Ed. Wüsthof Dreizackwerk KG v. Jean Brown
Claim Number: FA2308002056104
Complainant is Ed. Wüsthof Dreizackwerk KG (“Complainant”), represented by Rick Wendler of McDermott Will & Emery, Germany. Respondent is Jean Brown (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wuesthof.us>, registered with Key-Systems GmbH.
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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to Forum electronically on August 4, 2023; Forum received payment on August 4, 2023.
On August 4, 2023, Key-Systems GmbH confirmed by e-mail to Forum that the <wuesthof.us> domain name (the “Domain Name”) is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 4, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of August 24, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wuesthof.us. Also on August 4, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no Response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On August 25, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant produces cutlery and similar products. It has rights in the WUESTHOF mark based upon its international registration of that mark in accordance with the Madrid Protocol. Respondent’s <wuesthof.us> Domain Name is identical or confusingly similar to Complainant’s mark. It incorporates the WUESTHOF mark in its entirety, merely adding the country code top-level domain (“ccTLD”) “.us.”
Respondent has no rights or legitimate interests in the Domain Name. Complainant has not authorized or licensed Respondent to use the WUESTHOF mark, Respondent is not commonly known by the Domain Name, it is not affiliated with Complainant, and it is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead has used it to host pay-per-click links to competitors of Complainant and is now offering it for sale.
Respondent registered or uses the Domain Name in bad faith. It registered the Domain Name while itself having no connection with Complainant, it is offering it for sale at prices that exceed the direct costs associated with it, it registered the Domain Name with actual knowledge of Complainant, it registered the Domain Name to prevent Complainant from using it in a domain name that reflects its mark, and it is using it for commercial gain to attract Internet users to its websites by causing confusion with Complainant’s mark as to the source, sponsorship, endorsement or affiliation of its website. Further, it provided false information to the registrar.
B. Respondent
Respondent did not submit a Response in this proceeding.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint as true unless the evidence is clearly contradictory. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true). Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”), WIPO Overview 3.0, at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding.
The WÜSTHOF mark was registered to Complainant in accordance with the Madrid Protocol (Reg. No. 824278) on 23 October 2003 (WIPO printout submitted as Complaint Annex 2). Complainant’s international registration of its mark establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (finding Complainant has trademark rights in the BITTREX mark through registration of the mark with the EUIPO and the USPTO.).
Respondent’s <wuesthof.us> Domain Name is identical or confusingly similar to Complainant’s mark. The German Ü is routinely transliterated as a UE in English, which does not include the umlaut diacritical mark. The “wuesthof” appearing in the Domain Name is equivalent to the WÜSTHOF mark registered to Complainant. The Domain Name fully incorporates the mark, merely adding “.us” ccTLD. This change does not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (“The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “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 domain name.” Notwithstanding the change described above, Complainant’s mark is clearly recognizable within the Domain Name, and the Domain Name is likely to cause confusion.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the WÜSTHOF mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to the respondent of the dispute, the respondent’s 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;
(iii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iv) 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.
Complainant states that Respondent has no rights or legitimate interests in the Domain Name because (i) Complainant has not authorized or licensed Respondent to use the WÜSTHOF mark, (ii) Respondent is not commonly known by the Domain Name, (iii) it is not affiliated with Complainant, and (iv) it is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead has used it to host pay-per-click links to competitors of Complainant and is now offering it for sale. These allegations are addressed as follows:
Complainant did not expressly address the Policy ¶ 4(c)(i) factor, concerning whether the Respondent is the owner or beneficiary of a trade or service mark that is identical to the Domain Name. It did, however, offer evidence of a Google search of the WÜSTHOF mark, the results of which referred only to Complainant (Complaint Annex 3). Further, Complainant has registered its mark internationally in accordance with the Madrid Protocol (WIPO printout submitted as Complaint Annex 2). In light of Complainant’s international registration, it is extremely unlikely that any governmental trademark agency would register a trademark identical to <wuesthof.us> or any other mark identical or similar to the Domain Name in the name of any person other than Complainant or one of its affiliates, or that Respondent could be the owner or beneficiary of a valid common law trade or service mark identical to the Domain Name. On this evidence, and in the absence of any evidence to the contrary, the Panel finds that Respondent is not the owner or beneficiary of a valid trade or service mark identical to the Domain Name.
Complainant states that Respondent is not affiliated with it and that it has not authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The WHOIS information furnished to the Forum by the registrar lists “Jean Brown” as the registrant of the Domain Name. This name bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(iii).
