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Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo [2005] GENDND 40 (24 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo

Case No. D2004-0990

1. The Parties

The Complainants are Sigikid H. Scharrer & Koch GmbH & Co. KG, Mistelbach, Germany (“Complainant 1”), MyBear Marketing- und Vertriebs GmbH, Mistelbach, Germany (“Complainant  2”), and Mr. Thomas Dufner, Bayreuth, Germany (“Complainant 3”, together the “Complainants”). Complainants are represented by Dr. Stefan M. Zech of Meissner, Bolte & Partner GbR, Nürnberg, Germany.

The Respondent is Bestinfo, Richardson Texas, United States of America.

2. The Domain Name and Registrar

The dispute concerns the domain name <sigikid.com> (the “Domain Name”).

The Domain Name is registered with R&K Global Business Services, Inc. d/b/a 000Domains.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2004, by e-mail and on December 1, 2004 in hardcopy. On November 25, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 26, 2004, the Registrar transmitted by email to the Center its verification response (i) negating receipt of a copy of the Complaint, (ii) confirming that the Domain Name is registered with the Registrar, (iii) confirming that the Respondent is the current registrant of the Domain Name, (iv) providing details of the administrative, technical and billing contacts for said registration, (v) confirming that the Uniform Domain Name Dispute Resolution Policy (“Policy”) applies to the Domain Name, (vi) confirming that the Domain Name will remain locked during the pending administrative proceeding, (vii) indicating that the language of the registration agreements is English, (viii) indicating that the Respondent has submitted in its registration agreements to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the Domain Name.

The Center verified that the Complaint satisfied the formal requirements of 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 on December 3, 2004, and the proceedings commenced on the same day. The Respondent was required to submit a response on or before December 23, 2004, pursuant to Paragraph 5(a) of the Rules.

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2004.

The Center appointed Michael A.R. Bernasconi as the Sole Panelist in this matter on January 4, 2005.

On January 5, 2005, after having received a Statement of Acceptance and Declaration of Impartiality and Independence from Michael A.R. Bernasconi in accordance with Paragraph 7 of the Rules, the Center notified the representative of the Complainants and the Respondent by email that Michael A.R. Bernasconi has been appointed as Administrative Panel (Sole Panelist) and that the decision is anticipated by January 19, 2005.

4. Factual Background

Complainant 1 and 2 are closely affiliated companies domiciled in Germany. Whereas Complainant 1 is one of the largest and a well known manufacturer of toys in Germany with worldwide reputation in particular with regard to plush animals and is also a manufacturer of clothing for children, Complainant 2 manages “sigikid” trademarks and takes care of the marketing and distribution of the goods which Complainant 1 develops and produces. Complainant 3 is an attorney who holds “sigikid” trademarks on a fiduciary basis.

The Complainants have provided evidence of some 35 trademark registrations consisting of or incorporating among others the name “sigikid” in many countries, including the United States of America, Germany and most European countries as well as Japan. In addition, Complainant 1 uses “sigikid” as a short form for its firm on the market. Finally, Complainant 1 is running a portal in the Internet under the domain name <sigikid.de>, which serves as its official homepage offering information on Complainant 1, its products, authorized distributors and related information.

The Respondent registered the domain name <sigikid.com> on April 14, 2003. Under the Domain Name at issue, Respondent provides links to all kinds of service providers, from producers and retailers of children’s toys and clothing to Internet auction portals and sellers of life insurances.

On April 6, 2004, Complainants 1 and 2 wrote to Respondent to demand the transfer of the Domain Name to Complainant 2. No evidence for receipt of the correspondence by Respondent has been offered and it appears that the letter remained unanswered.

5. Parties’ Contentions

A. Complainants

The Complainants contend that the disputed Domain Name is identical with their trademarks “SIGIKID” and with the short form of Complainant 1’s company name which is known in a multitude of countries as a first-rate producer of toys and children’s clothing. Furthermore, Complainants argue that Respondent has no rights or legitimate interest in respect of the Domain name because Respondent is neither known by the Domain Name nor does Respondent own any “sigikid” trademarks. According to Complainants, Respondent rather misuses the domain and thus Complainant’s name and trademarks to generate hits on its website. As a final point, Complainants contend that Respondent has registered and is using the Domain Name in bad faith since it attempts to attract for commercial gain Internet users to the Respondent’s website or other online locations by creating a likelihood of confusion with the Complainants’ trademarks, in particular as Respondent’s website contains links and information to plush animals, toys and children’s clothing, which are the goods for which Complainants 1 and 2 are famous for. Complainants assume that Respondent registered the Domain Name with the intention of selling it to the Complainants at a later stage.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. Accordingly, and based on Paragraph 14(b) of the Rules, the Panel shall draw such inferences from this default of Respondent as it considers appropriate.

6. Discussion and Findings

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

A. 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

B. the Respondent has no rights or legitimate interests in respect of the domain name; and

C. the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is undisputed that Complainants together own the “SIGIKID” trademarks.

