WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

H. von Gimborn GmbH v. Mathias Boldt

Case No. D2015-1042

1. The Parties

The Complainant is H. von Gimborn GmbH of Emmerich am Rhein, Germany, represented by Preu Bohlig & Partner, Germany.

The Respondent is Mathias Boldt of Nuremberg, Germany.

2. The Domain Name and Registrar

The disputed domain name <hvgimborn.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2015. On June 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day 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. On June 23, 2015, the Complainant submitted an amendment to the Complaint.

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 June 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2015.

The Center appointed Christian Schalk as the sole panelist in this matter on July 22, 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.

The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) and (b) of the Rules. The language of the proceedings is English.

4. Factual Background

The Complainant is a German manufacturer of pet food and cat litter. Its products are sold in Germany and also in over forty countries including the Netherlands and Italy. The Complainant’s full company name under which it has operated since 1965 is “H. von Gimborn GmbH”.

The Complainant is owner of several trademarks for GIMBORN including the European Community Trademark No. 009833757 GIMBORN with a priority date of March 23, 2011 and a date of entry into the register of August 4, 2011, covering goods in International Classes 3, 5, 16, 18, 22, 28 and in 31.

The Respondent registered the disputed domain name on September 9, 2014. The disputed domain name resolves to a website where the Complainant’s company name and logo are prominently displayed on the upper left side. The website features some of the Complainant’s products but offers apparently also other products, such as beverages, sausages and sweets.

The Complainant’s searches for the Respondent at the resident’s registration office and the company register of Nuremberg, Germany, where the Respondent lives in accordance with the information given in the WhoIs record for the disputed domain name revealed that the Respondent is neither listed there as an individual person nor as a company.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name <hvgimborn.com> is identical or at least confusingly similar with the distinctive company symbol “H. von Gimborn GmbH” in which the Complainant has rights. The Complainant explains that the letter combination “GmbH” describes the company structure of the Complainant and that the letter “v” is an abbreviation of the nobiliary particle “von”. The Complainant believes that the public identifies the term “hvgimborn” with the Complainant’s company. The Complainant argues further that the disputed domain name is confusingly similar with the Complainant’s registered trademark GIMBORN and that the letters “h” and “v” have an inferior distinctive importance compared to Gimborn, the principle component of the disputed domain name. Given the Complainant’s strong market presence in the segments of pet food and cat litter within the German retail market, the Complainant’s trademark rights in GIMBORN have a strong significance among the public.

The Complainant alleges also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant explains in this context that on the website to which the disputed domain name resolves, frequent reference is made to the Complainant, its trademarks, its company symbols, its name and the acronym “Gimborn”. The Complainant argues further that even the Complainant’s address has been copied on this website and that it is the same with the information of the Complainant’s history as it is shown on the Complainant’s official website. For these reasons, the Complainant is convinced that the Respondent registered the disputed domain name in order to attempt to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s website or location.

Furthermore, the Complainant alleges that the disputed domain name was registered and is being used in bad faith. The Complainant argues that the use of the company symbol “H v. Gimborn GmbH”, the acronym “Gimborn” and the name “H. von Gimborn” in the disputed domain name as well as on the website to which the disputed domain name resolves infringes paragraphs 5, 15, and 14 of the German Trademark Act, paragraph 9 of the Community Trademark Regulation and paragraphs 5 and 8 of the German Law on Unfair Competition. The Complainant explains also that the Respondent is not known by the disputed domain name and that he is especially not a licensee of the Complainant’s trademarks. The only reason why the Respondent registered the disputed domain name was to disrupt the business of the Complainant and to create a likelihood of confusion with the Complainant’s trademark and its company symbols. Given the Complainant’s presence in more than forty countries and the fact that the Complainant is the market leader in the fields of pet food and cat litter, the Complainant is convinced that it is not possible that the Respondent did not know of the Complainant and its trademarks.

The Complainant argues also that another indication for the Respondent’s bad faith is that according to the information of the German resident’s registration office and the company register, the Respondent is not registered at the address mentioned in the WhoIs record for the disputed domain name nor is a company registered there. Moreover, the Respondent did not answer to the warning letter sent to him by the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, the disputed domain name can be transferred only where the Complainant has proven each of the following three elements:

(i) the disputed 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 disputed domain name; and

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in GIMBORN. The disputed domain name is not identical to the Complainant’s trademark. However, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

As it has been decided by previous panels, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see for instance, Casa Editorial El Tiempo, S.A. v. Montanya Ltd, WIPO Case No. D2009-0103; Todito.com v. Francisco Gómez Ceballos, WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047).

In this case, the letters “h” and “v” are parts of the Complainant’s full company name, which is “H. von Gimborn GmbH”. The letter “H” stands for the first letter of the first name of the founder of the Complainant’s company which was “Heinrich” (Heinrich von Gimborn). The word “von” is a nobility particle, which usually stands between the first and the last name. Its acronym is the letter “v”. The letter combination “GmbH” is the German acronym for “limited liability company”.