Complaint Annex 8 consists of screenshots of the two landing pages to which the Domain Name has pointed. The first displays a list of hyperlinks, including to “knife” and “kitchen,” targeting Complainant’s business, and also to “Wusthof knives.” This parking page does not bear any indication that it was initiated or operated by the registrar but instead appears to have been sponsored solely by Respondent. The second is a screenshot of the sedo.com website offering the Domain Name for the sale. Neither of these uses qualifies as a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iv). Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees), 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name), Blackstone TM L.L.C. v. Anonymize, Inc., FA 1952698 (Forum July 29, 2021) (where disputed domain resolved to a general for sale page, the Panel held that “[a]bsent any explanation by Respondent for its conduct, such conduct is not by itself a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).”).[i]
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the 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 domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration or use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent has used the confusingly similar Domain Name to attract, for commercial gain, Internet users to its pay-per-click web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, as described in Policy ¶ 4(b)(iv). Respondent here obtained commercial gain from the hyperlinks to generate pay-per-click revenues. Pay-per-click sites are common on the Internet. Under the most common forms of business arrangements relating to these sites, when a visitor to the site clicks on one of the links which appear there, the site sponsor receives compensation from the various web site owners who are forwarded from the site. In most cases, the site sponsor receives compensation based upon the number of hits the downstream web site owners get from being linked to Respondent’s web site. AllianceBernstein LP v. Texas International Property Associates, Case No. D2008-1230 (WIPO, 2008) (the domain name resolved to a search directory site with links to third-party vendors and the panel inferred that the respondent received click-through-fees when site visitors clicked on those links), Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain). Respondent’s use of the Domain Name is commercial also because the sponsors of the various web sites forwarded from Respondent’s web site benefit from the subsequent interest and purchases of those who visit the sites. UDRP panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO,2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Next, Respondent is offering to sell the Domain Name for prices which are far in excess of its documented out-of-pocket costs directly related to the Domain Name. When Complainant first contacted Respondent to attempt an amicable settlement Respondent replied with an offer to sell the Domain Name for €5,999. Later, Respondent posted a general offer on the sedo.com website for some €8,250. Its conduct thus fits within the circumstances described in Policy ¶ 4(b)(i).
Respondent’s registration of the Domain Name prevents Complainant from reflecting its mark in that name. Complainant’s principal web site is located at <wusthof.com> (Screenshot of Complainant’s website submitted as Complaint Annex 5) but the Domain Name could also be useful or valuable to Complainant for attracting Internet users to its site. Policy ¶ 4(b)(ii) contemplates that a respondent registered the domain name at issue in order to prevent the mark owner from reflecting its mark in a corresponding domain name. The evidence is not clear whether Respondent registered the Domain Name with that specific intent, but the fact that Respondent offers the Domain Name, which is so closely and specifically associated with Complainant, for sale strongly suggests that this may have been at least one of Respondent’s motives in registering the Domain Name. Respondent’s registration of this Domain Name would give it substantial leverage in any negotiations with Complainant for a transfer of the Domain Name. Further, Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). Respondent had to be aware of the effect of its actions. Its having registered the Domain Name, which incorporates Complainant’s mark verbatim, prevents Complainant from registering and using this name itself. Respondent clearly knew or should have known that its registration and continued use of the Domain Name would have this effect and that it was wrongful as against Complainant. This is manifest evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).
Next, Respondent registered and is using the Domain Name, which incorporates and is confusingly similar to the WÜSTHOF mark, but Respondent has no legitimate connection with that mark or its owner, the Complainant. Given the nonexclusive nature of Policy ¶ 4(b), the registration and use of a domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of opportunistic bad faith. JUUL Labs, Inc. v. Nics Telekomunikasyon A.S., FA2003001890140 (Forum April 24, 2020) (“[W]here a disputed domain name is so obviously connected with such a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith”); Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221 (finding that respondent’s domain names to be “so obviously connected” to the complainant that “use or registration by anyone other than complainants suggests ‘opportunistic bad faith’”), Google LLC v. Noboru Maruyama / Personal, FA 2001001879162 (Forum March 3, 2020) (“the registration and use of domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith.”).
Further, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name. According to the undisputed allegations in the Complaint, Complainant has been using its mark since 1814. It was registered with the German Registry of Commerce in 1884 (Handelsregister printout submitted as Complaint Annex 4), and is generally known throughout Europe and the United States as the mark associated with Complainant’s cutlery products. Respondent was sufficiently aware of Complainant’s business to direct the links on its website to businesses operating in Complainant’s industry, and even included a link to “Wusthof Knives.” Based upon this evidence, it is clear that Respondent had actual knowledge of Complainant and its rights in the WÜSTHOF mark when it registered the Domain Name. Given the nonexclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Finally, Respondent listed “Jean Brown” at an address in Tempe, Arizona as the registrant of the Domain Name, but it also listed its email address as darkbluebruce@gmail.com. This email address has been demonstrably linked to one “Zhao Ke” in other domain dispute decisions, and this Zhao Ke has also been found in those decisions to have a history of cybersquatting (Decision of Indian Dispute Resolution Proceedings Case No 1408, and Decision of The Belgian Centre for Arbitration and Mediation Case No. 44421 submitted as Complaint Annexes 9 and 10 respectively). Based upon this evidence it is likely that Zhao Ke is the person who registered the Domain Name in this case and that he provided false registration information to the registrar when he did so. This is further evidence of bad faith registration of the Domain Name. CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”). References in this Decision to “Respondent” are to the person who actually registered the Domain Name and not to Jean Brown.
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wuesthof.us> Domain Name be TRANSFERRED TO COMPLAINANT.
Charles A. Kuechenmeister, Panelist
August 29, 2023
[i] The cases cited in this section were decided under the Uniform Dispute Resolution Policy (UDRP), which does not include usTLD Policy ¶ 4(c)(i). The usTLD Policy ¶¶ 4(c)(ii), (iii) and (iv) are identical to UDRP Policy ¶¶ 4(c)(i)(ii) and (iii).
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