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Dr. Grandel GmbH v. West End Internet Services [2005] GENDND 1600 (27 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dr. Grandel GmbH v. West End Internet Services

Case No. D2005-0853

1. The Parties

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

The Respondent is West End Internet Services, Queensland, Australia.

2. The Domain Names and Registrar

The disputed domain names <dr-grandel.com> and <drgrandle.com> are registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2005. On August 9, 2005, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue. On August 9, 2005, Wild West Domains, Inc. 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. In response to a notification on August 15, 2005, by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 17, 2005. The Center verified that the Complaint, together with the amendment to 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 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2005.

The Center appointed Ian Blackshaw as the sole panelist in this matter on September 21, 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 is active worldwide in the industrial and consumer chemicals industry, including body and beauty care and other cosmetics products, and has subsidiary companies and agencies in more than 40 countries.

The Complainant is proprietor of the company name “DR. GRANDEL”, under which it has carried on business for over 100 years, and such business name has been registered in the local Company Registry since December 27, 1989. A copy of the corresponding entry has been produced to the Panel.

The Complainant is also proprietor of various trademark rights around the world, including the following (listed in chronological order):

- Australian trademark A560 772, word mark “DR. GRANDEL”, registered with the priority of August 1, 1991, for goods in class 5, namely:

“Pharmaceutical substances and preparations; dietetic substances, including food and beverages; and all other goods as are included in this class”.

- Australian trademark A560 771, word mark “DR. GRANDEL”, registered with the priority of August 1, 1991, for goods of class 3, namely:

“Agents for body care and beauty care, essential oils, soaps; and all other goods as are included in this class”.

- German Trademark 2 047 908, word mark “DR. GRANDEL TOPCARE”, registered with the priority of June 6, 1994, for goods of classes 3, namely for:

“Mittel zur Körper- und Schönheitspflege, Parfümerien, äatherische Öle, Seifen, Zahnputzmittel. “

- German Trademark 395 13 358, word mark “DR. GRANDEL”, registered with the priority of March 28, 1995, for goods of classes 1, 3 and 5, namely for:

“Chemische Erzeugnisse für gewerbliche Zwecke, insbesondere Grund-, Roh-, Hilfs- und Wirkstoffe auf der Basis von Naturstoff-Konzentraten bzw. Naturstoff-Hochkonzentraten zur Herstellung von medizinischen und kosmetischen Präparaten; Mittel zur Körper- und Schönheitspflege, Parfümerien, ätherische Öle, Seifen, Zahnputzmittel; Arzneimittel, pharmazeutische Erzeugnisse sowie Präparate für die Gesundheitspflege, sämtliche voranstehenden Waren unter Ausschluss rezeptpflichtiger Präparate sowie unter Ausschluss von Corticosteroid-Präparaten sowie unter Ausschluss von Präparaten auf dem Anwendungsgebiet von Corticosteroids-, Glucocorticoid- und Mineralcorticoid-Präparaten; diätetische Lebensmittel für medizinische Zwecke, Nahrungsergänzungsmittel für medizinische Zwecke, Pflaster und Verbandmaterial“.

- Community trademark 118 877, word mark “DR. GRANDEL”, registered with priority of April 1, 1996, for goods of classes 1, 3 and 5, namely:

“Chemicals used in industry, in particular base materials, raw materials, auxiliary materials and active substances based on natural substance concentrates and highly concentrated natural substances for the manufacture of medical and cosmetic preparations; articles for body and beauty-care, perfumery, essential oils, soaps, dentifrices; medicines, pharmaceutical and sanitary preparations, all the aforesaid goods with the exception of prescription preparations and with the exception of corticosteroid preparations and with the exception of preparations in the field of corticosteroid, glucocorticoid and mineral corticoid preparations; dietetic foodstuffs adapted for medical use, food supplements for medical use, plasters and materials for dressings”.

- Chinese trademark 912 640, word mark “DR. GRANDEL”, registered with the priority of December 14, 1996, for:

“Pharmaceutical preparations and substances, dietetic food”.

- Chinese trademark 916 474, word mark “DR. GRANDEL”, registered with priority of December 21, 1996, for:

“Non-medicated toilet preparations, cosmetics, essential oils, soaps, dentifrices, preparations and substances for care of skin, hair and nail”.

- United States Trademark 2,033,517, word mark “DR. GRANDEL”, registered January 28, 1997 for goods of international class 3, namely for:

“Cosmetics, namely non-medicated skin creams for various skin types in class 3”.

