WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Haribo GmbH & Co. KG v. Whois Agent, Domain Protection Services, Inc. / Louane Severins

Case No. D2018-1975

1. The Parties

The Complainant is Haribo GmbH & Co. KG of Grafschaft, Germany, represented by Rechtsanwältin Mareike Mahlert, Germany.

The Respondent is Whois Agent, Domain Protection Services, Inc., of Denver, Colorado, United States of America / Louane Severins of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Name and Registrar

The disputed domain name <haribo-de.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2018. On August 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2018, 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 Center sent an email communication to the Complainant on September 10, 2018 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 12, 2018.

The Center verified that the Complaint together with 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 proceedings commenced on September 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2018.

The Center appointed Mladen Vukmir as the sole panelist in this matter on October 29, 2018. 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

(i) The disputed domain name was registered on March 25, 2018 (Annex 1 to the Complaint);

(ii) The Respondent is the registrant of the disputed domain name (as disclosed by the Registrar in its verification response as of September 6, 2018);

(iii) The Complainant is a world leading company in the field of Pastilles, Gums, Jellies and Chews (Annex 5 to the Complaint);

(iv) The Complainant is the holder of the European Union Trademark HARIBO (word mark), registration number 009423765, registration date March 1, 2011 (Annex 4 to the Complaint);

(v) The Complainant’s trademark HARIBO is well known and enjoys a high degree of recognition worldwide (Annex 6 to the Complaint);

(vi) In 2015 the trademark HARIBO has for the (13) thirteenth time received the Award “Most trusted Brand” in the context of the study “Reader’s Digest European Trusted Brands” in the category “confectionery” (Annex 7 to the Complaint);

(vii) The Respondent was using the disputed domain name via WhatsApp chain letters to introduce consumers into visiting the related website “www.haribo-de.com” whereby the products of the Complainant including the Complainant’s trademark HARIBO have been shown. The consumer was invited to enter the competition, featuring HARIBO products (worth EUR 100,00) of the Complainant as a prize. The consumer was asked to provide its personal data and to share the offer (competition) with 10 WhatsApp users (Annexes 8 and 9);

(viii) Currently, the Respondent uses the disputed domain name to redirect Internet users to a SEDO parking website with various hyperlinks (determined by the Panel’s inspecting the current website of the Respondent).

It should be noted that a portion of the materials (Annexes) submitted by the Complainant along with the Complaint are in German language. Although the language of the subject proceedings is English, the Panel was nevertheless in position to review and take into consideration said materials in German because of the Panel’s knowledge of German language.

5. Parties’ Contentions

A. Complainant

The Complainant, essentially, asserts that:

(i) The Complainant is a company organized under the laws of Germany, active worldwide in the confectionery business, is the world leading company in the fields of Pastilles, Gums, Jellies and Chews and is using his trademark HARIBO. The Complainant states that he has 16 production sites in 10 countries and employs nearly 7,000 people worldwide.

(ii) The disputed domain name is identical or confusingly similar to the Complainant’s HARIBO trademark, since:

- the Complainant is the owner of a number of HARIBO trademarks registered worldwide, inter alia the European Union Trademark HARIBO, registration number 0094237665, registration date March 1, 2011. Further, the Complainant states that it is the registrant of several domain names such as <haribo.com>, and <haribo.de>;

- the disputed domain name is at least confusingly similar to the Complainant’s HARIBO trademark as it incorporates the trademark in its entirety with the addition of acronym “-de”. The Complainant states that said acronym “de” stands for Deutschland which is a German word for Germany, and according to the Complainant, this is not sufficient to exclude a likelihood of confusion as it would be understood as a reference to the geographical origin. The Complainants explains that the addition of “-de” suggests a connection between the disputed domain name and the Complainant which is a German company.

(iii) The Respondent has no rights or legitimate interests in respect of the disputed domain name since:

- there is no other holder of a registered HARIBO trademark than the Complainant or its affiliated companies, and the Complainant has nor licensed nor authorized the Respondent to use the HARIBO trademark through the registration of the disputed domain name or in any other way;

- there are no indications that the Respondent would be commonly known by the disputed domain name;

- the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services but to deceive the consumers about the provider of the website created under the disputed domain name and to gather sensitive personal data from costumers. On the web site “www.haribo-de.com”, related to the disputed domain name, the Respondent was showing the products of the Complainant and the Complainant’s trademark HARIBO. The consumer was requested to enter the competition, featuring HARIBO products of the Complainant as a prize. The Complainant states that the impression was created that the organizer of the competition as well as the provider of related web site is the Complainant.

- from March, 30, 2018 the related website is used for sponsored links. The Respondent likely earns pay-per-click revenue in relation to the sponsored links by taking unfair advantage of the status and reputation of the Complainant’s HARIBO trademark.

