WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jörg Reents and ServFaces GmbH v. Ted Truong and The Truong
Case No. D2019-1171
1. The Parties
The Complainants are Jörg Reents, Germany, and ServFaces GmbH, Germany, represented by ASG Rechtsanwaltsgesellschaft mbH, Germany.
The Respondents are Ted Truong, United States of America (“United States” or “US”), and The Truong, United States (collectively referred to as “the Respondent”).
2. The Domain Name and Registrar
The disputed domain name <servfaceswestcoast.com> (the “Disputed Domain Name”) 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 22, 2019. On May 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 23, 2019, 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 sent an email communication to the Complainant on June 4, 2019 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 June 9, 2019.
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 June 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on July 18, 2019. 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 relevant facts are straightforward and can be summarized as follows.
The Complainant ServFaces GmbH is a German company. The Complainant Jörg Reents is its managing director.
ServFaces GmbH produces and sells surface coatings and cleaning agent products. Mr. Reents owns various trademarks for the letters SF in stylized form accompanied by the term Servfaces (for example, DE302015208849, registered on September 24, 2015), and these are licensed to ServFaces GmbH. They are referred to collectively in this Decision as the SERVFACES trademark. It is not generally necessary to distinguish between the Complainants in this Decision and they are referred to collectively as the “Complainants”. The Complainants’ operate websites promoting their business linked to <servfaces.de> and <servfaces.com>.
The First Respondent is Mr. Ted Truong, who operates a business which supplies products that compete with those of the Complainants. The Disputed Domain Name does not at the time of this Decision resolve to an active website. However, the evidence filed with the Complaint shows it has previously been linked to a website offering for sale competing products. That website bears the Complainants’ SERVFACES trademark in logo form and generally appears to be a website operated by or with the authority of the Complainants – for example it contains text describing the business as being “ServFace Certified Detailers”. It displays Mr. Truong’s name and contact details.
The identity of the second Respondent is discussed below.
On March 1, 2019, US lawyers acting for the Complainants sent a cease and desist letter to Mr. Truong.
The Respondent registered the Disputed Domain Name on October 11, 2018. As indicated above the filed evidence shows it was used to redirect to a website offering competing products. At the time of this Decision it does not resolve to an active website.
5. Parties’ Contentions
A. Complainant
The Complainant says that the Disputed Domain Name is confusingly similar to the SERVFACES trademark in that it simply adds the non-distinctive geographical term “westcoast”.
The Complainant says that the Respondent has no rights or legitimate interests in the term “servfaces”.
The Complainant says that the Respondent’s registration and use of the Disputed Domain Name is in bad faith. It says it was clearly chosen to take advantage of the Complainants’ name or trademark. It is being used to attract traffic to a website offering products which compete with those of the Complainants.
B. Respondent
No Response has been filed.
6. Discussion and Findings
6.1. Preliminary Matters: Respondent identity
The Panel notes that no communication has been received from the Respondents. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondents’ failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,
WIPO Case No. D2012-1909).
The Panel notes that two respondents are identified. It appears likely that the second Respondent (“The Truong”) is simply a typographical error in the relevant records and is intended to refer to the same person as the First Respondent (“Ted Truong”). In this Decision the Panel refers to “the Respondent” and sees no need to distinguish between them.
6.2. Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has rights in the SERVFACES trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. This trademark is a device mark, but features prominently as part of the registered device the word “servfaces”, and, in these circumstances, the Panel concludes the Disputed Domain Name is confusingly similar to the trademark. Similarity between a domain name and a device mark which includes words or letters is a readily accepted principle where the words or letters comprise a prominent part of the trademark in question – see, for example, EFG Bank European Financial Group SA v. Jacob Foundation,
WIPO Case No. D2000-0036; and Sweeps Vacuum & Repair Centre, Inc. v Nett Corp,
WIPO Case No. D2001-0031.
The Disputed Domain Name simply adds the geographic descriptive term “westcoast” to the trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,
WIPO Case No. D2000‑0662). It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,
WIPO Case No. D2008-1694).
It is also established that the addition of a descriptive or geographic term (such as here “westcoast”) to a domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,
WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix,
WIPO Case No. D2006‑0189; and section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainants’ trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Panel finds the SERVFACES trademark is, on the evidence before the Panel, a distinctive term relating to the Complainant which appears to be a coined word with no ordinary meaning and where there is no evidence of anyone else using that or any similar term.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
“(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
None of these apply in the present circumstances. The Complainants have not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the SERVFACES trademark. The Complainants have prior rights in the SERVFACES trademark, which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainants have therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name, and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,
WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003‑0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel concludes that the filed evidence establishes clearly that paragraph 4(b)(iv) of the Policy applies as the Disputed Domain Name is likely to attract traffic because of confusion with the Complainants’ trademark, and the Respondent hopes to derive commercial gain as a result. There appears to be no plausible reason for the Respondent’s selection of the Disputed Domain Name other than as a deliberate attempt to profit from the confusion generated with the Complainants’ SERVFACES trademark. The Panel finds that the Respondent has failed to produce any evidence to rebut that inference or to show any that the registration and use of the Disputed Domain Name was not in bad faith.
As a result, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <servfaceswestcoast.com> be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: August 1, 2019
