WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Faber S.P.A v. Chetan
Case No. D2021-2274
1. The Parties
The Complainant is Faber S.P.A, Italy, represented by BrandIT GmbH, Switzerland.
The Respondent is Chetan, India.
2. The Domain Name and Registrar
The disputed domain name <faberservice.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2021. On July 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 15, 2021, 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 sent an email communication to the Complainant on July 29, 2021, asking the Complainant to confirm if the requested remedy is cancellation. The Complainant replied on August 2, 2021 confirming the remedy as cancellation.
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 August 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2021.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on September 1, 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
Complainant, originally founded in 1955 as Faber Plast srl and renamed as Faber S.p.A. in 1972, is a company specializing in kitchen equipment, specifically, kitchen hoods and induction hobs. Complainant’s headquarters are in Fabriano, Italy, and since 2005 Complainant has been part of the Franke Group, a global corporate group founded in 1911 and based in Switzerland. Complainant has been operating internationally since the late 1960s, and currently operates in three continents. Complainant has plants and commercial offices in several countries, including both plants and commercial offices in India.
Complainant owns many trademarks in various jurisdictions for the FABER mark, some of which are:
- FABER, International Trademark No. 510203, registered on February 13, 1987 in class 11;
- FABER, International Trademark No. 974422, registered on July 21, 2008 in class 11;
- FABER, International Trademark No. 1343497, registered on November 30, 2016 in classes 11 and 21, designating India;
- FABER, Indian Trademark Reg. No. 723816, registered on June 17, 1996 in class 11;
- FABER, Indian Trademark Reg. No. 1684284, registered on May 6, 2008 in classes 11, 20 and 21
Complainant also owns many registrations for domain names that include the FABER trademark, some of which are:
- <faberspa.com> (registered on December 14, 1999; this domain name resolves to Complainant’s primary website)
- <faberspa.co.in> (registered on May 12, 2006)
- <faberindia.in> (registered on September 18, 2007)
- <faberindia.com> (registered on December 13, 2010)
The disputed domain name was registered on January 14, 2021. At the time the complaint was filed and currently, the disputed domain name resolves to a website offering repair services in India for various kitchen appliances and chimneys.
5. Parties’ Contentions
According to Complainant, the disputed domain name is virtually identical to Complainant’s FABER trademark in which Complainant has rights as demonstrated through its cited registrations. Complainant asserts that the disputed domain name incorporates the FABER trademark in its entirety and that the addition of other descriptive terms to Complainant’s trademark, namely “service,” does not eliminate the confusing similarity. Complainant also contends that the Top-Level Domain (“TLD”) extension “.org” may be disregarded when assessing confusing similarity.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant cites that the disputed domain name was registered many years after Complainant established rights in the FABER trademark, and that Respondent is not a licensee of Complainant or otherwise affiliated with Complainant in any manner. Complainant also states that, according to Complainant’s research, Respondent is not commonly known by the disputed domain name and that the disputed domain name does not correlate to any official company register records in India, nor does Respondent appear to own any trademark rights in the disputed domain name. Complainant contends that Respondent’s use of Complainant’s FABER trademark in the disputed domain name is intended to mislead Internet users into thinking there is an association between Complainant and Respondent, and that Respondent does not meet the criteria established by prior UDRP panels for making a bona fide offering of goods or services as a reseller, particularly because Respondent also offers services associated with competitors of Complainant. As such, there is no bona fide offering of goods or services associated with the disputed domain name.
Complainant advises that information about it, as well as its FABER mark, is readily available online through its official website and various social media accounts. Complainant states that it has been operating in India, where Respondent is located, under the name Franke Faber Private Ltd., since 1997. Complainant asserts that, accordingly, Respondent was very likely aware of Complainant and its rights in the FABER trademark, particularly because the disputed domain name resolves to a website that makes reference to the FABER trademark and Complainant’s product offerings, kitchen hoods and hobs. Complainant also contends that, without authorization, Respondent is using Complainant’s FABER trademark in the disputed domain name for commercial gain. Complainant lists other domain name registrations owned by Respondent, which follow a similar pattern to the disputed domain name of providing another party’s trademark followed by the word “service.” Finally, Complainant states that active MX records are associated with the disputed domain name, demonstrating that Respondent has the ability to send emails using email addresses that contain Complainant’s FABER trademark. For all of these reasons, Complainant contends that the disputed domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraphs 5(e) and 14(a) of the Rules, the effect of a default by a respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A respondent’s default does not by itself satisfy a complainant’s burden of proof and is not necessarily an admission that the complainant’s allegations are true. See section 4.3 of the WIPO Overview of WIPO Panel AccoViews on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
A national or international trademark registration is prima facie evidence that the holder has the requisite rights in the registered mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it owns several International and Indian registrations for the FABER trademark, as referenced above. Therefore, Complainant has established that it has rights in the FABER trademark.
The remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the TLD in which the domain name is registered) is identical or confusingly similar to Complainant’s mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.
Here, the disputed domain name incorporates the FABER trademark in its entirety, with the addition of the word “service” after the term “faber”. This variation does not prevent a finding of confusing similarity between the disputed domain name from and the mark. See TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its FABER mark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, 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 it has acquired no trade mark 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 trade mark or service mark at issue.
Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that Respondent is not a licensee of Complainant and that Respondent has no other business relationship with Complainant. Complainant has contended that Respondent is not commonly known by the disputed domain name and that there is no registered business organization in Respondent’s jurisdiction, India, which correlates to the disputed domain name. Respondent is also using the disputed domain name to provide a website that makes reference to both Complainant’s FABER mark and various competitors’ marks. Prior panels have found that resellers, distributors, or service providers must meet very specific criteria in order to be able to undertake sales or repairs related to goods or services using other parties’ brands in their domain names, including that the corresponding website must “sell only the trademarked goods.” See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and WIPO Overview 3.0, section 2.8. As Respondent’s website makes reference to service for brands that are competitors of Complainant, Respondent’s use of the disputed domain name cannot be considered a bona fide offering of goods or services.
Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided evidence of its registration and widespread use of the FABER trademark prior to Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of Complainant and its rights in the FABER trademark when it registered the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
Respondent is currently using the disputed domain name to provide a website offering repair services for various home appliances, primarily kitchen appliances, including the hoods and hobs for which Complainant is known. By using Complainant’s FABER trademark in the disputed domain name without a prominent and clear disclaimer that there is no affiliation between Complainant and Respondent, Respondent is misrepresenting an association with Complainant. Prior panels have found that such a misrepresentation constitutes bad faith. See Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person, WIPO Case No. D2014-1447; see also Thirty & Co. v. Jake Marcum, Marcum Creative, LLC, WIPO Case No. D2016-1212.
The Panel finds it likely that Respondent selected the disputed domain name with the intention of taking advantage of Complainant’s reputation by registering a domain name containing Complainant’s FABER trademark in its entirety with the intent to ultimately use the disputed domain name for an illegitimate purpose, such as misleading Internet users for Respondent’s commercial gain. This conclusion is strengthened by the fact that the disputed domain name was assigned MX records, demonstrating that Respondent has the ability to send from and receive email communications to the disputed domain name. See Tetra Laval Holdings & Finance S.A. v. Himali Hewage, WIPO Case No. D2020-0472.
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was in bad faith.
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, <faberservice.org> be cancelled.
Brian J. Winterfeldt
Date: September 15, 2021