The Complainant is Haribo GmbH & Co. KG of Grafschaft, Germany, represented by Rechtsanwältin Mareike Mahlert, Germany.
The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Louane Severins of London, United Kingdom.
The disputed domain name <haribo-de.net> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2018. On November 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 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 November 15, 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 November 20, 2018.
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 proceedings commenced on November 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2018.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on December 24, 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.
The Complainant is a leading confectionary supplier based in Germany. The Complainant is owner of numerous registered trademarks worldwide relating to the trademark HARIBO, inter alia the European Union Trademark (Word mark) HARIBO, No 009423765, with registration date March 1, 2011. The trademark HARIBO is registered in class 30 and used by the Complainant in relation to confectionery.
The Complainant owns numerous domain names incorporating its trademark, including <haribo.de> and <haribo.com>.
The disputed domain name was registered on June 27, 2018. The Respondent was using the disputed domain name via WhatsApp chain letters to introduce consumers into visiting the related website “www.haribo-de.net”. The disputed domain name’s website is showing products of the Complainant including the Complainant’s trademark HARIBO, where the consumer is requested to enter a competition, featuring HARIBO products of the Complainant (worth 100,00 EUR) as a prize.
The Complainant is a major producer of confectionary under the trademark HARIBO. It employs 7000 or so employees around the world. It was designated one of Europe’s most trusted brands in 2015 “Reader’s Digest European Trusted Brands” in the category “confectionery”.
According to the Complainant, 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 “-de”. The Complainant says that this addition adds to the confusing similarity between the disputed domain name and the Complainant’s HARIBO trademark because the Complainant is a German Company and the acronym “de” stands for “Deutschland” - the German word for “Germany”. The Addition “-de” is not capable of excluding a likelihood of confusion as it would be understood as a reference to this geographical origin.
According to the Complainant, there is no information to suggest that the Respondent has a legitimate right to use the Complainant’s HARIBO trademark. There is no other possessor of the HARIBO trademark and the Complainant has not licensed or authorized the Respondent to use it in any way. The Complainant asserts that it is almost impossible that the Respondent has been commonly known by the disputed domain name given the extent of the Complainant’s rights.
The Respondent also contends that the Complainant does not use the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Respondent used the disputed domain name to gather sensitive personal data by way of a WhatsApp based chain mail fraud. By this means Internet users are invited to participate in a competition concerning HARIBO products. At some point participants are requested to supply personal information for the purpose of participation in the competition. On the website to which the disputed domain name resolves the Complainant’s products are offered and its trademark reproduced, generating an air of authenticity and genuine connection with the Complainant.
In the result, the Complainant alleges that the disputed domain name was used for a major Internet fraud, i.e., gathering sensitive personal data from customers who believe they are entering a competition organized by the Complainant. The use of the disputed domain name for such illegal activity can never confer rights or legitimate interests on a respondent, according to the Complainant.
Thus the registration and use of the disputed domain name were also in bad faith. According to the Complainant, the Respondent knew of the registration and use of the Complainant’s HARIBO trademark and specifically exploited the reputation of the mark to make a trustworthy impression and to conceal its true identity. The Complainant contends that a legitimate use of the HARIBO trademark by the Respondent cannot be conceived of.
The Respondent did not reply to the Complainant’s contentions.
The disputed domain name is not identical to the HARIBO registered trademark of the Complainant. However, it incorporates that distinctive mark in its entirety and is very visible and recognizable, inter alia because it is separated from the addition “ .de” by a dash. In any case that addition further reinforces the false suggestion of a connection between the disputed domain name and the trademark of the Complainant, as the latter is a German company.
Therefore, the Panel holds that the disputed domain name is confusingly similar to the HARIBO trademark of the Complainant.
The material put before the Panel by the Complainant indicates that the disputed domain name was used by the Respondent for the purpose of generating the false impression that its fake competition was in fact operated by the Complainant. Instead the competition is fraudulent in nature and intended to result in the supply of confidential data to the Respondent by Internet users who have been misled by the use of the disputed domain name, the chain mail WhatsApp communications and the deceptive website to which the disputed domain name resolves.
None of these activities are in any way legitimate or for a bona fide commercial or other purpose, and they are not of a kind therefore to vest rights or lead to the recognition of legitimate interests in the person of the Respondent.
Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
The trademark HARIBO of the Complainant enjoys a considerable reputation in relation to confectionary in many jurisdictions. It is inconceivable that at the time of registration of the disputed domain name the Respondent was not aware of the Complainant’s exclusive rights in that regard. The subsequent use for the purpose of an Internet fraud or phishing exercise by the Respondent further reinforces that conclusion. The nature of the use of the disputed domain name, to deliberately create a false impression of a connection with the Complainant via fairly elaborate and well thought out means, further indicates that the Respondent registered and used the disputed domain name to wrongly obtain private data from unsuspecting Internet users.
The Panel also notes that the Respondent was clearly aware of the Complainant’s trademark when it registered the disputed domain name due to the fact that the Respondent already used another domain name, <haribo-de.com>, in the same manner in a prior UDRP decision, Haribo GmbH & Co. KG v. Whois Agent, Domain Protection Services, Inc. / Louane Severins, WIPO Case No. D2018-1975.
Therefore, the Panel holds that the disputed domain name was registered and 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 disputed domain name, <haribo-de.net> be cancelled.
William A. Van Caenegem
Date: January 7, 2019
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