The Domain Name at issue consists of Complainants’ trademarks “SIGIKID”, to which only the suffix “.com” is added. The suffix “.com” is a generic top level domain name, which of course is without legal significance to render a domain dame dissimilar or to prevent customer confusion. The distinctive element of the Domain Name is obviously the term “sigikid”, while the suffix “.com” is of descriptive nature only.

In these circumstances, Internet users finding <sigikid.com> are likely to be misled into thinking that the Complainants are the registrants or are otherwise associated with the disputed Domain Name, or are at least confused.

In the view of the Panel, the disputed Domain Name is essentially identical with and therefore confusingly similar to the trademark “SIGIKID”. The Complainants have therefore succeeded in proving that a risk of confusion is very likely. The first criterion, as per Paragraph 4(a) of the Policy, is established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy defines the circumstances which, if proved, establish a registrant’s rights or legitimate interests to a disputed domain name.

There is no evidence that the Respondent is commonly known by the disputed Domain Name or has been authorized by the Complainants to use the “SIGIKID” name and trademarks.

It remains undisputed that the Respondent does not use and has not made preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods and services. An informal check of the website under the Disputed Domain Name on January 6, 2004, showed that no goods and services are offered. Instead, the various categories of items that are pretended to be offered on the homepage of Respondent solely divert the Internet traffic to numerous other websites around the globe. These linked websites, however, are to a large extent unrelated to the categories of goods which are purportedly offered on Respondent’s website. Some of the links provided on the Respondent’s homepage are links to retailers of all kinds of other goods and services and there are also sponsored links to websites with pornographic content, such as “www.venusfantasyshop.com” or “www.brownpaper.co.uk”.

In these circumstances, the panel is of the view that the sole diversion of Internet traffic by Respondent to other, unrelated websites, does not represent a use of the Domain Name in connection with a bona fide offering of goods and services. Rather, the conduct of Respondent serves the purpose of generating revenues, e.g. from advertised pay-per-click products. Further, it misleads Internet users by diverting traffic intended for the Complainants to websites, which are in no way connected with the word “sigikid”, and it creates the impression of association with the Complainants’ group.

The Panel in the circumstances fails to find any evidence that would support a finding of a legitimate interest by Respondent. Thus, the second requirement, as per Paragraph 4(a) of the Policy, is established.

C. Registered and used in Bad Faith

The trademark “SIGIKID” is quite well known in the field of children’s toys and children’s clothing in Europe and to some extent also overseas. Therefore, the Respondent is most likely to have known of Complainants, their products and their trademarks prior to registering the disputed Domain Name. This finding of the Panel is also evidenced by the fact that Respondent’s homepage contains links and information to plush animals, toys and children’s clothing, which are the goods Complainants’ group is famous for.

It is furthermore very likely that Respondent (a U.S. body corporate) has been aware of Complainants’ position on the European markets, as many of the links contained on Respondent’s homepage direct its visitors to service providers or retailers in Europe, such as, e.g. “www.heine.ch”, “www.ricardo.ch”, or “www.xmas-shop.uk.co”.

As a further argument, it cannot be disputed that Respondent has previously been involved in other disputes under the Policy, including Rusconi Editore SPA v. Bestinfo, WIPO Case No. D2001-0656; Nike, Inc. v. Bestinfo, WIPO Case No. D2002-0543; Gamer.tv Limited v. Bestinfo, WIPO Case No. D2004-0320, Pacific Cycle, LLC v. Bestinfo a/k/a David Web, NAF Case No. FA0403000247972, where Respondent has always been the defendant party. Even though the Panel is not prejudiced by these cases (some of which were decided in favor of Respondent), it is an indication that Respondent is no stranger when it comes to domain name disputes. And since the disputed Domain Name is so obviously connected with the name and the trademark of the Complainants’ group, its very use by Respondent with no connection to the Complainants suggests opportunistic bad faith in the least, i.e. the Panel finds that the above reasons constitute sufficient evidence that the Respondent registered and uses the Domain Name in bad faith.

The fact that Respondent (who has previously, in other proceedings, filed replies) has not filed a reply to the Complaint nor filed any evidence that could justify its conduct, reinforces the conclusion that Respondent has chosen Complainants’ name and trademark “SIGIKID” in bad faith, possibly with the intention of selling the Domain Name to Complainants at a later stage. Thus, the third requirement of Paragraph 4(a) of the Policy is satisfied.

7. Decision

Therefore, as directed by Paragraphs 14(a) and (b) and 15(a) of the Rules, the Panel finds:

(1) that the Domain Name is identical to the Complainants’ trademark;

(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(3) that the Domain Name has been registered and is being used in bad faith by the Respondent.

For all 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 <sigikid.com> shall be transferred to the Complainant 1.

Michael A.R. Bernasconi
Sole Panelist

Dated: January 24, 2005