- German Trademark 397 48 824, word mark “DR. GRANDEL Hydro Lipid”, registered with the priority of October 14, 1997, for the following goods:

“Mittel zur Körper- und Schönheitspflege, Parfümerien, ätherische Öle, Seifen, Zahnputzmittel; Arzneimittel; pharmazeutische Erzeugnisse sowie Präparate für die Gesundheitspflege, diätetische Lebensmittel für medizinische Zwecke, Nahrungse rgänzungsmittel für medizinische Zwecke; Pflaster und Verbandmaterial”.

- International trademark 686 536, word mark “DR. GRANDEL”, registered with the priority of December 12, 1997 in China, Croatia, Hungary, Poland, Slovenia, Switzerland, Norway and France for goods of classes 1, 3 and 5, namely:

“Produits chimiques pour l’industrie, notamment corps simples, matières premières, matières auxiliaires, éléments traitants à la base des éléments naturels concentrés pour la fabrication des produits médicaux et cosmétiques; cosmétiques, produits de parfumerie, hiles essentielles, savons, dentifrices; médicaments, produits pharmaceutiques et hygiénique à l’exception de produits avec Corticosteroid, alimentaires diététiques à usage médical, suppléments alimentaires diététiques à usage médical, emplâtres et articles pour pansements”.

- German Trademark 300 08 680, word mark “DR. GRANDEL TIMELESS”, registered with the priority of February 8, 2000, for goods of classes 3 and 5, namely:

“Mittel zur Körper- und Schönheitspflege, Parfümerien, ätherische Öle, Seifen, Zahnputzmittel; Arzneimittel, pharmazeutische Erzeugnisse sowie Präparate für die Gesundheitspflege, diätetische Lebensmittel für medizinische zwecke, Nahrungsergänzungsmittel für medizinische Zwecke, Pflaster und Verbandmaterial”.

- International Registration R 575 818, word mark “DR. GRANDEL”, registered with the priority of August 3, 2001 for goods of classes 3 and 5, namely:

“Cosmétiques, huiles essentielles, savons; substances diététiques à usage medical”,

in the following countries: China, Croatia, Spain, Russian Federation, Hungary, Liechtenstein, Czech Republic, Slovakia, Slovenia, Switzerland, Yugoslavia.

All the above-mentioned trademarks are used by the Complainant in connection with a wide range of products and also in relation to websites accessible at “www.grandel.com” and “www.grandel.de” which the Complainant operates for the promotion and sale of its products. The Panel has been provided with copies of the corresponding registration certificates of these trademarks, all of which are in full force and effect.

The Respondent operates a website accessible at “www.dr-grandel” offering for sale a range of cosmetic products of the Complainant under its brand name “Dr.Grandel”. A copy of a printout of the ‘homepage’ of this site has been provided to the Panel. This website is available in English, German, Spanish and Italian. The Respondent also operates a website accessible at “www.drgrandle.com”, offering various online games, with Dr. Grandel Cosmetic Products offered as prizes. A copy of a printout of the ‘homepage’ of this site has been provided to the Panel.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

1. The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The only distinctive part of the domain name <dr-grandel.com>, namely the name “drgrandel”, is spoken as “Doctor Grandel” and is, therefore, pronounced identically to the above-mentioned “DR. GRANDEL” trademarks. The only distinctive part of the domain name “dr-grandel”, namely “drgrandel”, is visually identical to the above mentioned “DR. GRANDEL”trademarks and highly similar to the above-mentioned trademark containing the name “DR. GRANDEL” as their dominant first part.

The only distinctive part of the domain name <drgrandle.com>, namely the name “drgrandle”, is spoken as “Doctor Grandl” and is, therefore, pronounced identically to the above-mentioned “DR. GRANDEL” trademarks. The only distinctive part of the domain name “drgrandle” is nearly identical visually to the above-mentioned “DR. GRANDEL” trademarks and highly similar to the above-mentioned trademark containing the name “DR. GRANDEL” as their dominant first part.

Confusion for the public between the legitimate rights of the Complainant, namely its trademark rights and its rights in the business name, cannot be avoided. To create such confusion in order to participate in the Complainant’s good name is the Respondent’s only intention.

Furthermore, it must be pointed out that all products being presented under the domain name <dr-grandel.com> are identical to the products protected by the above-mentioned trademarks.

