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Dr. Grandel GmbH v. David Robert Gekko Randel [2005] GENDND 768 (23 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dr. Grandel GmbH v. David Robert Gekko Randel

Case No. D2005-0215

1. The Parties

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

The Respondent is David Robert Gekko Randel, Miami, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <drgrandel.com> is registered with Blueberry Hill Communications, Inc. dba 4domains.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2005. On February 28, 2005, the Center transmitted by email to Blueberry Hill Communications, Inc. dba 4domains.com a request for registrar verification in connection with the domain name at issue. On February 28, 2005, Blueberry Hill Communications, Inc. dba 4domains.com 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 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 March 9, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2005.

Paragraph 2(a) of the Rules provides that it is the provider’s responsibility to employ reasonably available means to achieve actual notice to the Respondent. The Panel accepts that, in the light of the information available to it, the Center has fulfilled the obligation to employ the reasonable means to achieve actual notice to the Respondent by making all the communications to it by email and post courrier.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on May 9, 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’s name is Dr. Grandel GmbH and it has been known by this name in the field of manufacturing and selling of brand name natural health and beauty products, since 1989.

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

- International trademark no. 686 536 registered in China, Croatia, Hungary, Poland, Slovenia, Switzerland, Norway and France for goods of classes 1, 3 and 5;

- Chinese trademark no. 912 640 for “pharmaceutical preparations and substances, dietetic food”;

- Chinese trademark no. 316 474 for “non-medicated toilet preparations … and substances for care of skin, hair and nail”;

- Community trademark no. 118 877, for goods in classes 1,3 and 5;

- Australian trademark no. A560 772, for goods in class 5;

- Australian trademark no. A560 771, for goods in class 3;

- International registration no. R 575 818, registered in China, Croatia, Spain, Russian Federation, Hungary, Liechtenstein, Czech Republic, Slovakia, Slovenia, Switzerland and Yugoslavia, for goods in classes 3 and 5;

- United States Trademark no. 2,033,517 for goods in class 3;

- German trademark no. 39 513 358, for goods in classes 1, 3 and 5.

The Complainant has registered also in Germany the trademarks: DR. GRANDEL Hydro Lipid, no. 397 48 824; DR. GRANDEL TIME-LESS, no. 300 08 680; and DR.GRANDEL TOPCARE, no. 2 047 908.

The Complainant also has an Internet presence, through the websites accessed by the domain names <grandel.com> and <grandel.de>, and uses these websites to advertise and provide information regarding its products.

The Respondent registered the disputed domain name <drgrandel.com> on September 25, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- the distinctive part of the disputed domain name is Doctor Grandel and therefore, when pronounced, is identical to the trademark DR. GRANDEL in which the Complainant has rights;

- the Complainant does not sell its products manufactured under the said trademark on the Internet because of the nature of the products and an interest in preserving the excellenct quality of these products;

- the Respondent has no rights in the trademark or service mark DR. GRANDEL;

- the content of the web site to which the disputed domain name resolves very much resembles the Complainant’s own web site and contains references which give the impression that they derive from the Complainant;

- the disputed domain name was registered in bad faith since the Respondent knew about the Complainant’s trademark before it registered the domain name;

- 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 and the products offered on the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

A.1. The Complainant’s trademark or service mark rights

The Complainant’s rights in the DR. GRANDEL mark are undisputable and result from the multiple national and international registrations of the mark for goods in classes 1, 3 and 5 and also from its presence on the Internet with websites under its own name: “www.grandel.com” and “www. grandel.de”.

In addition, DR. GRANDEL is the name of the Complainant and is known in the field of manufacturing and selling of brand name natural health and beauty products.

A.2. The similarity of the disputed domain name <drgrandel.com> to the mark DR. GRANDEL

The disputed domain name fully incorporates the Complainant’s trademark except for a dot between DR and GRANDEL. Also the disputed domain name uses lower case letters in comparison to the Complainant’s mark.

The said differences between the disputed domain name and the Complainant’s trademark are, in the opinion of the Panel, without significance for the purpose of finding similarity or identity between the two.

In conclusion, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides three non-exclusive circumstances which can demonstrate that the Respondent has rights to or legitimate interests in the disputed domain name:

(i) before any notice to the Respondent of the dispute, his 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; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or

(iii) 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.

Those circumstances are not exhaustive of the circumstances which may establish rights or legitimate interests.

As to the first circumstance of paragraph 4(c) of the Policy, it is the Panel’s opinion that Complainant made a prima facie showing that the Respondent did not make preparations to use or does not use the disputed domain name in connection with a bona fide offering of goods or services. It appears that the use of the disputed domain name is fully commercial with an intent for commercial gain. Such a commercial gain is, in the opinion of the Panel, a direct result of the diversion of the consumers of Complainant’s products to the Respondent’s web site by making it appear that there is an association between the Respondent and the Complainant. Having failed to respond to the Complaint, the Respondent has not rebutted this showing. The silence of the Respondent, as other panels before have concluded (See Edgar Rice Burroughs, Inc. v. Adtel Communications, WIPO Case No. D2000–0115, Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000–0641, Bayerische Motoren Werke AG v. Null, WIPO Case No. D2002-0937) may be an indication that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that its commercial strategy excludes selling its products on the Internet, taking into consideration its interest in preserving the excellent quality of these products. The fact that the Respondent ignores on the web site to which the disputed domain name resolves, the wishes of the Complainant and sells products online identical to those of the Complainant cannot be considered a bona fide offering of goods or services 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.

It could be argued that the Respondent is commonly known as an individual by the domain name, i.e. D.R.G. Randel. However, considering the bad faith use of the disputed domain name explained under 6C of this decision, the Panel finds, on the balance of probabilities, that it is more likely than not that the Respondent has given a false identity to the Registrar while registering the disputed domain name.

Finally, the Panel did not find, from the facts presented by the Complainant or from its own research, any other circumstances which, being applicable to the case, would indicate that the Respondent has rights or legitimate interests in the disputed domain name.

Having said the above, based on the circumstances of this case, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The facts presented by the Complainant and supported by the appendixes to the Complaint and also resulting from the Panel’s own research support a presumption of registration and use of the disputed domain name in bad faith.

Given the multiple national and international registrations of the trademark DR. GRANDEL and the presence of the Complainant on the Internet, which predate the registration of the disputed domain name, the Panel finds that the Respondent registered and uses the domain name knowing that the Complainant has rights in the trademark DR. GRANDEL and attempting by this registration to attract Internet users looking for the Complainant’s products to the Respondent’s web site under the disputed domain name.

Bearing in mind the content of the Respondent’s web site, advertising for sale the Complainant’s products, the Panel infers that the Respondent registered the domain name not only having knowledge of the Complainant’s trademark, but also founding its commercial activities on the popularity of the DR. GRANDEL products.

The bad faith of the registration and use of the disputed domain name result also, in the opinion of the Panel, from the content of the web site, which suggests to consumers that the Respondent is identical to the Complainant and invites the consumer to buy on this website the products of the Complainant.

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.com> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist

Dated: May 23, 2005