Silit-Werke GmbH & Co KG v. Frans Noordermeer
Claim Number: FA1611001704694
Complainant is Silit-Werke GmbH & Co KG ("Complainant"), represented by Sebastian Engels of Boehmert & Boehmert Lawfirm, Germany. Respondent is Frans Noordermeer ("Respondent"), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <silit.shop>, registered with Tucows Domains Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 28, 2016; the Forum received payment on November 28, 2016.
On November 29, 2016, Tucows Domains Inc. confirmed by email to the Forum that the <silit.shop> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 30, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 2016 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@silit.shop. Also on November 30, 2016, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on December 19, 2016.
On December 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a manufacturer of pressure cookers and other cookware, founded in Germany in 1920. Complainant distributes its products globally under the SILIT brand. Complainant holds various trademark registrations for SILIT and related marks. Among these is European Union trademark number 000100198, filed in 1996 and registered in 1998, for a figurative mark comprised of the word SILIT in stylized form; and Germany trademark number 782677, registered in 1964 for SILIT as a word mark.
The disputed domain name <silit.shop> was registered by Respondent on October 3, 2016. Complainant states that Respondent has not been authorized to register or use Complainant's mark as a domain name or in any other way. In response to an inquiry from Complainant, Respondent stated on October 31, 2016, that he was unaware of Complainant's mark. Complainant challenges Respondent's denial, noting that its SILIT mark was registered with ICANN's Trademark Clearinghouse in 2013, and Respondent therefore would have received a notification regarding Complainant's mark at the time that he registered the disputed domain name. Respondent also claimed on October 31, 2016, that he intended to use the domain name for a private family album, and on the same date the domain name began resolving to a website containing an image of a puppy identified as "Silit."
Complainant states further that on or around the same date that Respondent registered the disputed domain name, he also registered many other domain names corresponding to well-known trademarks. Among these domain names are <albertsons.shop>, <atsu‑kokudo.shop>, <garnier.shop>, and <wilkinson‑sword.shop>, each of which resolves to a website depicting one or two puppies or kittens whose names supposedly correspond to the domain name.
On the above grounds Complainant contends that the disputed domain name <silit.shop> is identical or confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in the domain name; and that the domain name was registered and is being used in bad faith.
B. Respondent
Respondent states that he is using the domain name only in private networks and for purposes unrelated to Complainant's business. He states further that other companies also have trademark rights in SILIT, and therefore he is the legitimate and legal owner of the domain name. He notes that he prevailed in a proceeding under the Uniform Rapid Suspension System ("URS") involving the disputed domain name. See Silit-Werke GmbH & Co KG v. Frans Noordermeer, FA 1701189 (Forum Nov. 7, 2016) (finding against Complainant on grounds that Complainant failed to offer evidence of a word mark as required by URS Rule 1.2.6.1).
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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 must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The disputed domain name corresponds to Complainant's SILIT mark, adding the ".shop" top-level domain, making it identical to Complainant's mark for purposes of paragraph 4(a)(i) of the Policy. See, e.g., Morgan Stanley v. NaShan, FA 1703414 (Forum Dec. 14, 2016) (finding <morganstanley.store> identical to MORGAN STANLEY); Chan Luu, LLC. v. Hasoon Kim / Colonysurf, FA 1697833 (Forum Nov. 28, 2016) (finding <chanluu.shop> confusingly similar to CHAN LUU); see also Silit-Werke GmbH & Co. KG v. Lin Yi Yan, FA 1701190 (Forum Nov. 18, 2016) (finding <silit.store> identical or confusingly similar to SILIT under URS). Unlike the URS, the UDRP does not specifically require evidence of a word mark. See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 1.11 (2d ed. 2011), available at http://www.wipo.int/amc/en/domains/search/overview/. In any event, in this proceeding, Complainant has provided evidence of longstanding rights in SILIT as a word mark. The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name corresponds to Complainant's mark without authorization. The Panel considers Respondent's claimed use of the domain name for a "private" or "family" website to be pretextual, likely concocted for the sole purpose of attempting to create an appearance of bona fide use. Compare Tower Laboratories Ltd. v. Eric Seltzer, FA 791325 (Forum Oct. 16, 2007) (finding against respondent notwithstanding claim that domain name <bromoseltzer.com> was registered as a tribute to his father's dog, "Bromo" Seltzer) and Bibbero Systems, Inc. v. Tseu & Associates Co. & Tslin & Sons, Inc., FA 94416 (Forum May 9, 2000) (finding against respondent notwithstanding claim that domain name <bibbero.com> was registered for a cat named "Bibbero"); with Mattel, Inc. v. Gopi Mattel, FA 372847 (Forum Feb. 15, 2005) (finding rights or legitimate interests in <mattel.org> based upon concrete evidence that respondent's legal surname of "Mattel" predated his registration of the corresponding domain name by several years).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with concrete evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally,
Complainant must show that the disputed domain name was registered and has been
used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be
shown by evidence that the domain name was acquired "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 [Respondent's] documented out-of-pocket costs directly related to the
domain name." Under paragraph 4(b)(ii), bad faith may be shown by evidence
that a domain name was registered "in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, provided that [Respondent] ha[s] engaged in a pattern of such conduct."
Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by
using the domain name, [Respondent] intentionally attempted to attract, for
commercial gain, Internet users to [Respondent's] 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 [Respondent's] web
site or location or of a product or service on [Respondent's] web site or
location."
The instances set forth in paragraph 4(b) are illustrative rather than exhaustive, and bad faith may be found based upon other circumstances in appropriate cases. See Hotel Plaza Ltd., Parkroyal Hospitality Management Pte Ltd. (PHM) v. DomainWorks Inc./PARKROYAL.COM c/o Whois IDentity Shield/Vertical Axis, Inc., D2008-1760 (WIPO Mar. 18, 2009).
Respondent has registered many domain names corresponding to well-known trademarks, including the disputed domain name <silit.shop>, and the only apparent use of these domain names is, in the Panel's view, entirely pretextual. The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <silit.shop> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: January 3, 2017
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