(iv) The disputed domain name was registered and is being used in bad faith and in support of such claim, the Complainant contends that:

- the disputed domain name was used for a major Internet fraud, that is for gathering sensitive personal data from consumers who believe that they enter a competition organized by the Complainant. Furthermore, by using the relating website for sponsored links, the Respondent likely earns pay-per-click revenue in relation to the sponsored links by taking unfair advantage of the status and reputation of the Complainant’s HARIBO trademark;

- the Respondent knew of the registration and use of the Complainant’s HARIBO trademark, and the Respondent exploited the reputation of the HARIBO trademark.

B. Respondent

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

6. Discussion and Findings

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of Response, the Policy, the Rules, the Supplemental Rules and other applicable legal authority pursuant to paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy provides that a complainant must prove, with respect to the disputed domain name, each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark 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

Primarily, the Panel emphasizes that under general consensus view, the mere fact of ownership of a registered trademark by the complainant is generally sufficient to satisfy the threshold requirement of having trademark rights (see section 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Complainant has submitted sufficient evidence to show that it is the owner of the trademark HARIBO, that is the European Union Trademark registration number 009423765, which trademark protection is extended to the United Kingdom where the Respondent apparently is located.

Further, it is well established that the threshold test for confusing similarity under the UDRP involves a comparison between the complainant’s trademark and the disputed domain name to determine if it is identical or confusingly similar. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of descriptive or geographical terms typically being disregarded as insufficient to prevent a finding of confusing similarity. Application of the confusing similarity test under the UDRP 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. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see sections 1.7 and 1.8 of WIPO Overview 3.0).

After performing the side-by-side comparison of the disputed domain name and the textual components of the relevant trademark, it is evident to the Panel that the disputed domain name incorporates the Complainant’s HARIBO trademark in its entirety, and that the same trademark is clearly recognizable as such within the disputed domain name.

The Panel must further answer the question of whether adding the lettering “-de” to the Complainant’s HARIBO trademark in the disputed domain name is sufficient to prevent a finding of confusing similarity of the disputed domain name with the Complainant’s HARIBO trademark.

With respect to the above, this Panel upholds the Complainant’s contention that the addition of the lettering “-de” is insufficient to prevent a finding of confusing similarity. Namely, the lettering “-de” is acronym that stands for “Deutschland” which is a German word for Germany and is widely used as a designation for Germany in international context.

Prior UDRP panels have found confusing similarity in a number of earlier cases based on the circumstances involving domain names comprised of a trademark and a suffix “-de”. Confusing similarity was found in those instances because the suffix that was added did not bear any influence on the ability to recognize the trademark itself. See particularly, ASOS plc v. WhoisGuard Protected, WhoisGuard Inc. / Charlotte Meilleur, WIPO Case No. D2018-0071 (<asos-de.com>).

With respect to the applicable generic Top-Level Domain (“gTLD”) “.com” suffix in the disputed domain name, it is generally accepted that it may be disregarded under the confusing similarity test (see section 1.11 of the WIPO Overview 3.0).

For all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirement set forth in paragraph 4(a)(i) of the Policy, and has proven that the disputed domain name is confusingly similar to its HARIBO trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

“(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) Where [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.”

As noted by previous UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, and as summarized in section 2.1 of the WIP OOverview 3.0: “[…]While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element […]”.

In the present case, the Respondent is in default, hence, the Panel has evaluated the arguments and evidence submitted by the Complainant and finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Namely, the Complainant has established that it is the owner of HARIBO trademark, and that its HARIBO trademark is well known worldwide. The Panel observes that there is neither any relation, disclosed to the Panel nor otherwise apparent from the records, between the Respondent and the Complainant, nor does it arise that the Complainant has ever licensed or otherwise authorized the Respondent to use its HARIBO trademark, or to apply for or use any domain name incorporating the same trademark.

Further, there is no evidence that the Respondent has been commonly known by the disputed domain name.

Furthermore, there is no evidence in the case file or otherwise apparent to the Panel that the Respondent has been using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. The Panel notes the nature of the disputed domain name consisting of the reproduction of the HARIBO trademark followed by “-de” (see section 2.5.1 of the WIPO Overview 3.0). Therefore, the lettering “-de” is not sufficient to exclude a likelihood of confusion as it would be understood as a reference to the geographical origin, suggesting a connection between the disputed domain name and the Complainant, which is a German company.

From the evidence presented by the Complainant, it arises that the Respondent used the disputed domain via WhatsApp chain letters to invite the consumers to visit the related website “www.haribo-de.com” where the Respondent was showing products of the Complainant, including the Complainant’s trademark HARIBO. The targeted consumers were invited to enter the competition in which the Complainant’s products were presented as a prize having the value of EUR 100,00. For participation in the competition, the consumers were asked to provide their name, email address and postal address and they were requested to share the offer with 10 (ten) WhatsApp users. From said facts, it can be concluded that the Respondent tried to lead the consumers to believe that the Complainant is the organizer of the competition, as well as the provider of the related website.

