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Dr. Grandel GmbH v. Drg Randel Inc [2005] GENDND 1580 (30 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dr. Grandel GmbH v. Drg Randel Inc

Case No. D2005-0829

1. The Parties

The Complainant is Dr. Grandel GmbH, Augsburg, Germany, represented by Ullrich & Naumann, Germany.

The Respondent is Drg Randel Inc, London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <drgrandel-online.com> is registered with Active ISP ASA.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2005. On August 3, 2005, the Center transmitted by email to Active ISP ASA a request for registrar verification in connection with the domain name at issue. On August 11, 2005, Active ISP ASA transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 1, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2005.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on September 16, 2005. 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 Complainant in this proceeding, Dr. Grandel GmbH, is a limited company with its principal place of business in Augsburg, Germany.

The Complainant has registered the trademark DR. GRANDEL, as follows:

- International trademark DR. GRANDEL with registration No. 686 536.

- International trademark DR. GRANDEL with registration No. 575 818.

- Community trademark DR. GRANDEL with registration No. 118 877.

- United States trademark DR. GRANDEL with registration No. 2,033,517.

- German trademark DR. GRANDEL with registration No. 395 13 358.

- Chinese trademark DR. GRANDEL with registration No. 912 640.

- Chinese trademark DR. GRANDEL with registration No. 916 474.

- Australian trademark DR. GRANDEL with registration No. A560 772.

- Australian trademark DR. GRANDEL with registration No. A560 771.

In addition to the trademarks above, the Complainant is the legal owner of three registered trademarks containing the phrase DR. GRANDEL:

- German trademark DR. GRANDEL HYDRO with registration No. 397 48 824.

- German trademark DR. GRANDEL TIME-LESS with registration No. 300 08 680.

- German trademark DR. GRANDEL TOPCARE with registration No. 2 047 908.

The Complainant has provided copies of the relevant trademark certificates.

The Respondent registered the domain name <drgrandel-online.com> on April 29, 2004. The Complainant has provided copies of the relevant Whois search results, which have been confirmed by the concerned Registrar.

5. Parties’ Contentions

A. The Complainant

The Complainant is the proprietor of the company name DR. GRANDEL which has been used since December 27, 1989. The Complainant is active worldwide and has subsidiary companies in over 40 countries. The Complainant is well-known in the cosmetic sector.

The Complainant contends that the Respondent has no rights in the trademark or service mark DR. GRANDEL.

The Complainant argues that the distinctive part of the disputed domain name <drgrandel-online.com> is “drgrandel” which is visually identical to the trademark DR. GRANDEL in which the Complainant has rights. The Complainant is of the opinion that the Respondent’s usage of the Complainant’s trademark as a domain name with the addition of “-online” creates confusion for the public.

On the website connected with the disputed domain name, the Respondent offers products which look identical to those of the Complainant. The Complainant emphasizes that the products offered on the Respondent’s website are identical to the goods for which the Complainant’s trademarks are registered.

In addition to this, the Respondent has copied various material such as text, pictures and Flash movies from the Complainant’s website “www.grandel.com” and posted this material on the website connected with the disputed domain name. Thus, the content of the Respondent’s website resembles the Complainant’s own website in such a way that the impression is created that the Respondent’s website derives from the Complainant.

It is the opinion of the Complainant that the Respondent deliberately confuses the consumer about the origin of the products and the identity of the owner of the website.

The Complainant also contends that the disputed domain name is used in bad faith in order to intentionally attempt to attract for commercial gain, Internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location.

The Complainant contacted the Respondent via e-mail and registered mail and informed him that it has infringed not only the trademarks of the Complainant but also the copyrights of the content of the Complainant’s website. The Respondent did not answer.

B. The Respondent

The Respondent did not reply to the Complainant’s contentions. In accordance with paragraph 5(e) of the Rules, this dispute shall be decided on the basis of the Complaint.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted copies of the relevant registration certificates, the owner of several national and international DR. GRANDEL trademarks. The disputed domain name incorporates the Complainant’s trademark in its entirety with the exception of the punctuation mark “.” between the words “DR” and “GRANDEL”. This punctuation mark, however, is a special character that cannot be used in a normal second-level domain name. Punctuation is normally used for separating the second-level domain from a top-level domain or a third-level domain (sub domain).

The disputed domain name also contains the suffix “-online”. Such a generic word has a limited ability to distinguish the domain name from the trademark and has little, if any, legal significance. See, for example, Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, regarding the domain name <nokiagirls.com>, in which the addition of the noun “girls” was not sufficient to distinguish the domain name from the trademark NOKIA.

Having the above in mind, it is the opinion of the Panel that the domain name <drgrandel-online.com> is confusingly similar to the Complainant’s trademark DR. GRANDEL.

B. Rights or Legitimate Interests

It has been alleged by the Complainant that the Respondent has no rights or legitimate interests in respect of the domain name <drgrandel-online.com> and that the Respondent has no rights in the trademark or service mark DR. GRANDEL.

Furthermore, the Complainant maintains that the Respondent has not made any legitimate non-commercial or fair use of the disputed domain name. The evidence submitted by the Complainant shows that the use of the disputed domain name is commercial. In addition to this, the submitted evidence indicates that the Respondent copied material from the Complainant’s website and posted it on the website connected to the disputed domain name. Such use of the domain name suggests that the disputed domain name is used to misleadingly divert consumers with intent for commercial gain.

It could be argued that the Respondent is commonly known as Drg Randel Inc. However, considering the bad faith use of the disputed domain name explained under section 6C below, and previous UDRP panel decisions, the Panel finds, on the balance of probabilities, that it is likely that the Respondent may have provided a false identity to the Registrar when registering the disputed domain name. See Dr. Grandel GmbH v. David Robert Gekko Randel, WIPO Case No. D2005-0215, regarding the domain name <drgrandel.com>. Having this in mind, it should be noted that the Whois database states that the Respondent is located in London, Italy, which obviously is not correct.

Considering the submitted evidence in the case, it is the opinion of the Panel that the Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

There is no evidence in the case to refute the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under Paragraph 4(b) of the Policy, evidence of bad faith registration and use includes:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

The Complainant contends that its trademark DR. GRANDEL is well-known in the cosmetic sector. It has been demonstrated that the Complainant is the owner of numerous national and international registrations of the trademark DR. GRANDEL predating the registration of the disputed domain name.

Furthermore, the evidence presented by the Complainant demonstrates that the Respondent’s website connected with the disputed domain name

<drgrandel-online.com> contains various material and content originating from the Complainant’s website “www.grandel.com”.

Such circumstances suggest not only that the Respondent was aware of the Complainant’s rights in the trademark DR. GRANDEL when registering the disputed domain name but also that the disputed domain name has been used to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the trademark DR. GRANDEL as to the source, sponsorship, affiliation or endorsement of the website. Again, there is no evidence in the case file to refute the Complainant’s submissions.

Having all of the above in mind, the Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the domain name <drgrandel-online.com> has been registered and used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <drgrandel-online.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist

Dated: September 30, 2005