WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nunhems B.V. v. Badici Fanel

Case No. DRO2015-0010

1. The Parties

The Complainant is Nunhems B.V. of Nunhem, Netherlands, represented by BPM Legal, Germany.

The Respondent is Badici Fanel of Izbicenci, Romania.

2. The Domain Name and Registrar

The disputed domain name <nunhems.ro> is registered with ROTLD (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2015. On August 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2015, 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 Complainant sent an email communication to the Center on August 27, 2015 requesting the suspension of the proceeding in light of the Respondent’s offer to transfer the disputed domain name to the Complainant. The Respondent sent an email communication to the Center on August 27, 2015 stating that his offer to transfer the disputed domain name to the Complainant had expired. The Complainant sent an email to the Center on September 1, 2015 withdrawing its request for suspension.

The Center sent an email communication to the Parties on September 2, 2015, in both English and Romanian, regarding the language of the proceeding. The Complainant requested English as the language of the proceeding by email communication to the Center on September 3, 2015. The Respondent accepted this request by email communication to the Center on September 4, 2015.

The Center sent an email communication to the Complainant on September 14, 2015 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 September 18, 2015.

The Center verified that the Complaint together with the amended 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 proceeding commenced on September 21, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2015. The Respondent did not submit any further communication to the Center in response to the Complainant’s contentions. Accordingly, the Center notified the Parties that the Center would proceed to the appointment of a panelist on October 12, 2015.

The Center appointed Mihaela Maravela as the sole panelist in this matter on October 26, 2015. 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.

Language of proceedings

As regards the question of the language applicable to this dispute, paragraph 11(a) of the Rules provides:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

In the present case, the Registrar informed the Center that the language of the Registration Agreement is Romanian. The Complaint was submitted in English and following the Language of Proceeding Notification sent by the Center the Complainant filed a request that the language of the proceeding be English. The Respondent agreed to English being the language of the proceeding.

According to the Rules, paragraph 11(a) and (b), based on the circumstances of this case, the Panel finds that the language of the proceeding should be English since both Parties agreed to English being the language of the proceeding.

4. Factual Background

The Complainant belongs to the Bayer group of companies. Bayer is a global enterprise with core competencies in the fields of health care, nutrition and high tech materials. It is represented by over 250 affiliates and has more than 111,000 employees worldwide. Bayer AG, itself or through subgroups like HealthCare, CropScience and MaterialScience, does business on all five continents, manufacturing and selling numerous of products, inter alia human pharmaceutical and medical care products, veterinary products, diagnostic products, agricultural chemicals and specialty polymers. The vegetable seed business of Bayer CropScience operates under the brand NUNHEMS.

The Complainant owns several NUNHEMS trademarks all over the world registered for agricultural, horticultural and forestry products and grains not included in other classes, fresh fruits and vegetables, seeds, natural plants and flowers. The Complainant provides information on its company and products online on various websites at domain names comprised of NUNHEMS trademarks. The trademark NUNHEMS is highly distinctive and, to the best of the Complainant’s knowledge, solely connected to the Complainant and not used in commerce by any third party.

The Respondent registered the disputed domain name on May 11, 2015 and is using it in connection with an online store allegedly offering various vegetables (seeds) for sale. According to the data available on the website to which the disputed domain name resolves, the online store is for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name fully incorporates the Complainant’s highly distinctive NUNHEMS trademarks and is identical to such marks. The country code Top-Level Domain (“ccTLD”) is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between a complainant’s trademark and a domain name.

The Complainant shows that NUNHEMS is highly distinctive and obviously connected with the Complainant and its products and is not a word any market participant or other domain registrant would legitimately choose unless seeking to create an impression of an association with the Complainant. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to apply for or use any domain name incorporating the NUNHEMS marks. Furthermore, there is no evidence of 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. The Respondent allegedly uses the disputed domain name in connection with a website offering third parties’ products. Such use is not bona fide as it constitutes an infringement of the Complainant’s NUNHEMS marks which are registered in connection with agricultural, horticultural and forestry products and grains not included in other classes, fresh fruits and vegetables, seeds, natural plants and flowers. Given that the Respondent is not selling the Complainant’s goods at all, the Respondent’s use of the disputed domain name does not satisfy the conditions set out in the case of Oki Data Americas, Inc v. ASD, Inc, WIPO Case No. D2001-0903. In addition, the Complainant argues that the Respondent’s alleged use of the disputed domain name seems to be purely fictitious. The Complainant denies that the Respondent has in fact performed any demonstrable preparations to use the disputed domain name. The Complainant concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

In addition, the Complainant provides information on its products at domain names under numerous ccTLDs comparable to the disputed domain name. The Respondent uses the disputed domain name in connection with a website allegedly offering fruits and vegetables for sale, which clearly targets the Complainant’s NUNHEMS marks. The Complainant concludes that the Respondent registered the disputed domain name aware of the Complainant and its NUNHEMS marks.

As regards bad faith use, the Complainant argues that the Respondent’s use of the disputed domain name is likely to disrupt the Complainant’s business and that it is capable of reducing the number of visitors to the Complainant’s website, may adversely affect the Complainant’s business and therefore constitutes bad faith. The Respondent’s bad faith use is evidenced by the fact that it registered a domain name fully containing the Complainant’s well-established NUNHEMS trademarks and uses the disputed domain name in connection with a website offering non-genuine products for sale, which makes it clear that its purpose is, by creating a likelihood of confusion with the Complainant’s marks, to divert traffic intended for the Complainant’s website to its own. In addition, the Respondent offered to sell the disputed domain name on its website for more than EUR 10,000. The Complainant concludes that the Respondent has registered and used the disputed domain name in bad faith.

