32.
The Complainant and its affiliate entities hold numerous domain names for OETKER mark such as <oetkercollection.com>, <oetker-group.com>, <oetker-gruppe.com>, <oetker.com>, <oetker.de> and <droetker.com>.
The disputed domain name <oetkerscollection.com> was registered on October 2, 2020 and, at the time of filing the Complaint, it was redirected to the commercial website “www.karlsruhe-insider.de” which designates itself as a city magazine for Karlsruhe region. Also, on the website corresponding to the disputed domain name there were presented advertisement ads and there were promoted various third parties hotels, hostels and campgrounds situated in the region.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its distinctive trademark, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the absence of a Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly Similar
The Panel finds that the Complainant holds rights in the OETKER COLLECTION trademark.
The disputed domain name incorporates the Complainant’s trademark OETKER COLLECTION with the letter “s” between the words composing the mark. However, such addition does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.
Numerous UDRP panels have considered that the addition of other terms (whether geographical, descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name does not avoid a finding of confusing similarity. Also, a domain name which consists of a common, obvious or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for the purpose of the first element. See sections 1.8 and 1.9 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.info”, “.club”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark OETKER COLLECTION, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark OETKER COLLECTION, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name.
In fact, the Respondent registered the disputed domain name which incorporates a third party’s distinctive trademark and uses it to redirect Internet users to a commercial website which promotes, inter alia, services competing to those offered by the Complainant.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant holds trademark rights for OETKER COLLECTION since at least 2011. Due to its extensive use and marketing, the OETKER COLLECTION trademark has become distinctive and enjoys significant reputation in its industry.
The disputed domain name was registered in 2020 and reproduces the Complainant’s mark with a minor alteration, one additional letter.
From the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.
At the time of filing the Complaint the disputed domain name was diverting traffic to a website allegedly presenting the Karlsruhe region, which is located about 40 km away from Baden-Baden, city where the Complainant owns one of its hotels and the Complainant’s mother company is based since 1923.
Further, the webpage corresponding to the disputed domain name was promoting third parties’ hotel services similar to those offered by the Complainant and it was presenting paid advetisments.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.
The Respondent was using without permission the Complainant’s well-known trademark in order to get traffic on its web portal and to misleadingly divert Internet users to third parties’ services, and thus to obtain commercial gain from the false impression created with regard to a potential affiliation or connection with the Complainant. The Respondent’s activity under the disputed domain name also disrupts the Complainant’s business and may tarnish its trademark.
The Respondent registered the disputed domain name under a privacy service and refused to participate in the present proceedings in order to put forward any arguments in its favor, which further suggests the Respondent’s bad faith.
Furthermore, it was consistently found by previous UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes, by itself, a presumption of bad faith registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <oetkerscollection.com> be transferred to the Complainant.
Date: May 3, 2021