In the Panel’s opinion, it can be safely concluded that the Respondent was well aware of the Complainant, its business and trademarks, and that the Respondent deliberately chose to include the Complainant’s HARIBO trademarks in the disputed domain name, all in order to achieve commercial gain from

“pay-per-click” in relation to the sponsored links placed on the website created under the disputed domain name. In other words, the Respondent committed a fraud upon consumers who think that they are dealing with the Complainant.

Such use of the disputed domain by the Respondent cannot be considered as a legitimate noncommercial or fair use nor does it constitute a bona fide offering of goods and services. This is in line with views taken by panels in earlier UDRP cases.

UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent (see sections 2.13 and 3.4 of the WIPO Overview 3.0; and relevant panel decisions in UDRP cases, particularly, Triple-S Management Corporation v. Whois Privacy Protection Services Inc. / Nathan Stringer, WIPO Case No. D2016-0008 (<asi-sss.net>) and FIL Limited v. fidelity-investments-ivanov.com, Domain Discreet Privacy Service / Igor Ivanov,WIPO Case No. D2014-0131 (<fidelity-investments-ivanov.com>).

Accordingly, the Panel finds that the requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled by the Complainant having made the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and by the Respondent’s failing to produce sufficient arguments or evidence to the contrary.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the 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 that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the 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 holder has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 holder’s website or location or of a product or service on the holder’s website or location.

Owing to any other evidence to the contrary, the Panel accepts the Complainant’s arguments substantiated by evidence that the Respondent has registered and used the disputed domain name in bad faith.

Firstly, this Panel holds that the Respondent was well aware of the Complainant, its business and/or the Complainant’s HARIBO trademark, because the Complainant’s HARIBO trademark is distinctive, registered and does not constitute a dictionary term in any of the languages known to the Panel, including English. The Complainant and his products marked with HARIBO trademark are well known worldwide, which facts the Complainant substantiated by evidence.

The Respondent was inviting via WhatsApp chain letters the consumers to participate in the competition in which the products of the Complainant marked with HARIBO trademark were presented as the prize (worth EUR 100). By such acting, the Respondent intentionally misled the consumers into impression that the Complainant was the organizer of the competition and provider of the website related to the disputed domain name. To participate in the competition, the consumers were requested to submit their personal data. Furthermore, the website created under the disputed domain name is used for sponsored links, therefore it can be concluded that the Respondent is taking unfair advantage of the status and reputation of the Complainant and its HARIBO trademark.

It is difficult to imagine that the Respondent would create a website containing the HARIBO trademark, or that the Respondent offer the Complainant’s products as a prize in the competition without being aware of the Complainant, its business and/or the Complainant’s trademark. Earlier UDRP panels have found bad faith registration based in part on proof that the respondent “knew or should have known” about the existence of the complainant’s trademark (see section 3.2.2 of the WIPO Overview 3.0).

It has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision (see section 4.8 of the WIPO Overview 3.0). By the Panel’s inspection of the website created under the disputed domain name, the Panel has determined that the Respondent uses the disputed domain name to redirect Internet users to a SEDO parking website with various hyperlinks. The Respondent’s use of the disputed domain name to divert Internet users to SEDO parking website and thus capitalizing on Complainant’s trademark is not to be considered a bona fide use. See Lyonnaise de Banque v. Richard J, WIPO Case No. D2006-0142 (<parcoursj.com>).

Summing up, the Respondent’s disputed domain name has no content available (although it was registered just over five months before filing the Complaint) and entering the disputed domain name into the address bar redirects the user to SEDO parking website. In addition to that, the disputed domain name was registered only for a deceptive reason, which was to collect the personal data of the consumers. In its WhatsApp chain letters and website related to the disputed domain name, the Respondent included elements of the Complainant’s identity and products, trying to give an impression of authenticity.

In this Panel’s view, the aforementioned comportment of the Respondent is clear evidence of the Respondent’s bad faith in registration and use of the disputed domain name. See in earlier UDRP proceeding, PepsiCo, Inc. v. Ali Khan, WIPO Case No. D2004-0292 (<pepsistrawberry.com>).

For that reason, the Panel finds the provisions of paragraph 4(b)(iv) of the Policy to be especially applicable in this case, since the Respondent’s registration and use of the disputed domain name interferes with the Complainant’s trademark and Internet users might be misled about the source, sponsorship, affiliation or endorsement of the website created under the disputed domain name.

Given the above, the Panel determines that the disputed domain name has been registered and is being used in bad faith and that the Complainant has fulfilled the third element under paragraph 4(a) of the Policy.

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 <haribo-de.com> be cancelled.

Mladen Vukmir
Sole Panelist
Date: November 12, 2018