B. Respondent

The Respondent did not submit any formal Response. However, on August 27, 2015 the Respondent communicated to the Center that his offer to transfer the disputed domain name to the Complainant had expired since the Complainant did not respond directly to him but addressed the Center instead. By the same correspondence, the Respondent provided to the Center a Yahoo email address to which communication on the case should be provided. Also, in a correspondence dated September 4, 2015 the Respondent agreed to the request of the Complainant that English be the language of the proceeding.

No further communication was received from the Respondent.

6. Discussion and Findings

Noting the fact that the Respondent has not filed a Response, the Panel shall consider the issues referred to it, based on the statements and documents submitted to the Panel.

“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.

Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark.

Here, the Complainant has demonstrated ownership of various NUNHEMS registered trademarks, among which:

- Community Trademark Registration no. 000479832 NUNHEMS, registered on March 29, 1999;

- International Registration no. 675224 NUNHEMS, registered on May 28, 1997.

The Complainant provided evidence in support of the above. These trademark registrations predate the registration of the disputed domain name (May 11, 2015).

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademark rights which have been proved.

Here, the disputed domain name incorporates the entirety of the Complainant’s trademark. It is well accepted by UDRP panels that a ccTLD such as “.ro”, is typically ignored when assessing identity or confusing similarity of a trademark and a domain name.

The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:

(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it 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.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which states: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]”.

In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights. As such, the Complainant has established that it is the owner of the NUNHEMS trademarks and claims that the Complainant has not licenced or otherwise authorised the Respondent to use the NUNHEMS trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “Nunhems” (see for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957).

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. The Respondent alleged to the Complainant in an email of July 15, 2015 annexed to the Complaint that his intention was to develop an online store and that he invested money in logo and web design, consulting, etc., and stated that his initial intention was not to sell the disputed domain name. However, the Respondent failed to demonstrate that he was preparing to use the disputed domain name for such purpose. Moreover, although the Respondent stated that his initial intention was not to sell the disputed domain name, the period of time between registration of the disputed domain name (May 11, 2015) and the offer for sale made to the Complainant on July 15, 2015 is relatively short to imagine another intention of the Respondent with regard to the disputed domain name.

Further, as discussed in section C below, the Panel also finds that the Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that the Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use, or that the Respondent is commonly known by the disputed domain name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.

As regards registration in bad faith, the Panel is satisfied that the Respondent registered the disputed domain name with knowledge of the Complainant’s NUNHEMS trademarks given that the said trademarks appear to have been used worldwide for many years prior to the disputed domain name’s registration. Moreover, the Respondent has not denied knowledge of the Complainant.

Also, the Panel verified the information available on the Internet archive and found that on August 1, 2015 the website to which the disputed domain name resolves was used or intended to be used to purportedly sell various vegetable seeds. The website included reference to NUNHEMS and also to the trademarks of various other companies acting in the field of vegetable seeds (i.e., Syngenta, Seminis, Hazera Genetics, Clause vegetable seeds, Enza Zaden), references that were removed at some point thereafter. It results that the Respondent must have been aware of the trademark of the Complainant at the date of registration of the disputed domain name since it was mentioned on the website together with other companies acting in the same field.

The Panel finds the Respondent registered the disputed domain name in bad faith.

As regards bad faith use, the Panel finds that the website to which the disputed domain name resolves is intended to act as an online store, but at the moment is not active, and a mention that the online store is for sale is placed on the home page of the website. At some point the website appears to have included a reference to several companies acting in the field of vegetable seeds (i.e., Syngenta, Seminis, Hazera Genetics, Clause vegetable seeds, Enza Zaden), including a reference to Nunhems, hence it can be inferred that the Respondent’s intention was to derive commercial benefit from the disputed domain name relying on the Complainant’s trademark.

In this respect, paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use.

Further, paragraph 4(b)(i) of the Policy states that where a registrant has registered or acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name, such behaviour may constitute evidence of bad faith registration and use.

The record shows that the Complainant anonymously asked for the price of the disputed domain name and the minimum price requested by the Respondent was an amount of EUR 10,000, which is in excess of the Respondent’s out-of-pocket costs directly related to the registration of the disputed domain name. Hence, the record appears to show that, if the Respondent did not primarily obtain the disputed domain name for bad faith purposes as described under Policy paragraph 4(b)(iv), then the Respondent primarily obtained the disputed domain name for the purpose of selling the disputed domain name to the Complainant or the Complainant’s competitors for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the disputed domain name. The record offers no evidence to refute this finding (see for a similar finding Abdij Affligem v. Jiang Jun, WIPO Case No. D2013-0729).

As held by a UDRP panel in a similar situation, “the intention might have been to sell the Domain Name to the Complainant for a substantial sum of money, or it could have been to benefit unfairly from confusion resulting from use of the Domain Name in relation to a business of the Respondent.” (Advance Magazine Publishers Inc. v. Marcellod Russo, WIPO Case No. D2001-1049).

In its email communication during this proceeding dated August 19, 2015, the Respondent offered to transfer the disputed domain name to the Complainant stating that it has zero value to him. Following such an offer, the Complainant filed a request with the Center, asking for the proceeding to be suspended for 30 days in order to enable the transfer of the disputed domain name to the Complainant. However, after the request for suspension was submitted, the Respondent provided an email communication to the Center stating that his offer for transfer had expired because the Complainant did not directly address his offer, but rather wrote to the Center asking for suspension. This activity might be construed as bad faith use of the disputed domain name since no action seems to have been taken by the Respondent to actually transfer the disputed domain name to the Complainant and the offer made during this proceeding seems not to have been seriously made.

Also, the Respondent apparently gave false contact information to the Registrar in the form of a wrong address. The provision of false contact information may under certain circumstances indicate bad faith (see Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Having in view the above, the Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith.

7. 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 <nunhems.ro> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: November 9, 2015