Under the domain name <drgrandle.com>, the Respondent offers various online-games in respect of which Dr. Grandel Cosmetic Products can be won online. At the ticker at the bottom of the ‘home page’, the following text appears: “WIN DR. GRANDEL KOSEMTIC PRODUCTS ONLINE! See e-mail”.

2. The Respondent has no rights or legitimate interests in respect of the domain names

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Respondent has not acquired a trademark or service mark right concerning “DR GRANDEL”. The domain name <dr-grandel.com> is used by the Respondent to offer products looking identically like those of the Complainant. The whole Internet presentation of the domain name <dr-grandel.com> is made to appear as if it derives from the Complainant. In that respect, it must further be stressed that all pictures showing products of the Complainant, as well as the product explanations beside or underneath the pictures, are identically taken from the Complainant’s internet site “www.grandel.com”. Even the “intro” – a small flash film being shown before the site opens up – is identical and taken from the Complainant’s own internet site.

Concerning the domain name <drgrandle.com>, the Respondent offers online-games and promises “Dr. Grandel Kosmetic Products” as prizes. The Respondent, therefore, uses the good name and the reputation of the Complainant for its own benefit, without having any right in the Complainant’s rights concerning the name DR. GRANDEL.

3. The domain name was registered and is being used in bad faith

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Complainant and its name “DR. GRANDEL” are well-known in the cosmetic sector. The success of the Complainant is based on the philosophy that the Complainant ensures that all its products and services are of premium quality. The desire of the Complainant always is to meet its customers’ needs. To ensure that quality control, the Complainant is interested in storing its products in the right way at the right temperature and for the right time; not to sell old products but to ensure the excellence of the quality for which it is known. This is one of the reasons why the Complainant’s products are not and shall not be sold in Internet shops. The products are sold directly to the final consumer.

By using the domain name being only built of the Complainant’s company name, identically taking over the Complainant’s photographs and product descriptions, the Respondent is deliberately confusing the consumer about the origin of the products and the identity of the owner of the ‘homepage’. To create this impression is the only intention of the Respondent by using the domain name <dr-grandel.com>. The Complainant has no influence on what products are sold under its name as well as on the quality of the products being sold under its name and its product names by the Respondent via the Internet under the domain name <dr-grandel.com>.

By using a typical “mistype” Domain Name, namely “drgrandle”, offering Dr. Grandel Kosmetic products as prizes for online games, the Respondent intentionally misleads Internet users, who search for the products of the Complainant on the Internet, namely for Dr. Grandel products. To create the impression of an identity between the Respondent and the Complainant or an affiliation between them is the only intention of the Respondent by using the domain name <drgrandle.com>. The Complainant has no influence on what products can be won under its name, or on the quality of the products being offered under its name and its product names by the Respondent via the Internet under the domain name <drgrandle.com>.

The Respondent was contacted in advance of the present proceedings and was advised that it infringes the trademarks of the Complainant, as well as its copyrights concerning the content of the Complainant’s Internet presentation, which was taken over by the Respondent identically. Concerning the domain name <drgrandle.com>, the Respondent was advised that it misuses the good reputation of the Complainant and its products. The Respondent was contacted via e-mail and registered mail, but did not respond.

By using the domain names in dispute the Respondent intentionally attempts to attract for commercial gain, internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s company name as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or location of a product or service on the Respondent’s websites or location. The Respondent uses the domain names to promote goods being identical to the goods in respect of which the Complainant’s trademark rights are registered. Moreover, the Respondent promotes goods with trademark names – besides “DR. GRANDEL” – all of which are registered in favor of the Complainant. For example:

- TIMELESS: Complainant’s German trademark 301 44 060
- PHYTO CARE: Complainant’s German trademark 395 40 937
- PHYTO BODY: Complainant’s German trademark 395 47 465
- VITA BODY: Complainant’s German trademark 300 78 884

Copies of the registration certificates of the above-mentioned trademarks have been provided to the Panel.

Due to the identity and similarity of the domain names to the company name and trademark rights of the Complainant, any consumer trying to reach the Complainant’s offer on the Internet is obviously misled to the domain names of the Respondent. Nowadays, it is obvious that more and more Internet users do not use search engines, but, as a first try, type in a domain name with the company name of the company they are looking for. Thus, Internet users are led nearly automatically to the Respondent’s domain name <dr-grandel.com> or – by mistyping the Complainant’s name – to the Respondent’s domain name <drgrandle.com> and the offers there.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any other part in these proceedings.

