Westmore · UDRP DecisionFranke-ukr.com
The Panel ordered transfer of <franke-ukr.com>. It found the domain confusingly similar to Complainant's registered FRANKE mark, held that Respondent had no rights or legitimate interests, and concluded that Respondent registered and used the domain in bad faith to create a false impression of association and divert Internet users for commercial gain. Respondent did not file a response.
The timeline behind franke-ukr.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind franke-ukr.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates how a domain combining an entire trademark with a geographic abbreviation can reinforce, rather than dispel, an impression of an authorized local operation. The commercial website's sale of branded products did not establish a legitimate interest where the record showed no authorization and the site presented the look and feel of the trademark owner's website without disclosing the lack of a relationship.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Franke Technology and Trademark Ltd v. CHervinchuk Maksim Nikolaevich Case No. D2016-1655 1. The Parties Complainant is Franke Technology and Trademark Ltd of Hergiswil, Switzerland, represented by BrandIT GmbH, Zurich, Switzerland. Respondent is CHervinchuk Maksim Nikolaevich of Kiev, the Ukraine.. 2. The Domain Name and Registrar The disputed domain name <franke-ukr.com> is registered with OnlineNIC, Inc. d/b/a China-Channel.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2016. On August 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. This information differed because Respondent’s identity was hidden behind a privacy shield service. The Center sent an email communication to Complainant on August 18, 2016 providing the registrant and contact information for Respondent disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 23, 2016 that identified the registrant provided by the Registrar as Respondent. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on September 19, 2016. The Center appointed Dina Leytes as the sole panelist in this matter on September 27, 2016. 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 Complainant Franke Technology and Trademark Ltd is a business focusing on the kitchen appliances industry, and is registered and existing under the laws of Switzerland. Complainant is the owner of the trademark FRANKE and owns numerous trademark registrations for FRANKE worldwide (the “FRANKE Mark”), including in the United States of America, the European Union, China, and the Ukraine. Complainant indicates in its Complaint that it expanded its business worldwide beginning in 1989 and now has seventy subsidiaries and approximately 9,000 employees across 37 countries. Complainant states it has a strong presence in the Ukraine, and the Ukraine is also where Respondent resides. Complainant registered the FRANKE trademark in China in 2005 and designated the Ukraine in its international registration in 2007. These trademark registrations predate the registration of the disputed domain name. The disputed domain name <franke-ukr.com> was registered with the Registrar on February 14, 2014. It is used in connection with a website that sells Franke products within the territory of the Ukraine. Complainant states that Respondent’s website includes the unlicensed use of the Franke logo. Complainant has a number of registered domain names, including <franke.com> (created on March 18, 1996), <franke.ua> (created on March 7, 2002) and <franke.info> (created on July 26, 2001). 5. Parties’ Contentions A. Complainant Complainant alleges that the disputed domain name <franke-ukr.com> directly and entirely incorporates Complainant’s own well-known, registered FRANKE Mark with the addition of letters that appear to be an abbreviation of the country “Ukraine”. Complainant alleges that the added hyphen and “ukr” letters do not add distinctiveness to the disputed domain name, but rather create the false impression that Respondent is authorized to represent Complainant in the Ukraine. Further, Complainant alleges that Respondent has no legitimate interests or rights with respect to the disputed domain name and Respondent seeks to mislead Internet users to its website where Respondent sells Complainant’s products by using the disputed domain name with a website that has the look and feel of an official website associated with Complainant. Complainant also argues that the website’s information intake form allows Respondent to collect sensitive information in an attempt to phish for users’ personal information in a manner that is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use. Finally, Complainant contends that Respondent has shown bad faith by intentionally choosing the disputed domain name based on a registered and well-known mark in order to generate more traffic to Respondent’s business of selling Franke products. Complainant argues that Respondent is intentionally attempting to attract consumers for commercial gain by creating a likelihood of confusion with Complainant’s FRANKE Mark. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, a complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The complainant bears the burden of proof on each of these elements. If a respondent does not submit a response to the complaint, a panel may draw appropriate inferences from such a default. However, a complainant must still support its assertions with actual evidence to succeed in a UDRP proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section Edition (“WIPO Overview 2.0”) at paragraph 4.6 and the cases cited therein. A. Identical or Confusingly Similar The Panel finds that Complainant has registered trademark rights in the FRANKE Mark. The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s FRANKE Mark. The disputed domain name incorporates Complainant’s FRANKE Mark in its entirety with the additional elements of a hyphen followed by the letters “ukr”. Prior UDRP panels have held that when a disputed domain name wholly incorporates a complainant’s registered trademark, this may be sufficient to establish confusing similarity for purposes of the Policy. See e.g. , Hoffman-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov , WIPO Case No. D2011-1474 ; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr. , WIPO Case No. D2000-1525 ; Bayerische Motoren Werke AG v. bmwcar.com , WIPO Case No. D2002-0615 ; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin , WIPO Case No. D2010-1059 . In this case, the additional elements of a hyphen followed by the letters “ukr” do not distinguish the disputed domain name from Complainant’s FRANKE Mark. Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been met by Complainant. B. Rights or Legitimate Interests To prevail on this element, Complainant must make out at least a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that may be used to show a respondent’s rights or legitimate interests in a domain name: (i) 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; or (ii) 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 (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. The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Based on the record before the Panel, Respondent has not made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Respondent is not affiliated with Complainant, and no evidence has been presented that Respondent is legitimately known by the FRANKE Mark. Further, there is no evidence that Respondent sought trademark rights in any variation of the word “Franke”. Respondent has not received any license, authorization, or consent to use the FRANKE Mark in any manner from Complainant. Rights or legitimate interests cannot be created where the registrant of the domain name at issue would not choose such a name unless the registrant was seeking to misrepresent itself to be associated with the Complainant. Finally, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The prima facie case presented by Complainant is thus sufficient to shift the burden of production to Respondent to demonstrate that Respondent has rights or legitimate interests in the disputed domain name. By failing to file a response, Respondent has not presented any evidence of any rights or legitimate interests Respondent may have in the disputed domain name. Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been met by Complainant. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that may evidence a respondent’s bad faith registration and use: (i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purposes of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) 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, provided that the respondent has engaged in a pattern of such conduct; or (iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s website or location or of a product or service on the respondent’s website or location. Complainant has alleged that Respondent registered and is using the disputed domain name in bad faith for a number of reasons. The Panel finds that Complainant has demonstrated that Respondent registered and is using the disputed domain name in bad faith. Respondent was aware of Complainant and the FRANKE Mark when it registered the disputed domain name. By choosing the disputed domain name, Respondent sought to create the false impression that Respondent is either authorized to represent Complainant in the Ukraine or to misrepresent itself to be otherwise related to Complainant. Respondent is also using the disputed domain name to divert Internet users who are searching for Complainant’s website to Respondent’s own website for commercial gain, while using the disputed domain name with a website that has the look and feel of Complainant’s website without disclosing its lack of relationship with Complainant. Finally, the Center attempted to send the Written Notice of the proceeding by DHL to the address disclosed by the Registrar and received notification on August 31, 2016 from DHL that the address was incomplete or wrong. The fact that Respondent appears to have provided false contact information is further indication of Respondent’s bad faith registration and use. Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by Complainant. 7. Decision For 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 <franke-ukr.com> be transferred to Complainant. Dina Leytes Sole Panelist Date: October 10, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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