WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Röhnisch Sportswear AB v. Niche Advertising
Case No. D2016-2306
1. The Parties
Complainant is Röhnisch Sportswear AB of Örebro, Sweden, represented by Ports Group AB, Sweden.
Respondent is Niche Advertising of Road Town, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <röhnisch.com> [xn--rhnisch-90a.com] (the "Domain Name") is registered with Dynadot4 LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 11, 2016. On November 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent's 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 Respondent of the Complaint, and the proceedings commenced on November 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 8, 2016.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on December 14, 2016. 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 Röhnisch Sportswear AB is a company incorporated in Sweden. Complainant creates trendy, colorful and functional sportswear for women. Complainant was founded in 1945 and exports its products to 20 countries.
According to the evidence submitted by Complainant, Complainant has a large number of trademark registrations for RHÖNISCH, including:
- European Union trademark RHÖNISCH with number 005678065 and a registration date of December 17, 2007.
- International trademark RHÖNISCH with number 769190 and a registration date of January 11, 2001.
The Domain Name <rhönisch.com> [xn—rhnisch-90a.com] was registered on July 5, 2013.
The trademark registrations of Complainant were issued prior to the registration of the Domain Name.
The Domain Name resolves to a pay-per-click website.
5. Parties' Contentions
Complainant submits that the Domain Name is identical to its RHÖNISCH trademark as it contains the RHÖNISCH trademark in its entirety.
According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent is not commonly known by the Domain Name and has not acquired any trademark or service mark rights in the Domain Name. According to Complainant, Respondent's website under the Domain Name is a pay-per-click site displaying sponsored links to sites selling the same kind of products that Complainant is selling. According to Complainant, Respondent has failed to create a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the Domain Name.
Complainant submits that Respondent has registered and is using the Domain Name in bad faith, in particular as Respondent is using the Domain Name in order to redirect Internet users to a pay-per-click site that provides links to websites of third parties selling competing products for commercial gain.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that complainant prove each of the following three elements to obtain an order that the domain name should be transferred or cancelled:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established that it is the owner of several trademark registrations for RHÖNISCH. The Domain Name incorporates the entirety of the RHÖNISCH trademark as its distinctive element. Many UDRP decisions have found that a disputed domain name is identical to a complainant's trademark where the disputed domain name incorporates complainant's trademark in its entirety.
The Panel finds that Complainant has proven that the Domain Name is identical to Complainant's trademark.
B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Name incorporating its trademarks. Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. Based on the evidence provided by Complainant, the Domain Name resolves to a classic pay-per-click website which contains sponsored links to products of competitors of Complainant. Such use cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, the website to which the Domain Name resolves does not accurately and prominently disclose the relationship between Respondent and Complainant as the holder of the RHÖNISCH trademarks, in particular as there has never been any business relationship between Complainant and Respondent. Respondent is also not commonly known by the Domain Name nor has it acquired any trademark or service mark rights.
No response to the Complaint was filed and Respondent has not rebutted Complainant's prima facie case.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. Noting the status of the RHÖNISCH marks, in particular its peculiar spelling with the "Ö" letter of the trademarks, which "ö" letter is repeated in the Domain Name, and the overall circumstances of this case, the Panel finds it more likely than not that Respondent knew or should have known of Complainant's RHÖNISCH marks.
The Panel notes that the Domain Name currently resolves to a pay-per-click website. The Panel further notes that the Domain Name is offered for sale. The Panel finally notes that the Domain Name incorporates Complainant's trademarks in its entirety, which indicates, in the circumstances of this case, that Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The Panel finds that Complainant has proven that the Domain Name has been registered and is being used 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 Domain Name <röhnisch.com> [xn—rhnisch-90a.com] be transferred to Complainant.
Dinant T. L. Oosterbaan
Date: December 21, 2016