Therefore, the letter combination “hv” cannot avoid similarity nor does it add anything to avoid confusion with the Complainant’s trademark. The only distinctive element of the disputed domain name consists of the term “gimborn”, which is identical to the Complainant’s trademark.

In addition, the “.com” top-level domain suffix in the disputed domain name does not affect the determination that the disputed domain name is confusingly similar with the GIMBORN mark in which the Complainant has rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg, WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and cases cited therein).

For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark.

Given the Respondent’s reference to the Complainant’s products on the website, the Panel is convinced that the Respondent was aware of the Complainant when registering the disputed domain name and when it began using it.

The Respondent has not rebutted the Complainant’s allegations and has not provided the Panel with any explanations as to the Respondent’s rights or legitimate interests. On the contrary, it appears to the Panel that the Respondent is unfairly capitalizing on the reputation and goodwill established by the Complainant (see, e.g., Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043; Microsoft Corporation v. Global Net 2000, Inc., WIPO Case No. D2000-0554). The Respondent has directed the disputed domain name to its own website where the Complainant’s company name and logo are prominently displayed together with some of the Complainant’s products. In addition, the Respondent has copied and pasted the article about the Complainant’s company history from the Complainant’s website to its own website. The website to which the disputed domain name resolves features also the Complainant’s street address. However, in the “contact us” section of this website, the Respondent displays an email address, which features the disputed domain name. The Panel is convinced that the only reason for this behaviour is to direct any online correspondence away from the Complainant to the Respondent.

Therefore, the Panel believes that the disputed domain name has been registered by the Respondent only in order to capitalize on the Complainant’s reputation and goodwill by redirecting Internet traffic intended for the Complainant away from it to the Respondent’s website to generate income. Such behaviour cannot constitute a bona fide or legitimate use of the disputed domain name.

The Panel finds for these reasons that the Respondent has no rights or legitimate interests in the disputed domain name, and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of domain names:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.

According to the materials brought before the Panel, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that to its knowledge, the registration of the disputed domain name will not infringe the rights of any third party.

Given the fact that the Respondent refers to the Complainant and its products on the website to which the disputed domain name resolves, the Panel finds that the Respondent must have been well aware of the Complainant’s trademark and its products when it registered the disputed domain name (see, Liseberg AB v. Administration Local Manage Technical, WIPO Case No. D2003-0864). Therefore, the Panel is convinced that the Respondent registered the disputed domain name in bad faith.

The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.

The Respondent has directed the disputed domain name to a website which features the Complainant’s trademark and company logo as well as some of the Complainant’s products. This website contains also an exact copy of the Complainant’s company history as it is written on the Complainant’s own website. In addition, the Complainant’s correct street address is mentioned there while the email addresses listed in the “contact us” section of this website are linked with the disputed domain name and therewith those of the Respondent. Therefore, Internet users may easily believe that this website is either owned by the Complainant or at least somehow related to the Complainant. However, when such Internet users try to get in contact with the Complainant via email, they will be unaware of the fact that it is the Respondent who receives such communication. The Panel believes that the only reason for this would be to profit from the Complainant’s trademark and to use the disputed domain name to direct Internet traffic away from the Complainant to the Respondent (see also Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912). Therefore, the Panel is convinced that the Respondent’s only purpose was to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Respondent has apparently also provided inaccurate contact details when he registered the disputed domain name or failed at least to correct such false contact details. The Center has used the contact details given in the WhoIs record for the disputed domain name and those provided by the Registrar when it tried to contact the Respondent. However, the courier service provider could not reach the Respondent in order to deliver the Written Notice of the Complaint. It was the same with the fax number, which was apparently incorrect. A search request by the Complainant at the resident’s registration office and the company register of Nuremberg, Germany where the Respondent pretends to live in accordance with the WhoIs record for the disputed domain name revealed that the Respondent is neither listed there as an individual person nor as a company. Therefore, the Panel notes that the Respondent may have given incorrect contact details to frustrate or at least to delay these proceedings (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Furthermore, the Respondent apparently did not reply to the cease and desist letter sent by the Complainant but continued its bad faith use of the disputed domain name even after receipt of the Complainant’s cease and desist letter. Such behaviour is considered by the Panel as further evidence of bad faith (see in this context also News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; see also Aktiebolaget Electrolux AB v. Domains by Proxy, Inc. / HSD LLC,Thomas Keith, WIPO Case No. D2010-0561).

Given all the facts and circumstances of this case, the Panel finds therefore, that the disputed domain name was registered and is being used 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 <hvgimborn.com> be transferred to the Complainant.

Christian Schalk
Sole Panelist
Date: July 27, 2015