WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ralph Anderl v. Luo Zhu
Case No. D2013-0892
1. The Parties
The Complainant is Ralph Anderl of Berlin, Germany, represented by Habermann, Hruschka & Schnabel, Germany.
The Respondent is Luo Zhu of Nanjing, China.
2. The Domain Name and Registrar
The disputed domain name <icberlinframe.org> is registered with GoDaddy.com, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2013. On May 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2013.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on June 24, 2013. 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 is the managing director of ic! berlin brillen GmbH of Berlin, Germany, a manufacturer of designer spectacles sold under the mark IC! BERLIN.
The Complainant owns or co-owns several trademark registrations throughout the world for trademarks comprising or incorporating IC, IC!, IC! BERLIN and IC!-BERLIN (the “IC Marks”) in plain and stylized forms for eyeglasses and related goods. These include the following:
- German trademark registration no. 39754661 for IC!, registered on May 11, 1998 in Classes 9, 14 and 28;
- Community trademark registration no. 008555641 for IC! BERLIN, registered on March 16, 2010 in Classes 9, 35 and 44; and
- International trademark registration no. 866475 for IC! BERLIN, registered on December 20, 2004 in Classes 9, 16 and 25.
The disputed domain name was registered on April 7, 2013.
At the time of filing of the Complaint, the Respondent was using the disputed domain name to market eyeglasses, including eyeglasses branded with the IC Marks. On the date of this decision the disputed domain name featured a website that offers movies in DVD format.
5. Parties’ Contentions
The Complainant submits that it’s IC! BERLIN eyeglasses are internationally famous and have been honored with several design awards.
The Complainant licenses the IC Marks exclusively to ic! berlin brillen GmbH, which uses them extensively in connection with the design, development, manufacture, sale and marketing of eyeglasses, sunglasses, eyeglass frames, eyeglass cases and lenses.
The Complainant submits that the disputed domain name is confusingly similar to the IC Marks. The element “icberlin” is essentially identical to the Complainant’s IC BERLIN and IC!-BERLIN trademarks; the absence of the exclamation mark is immaterial since such characters cannot be replicated in domain names. The additional word “frame” is purely descriptive of the goods offered on the website under the disputed domain name, namely spectacle frames.
The Respondent’s website under the disputed domain name features the corporate logo of ic! berlin brillen GmbH, as shown in Annex IV of the Complaint, so as to leave the impression that the website originally refers to the Complainant’s company. The Complainant states that the disputed domain name is also directed to European, United Kingdom, German and United States customers, among others because on the website the available currencies are USD, EUR, GBP and AUD with corresponding shipping possibilities.
The Complainant submits moreover that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed the Respondent to use the IC Marks. The Complainant submits that the spectacles offered on the website under the disputed domain name are in a price range of USD 125, which for the respective models is below the retailer price offered by the Complainant’s company. Therefore, the Complainant concludes that the spectacles offered seem to be counterfeits of ic! berlin brillen GmbH’s spectacles. Furthermore, the Complainant states that the Respondent is not known to the Complainant and is not an authorized dealer of the Complainant’s company.
Finally, the Complainant submits that the disputed domain name was registered and is being used in bad faith to market counterfeit copies of its branded eyewear. The Complainant submits that the Respondent registered and has used the disputed domain name with the aim of disrupting the business of the Complainant’s company and to mislead consumers so as to gain commercially from the sale of counterfeit goods to consumers who were attracted to the website in the erroneous belief that they would be able to order genuine eyeglasses of ic! berlin brillen GmbH.
The Complainant requests the transfer of the disputed domain name to itself.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy establishes three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant the panel ordering the remedy requested.
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s IC! BERLIN trademark. The disputed domain name incorporates the Complainant’s IC! BERLIN trademark entirely. The absence of the exclamation mark is immaterial since such characters cannot be replicated in a domain name. The
relevant comparison to be made is with the second-level portion of the disputed domain name only, as it is well-established that the top-level domain name extension such as “.org” may be disregarded for this purpose.
The mere addition of generic words such as the term “frame” does not dispel the confusing similarity caused by the adoption into the disputed domain name of the Complainant’s IC! BERLIN trademark.
Accordingly, the Panel finds that the Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the 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 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.
There is no evidence of the existence of any of those circumstances on the record. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademark. The Complainant has rights in the trademark, which precede the Respondent’s registration of the disputed domain name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and has thereby shifted the burden of production to the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services or that it otherwise has any rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
The Complainant’s allegations with regard to the Respondent’s registration and use of the disputed domain name in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent.
The Panel is satisfied that the Respondent must have been aware of the trademark when it registered the disputed domain name. The Complainant has provided sufficient evidence that the disputed domain name registration postdates the registration of the trademarks. At the time of filing the Complaint, the disputed domain name featured a website used to market eyeglasses, including eyeglasses branded with the IC Marks as shown in Annex IV of the Complaint.
The very incorporation of the trademark in the disputed domain name and the display of the trademark, logo and the products that appear to be counterfeit on the website confirms the Respondent’s awareness of the trademark.
Thus, the Panel concludes that the Respondent registered the disputed domain name in bad faith.
The Panel also finds that the actual use of the disputed domain name is in bad faith. The Complainant stated and provided evidence and argument (the price of the products available on the website under the disputed domain name), which the Respondent has not denied, that the website under the disputed domain name contains offers of counterfeited products.
The use by a respondent of a domain name which includes a trademark to resolve to a website which appears to offer and sell counterfeit products under that trademark can constitute evidence of bad faith registration and use. (See Burberry Limited v. Jonathan Schefren, WIPO Case No. D2008-1546, Prada S.A. v Domains for Life, WIPO Case No. D2004-1019 and Mr. Ralph Anderl v. Yang Mingfeng, WIPO Case No. D2013-0657).
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain Internet users to its website, by misleading Internet users into believing that the website is and the products sold on it are those of or authorised or endorsed by the Complainant.
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) 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 disputed domain name <icberlinframe.org> be transferred to the Complainant.
Pablo A. Palazzi
Date: July 8, 2013