6. Discussion and Findings

To qualify for cancellation or transfer of the domain names, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

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

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

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a response, the panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc., v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is established case law that where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The domain names at issue essentially incorporate the trademark DR. GRANDEL, which is owned and has been commercially used and promoted by the Complainant in and for the purposes of its business and the sale of its products as a registered trademark for many years and also as a business name for more than 100 years in more than forty countries around the world.

The Panel considers that the omission by the Respondent of the period (.) after the word “dr” and the addition of the ‘dash’ (-) and the misspelling of the name ‘grandle’ are immaterial and irrelevant for these purposes, adding no distinctiveness whatsoever. (See Dr. Grandel GmbH v. David Robert Gekko Randel, WIPO Case No. D2005-0215 on a similar point and finding concerning the domain name <drgrandel.com>). But, on the contrary, only adds confusion to Internet users and consumers wishing to access information concerning and also to buy the Complainant’s products, which, in the absence of any explanations by the Respondent, of which none have been forthcoming, the Panel concludes must be taken as being deliberate.

In view of this, the Panel finds that the domain names registered by the Respondent are identical or confusingly similar to the trademark DR. GRANDEL, in which the Complainant has clearly demonstrated to the satisfaction of the Panel that it has well- established and commercially valuable rights.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the domain names (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the respondent of the dispute, there is any evidence of 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;

- Whether 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;

- Whether the respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the domain names at issue.

Likewise no evidence has been adduced that the Respondent has commonly been known by the domain names; nor is making a legitimate non-commercial or fair use of the domain names; nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s trademark DR. GRANDEL as part of the domain names at issue.

Furthermore, the adoption by the Respondent of domain names identical to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website (see further on this point below) and the consequential tarnishing of the Complainant’s trademark. In other words, the Respondent is trading for commercial gain on the good name and reputation of the Complainant’s business and trademark and unfairly attracting to its own business and activities the substantial goodwill that the Complainant has established in its mark, evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Therefore, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the domain names at issue.

C. Registered and Used in Bad Faith

The bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on its website or location.”

Based on the case file, the Panel agrees with the Complainant’s contention that the Respondent by registering the domain names at issue is trading on the Complainant’s valuable goodwill established in its trademark DR. GRANDEL over many years.

Again, by registering and using the domain names at issue incorporating the Complainant’s trademark, DR. GRANDEL, and also by promoting other goods marketed by the Complainant under trademarks other than the trademark DR. GRANDEL, of which examples have been provided to the Panel, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected, sponsored or affiliated with the Complainant and its business, or the Respondent’s activities are approved or endorsed by the Complainant, none of which, in fact, is the case.

The Respondent appears to be trading on the Complainant’s goodwill and reputation, which the Complainant has built up over many years. This, without any explanations by the Respondent to the contrary, of which none have been forthcoming, constitutes bad faith. See the case of eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633, where it was stated that:

“The Domain Name consists of the EBAY trademark plus the addition of the country name Korea. Because the Domain Name incorporates the identical EBAY trademark, a consumer or user of the Internet viewing a website located at the “www.ebaykorea.com” domain address would be likely to assume that the website or operator is somehow sponsored by or affiliated with eBay, when it is not.”

Furthermore, the design and content of the Respondent’s websites mentioned above, especially in the website “www.dr-grandel.com” with the title “DR. GRANDEL Professional and Retail 2005”, the ‘flash’ intro-film (described above) and the ‘tag’ lines “DR. GRANDEL KOSMETIC PRODUCTS…..ONLY AVAILABLE FROM THIS WEBSITE…” and “…the internets [sic] premier source for Dr.Grandel Kosmetic products”, replicate the Complainant’s websites (mentioned above) in material respects. And thus constitute a usurpation of the Complainant’s valuable intellectual property and other rights in its name, business and products; such websites being calculated to mislead Internet users and consumers into thinking that the Respondent has some legal relationship with the Complainant and its business or that the Complainant has approved the use of the domain names at issue, neither of which, in fact, is the case. This, in the view of the Panel, is further cogent evidence of bad faith on the part of the Respondent.

Finally, the failure by the Respondent to respond to the Complainant’s prior e-mail and registered mail complaints about the Respondent’s unauthorized use of the Complainant’s trademark rights and copyright in the domain names at issue (referred to above), coupled with the failure of the Respondent to file any answer to the Complainant’s Complaint or otherwise participate in the present proceedings, in the view of the Panel, is additional indicative evidence of bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the domain names at issue 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 names <dr-grandel.com> and <drgrandle.com> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist

Dated: September 27, 2005