Westmore · UDRP DecisionSchleich-australia.com
The Panel ordered transfer of <schleich-australia.com>. It found the domain confusingly similar to the Complainant’s SCHLEICH trademark, that the unauthorized reseller lacked rights or legitimate interests because its website did not accurately and prominently disclose its relationship with the Complainant, and that the domain was registered and used to attract Internet users for commercial gain through confusion concerning source, sponsorship, affiliation, or endorsement.
The timeline behind schleich-australia.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
The decision illustrates that selling a trademark owner’s products does not by itself establish reseller rights or legitimate interests. Where a domain combines the mark with a geographic term and the website prominently displays the owner’s branding, failure to disclose the actual relationship may both defeat a reseller defense and support a finding of bad-faith commercial confusion.
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 Schleich GmbH v. Jhon Elvis Villa Zeron, yes alpaca Case No. D2018-0344 1. The Parties The Complainant is Schleich GmbH of Schwäbisch Gmünd, Germany, represented by The GigaLaw, United States of America (“United States”). The Respondent is Jhon Elvis Villa Zeron, yes alpaca of Bright, Australia. 2. The Domain Name and Registrar The disputed domain name <schleich-australia.com> is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2018. On February 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 March 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2018. The Center appointed Christopher J. Pibus as the sole panelist in this matter on April 3, 2018. 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 was founded by Friedrich Schleich in 1935 and now operates a multi-national business manufacturing toys and figurines, including domestic animals, farm animals and wild animals, through offices in seven countries around the world and distributors in 51 countries. The Complainant’s annual sales are approximately EUR 132 million. Using its unique naturalistic portrayal of figures, the Complainant has achieved widespread international reputation for its products and its associated trademarks. The Complainant owns many trademark registrations around the world for the mark SCHLEICH, including the following: United States Trademark Registration No. 1,207,394 for SCHLEICH S dated September 7, 1982; United States Trademark Registration No. 3,983,420 for SCHLEICH dated June 28, 2011; Australian Trademark Registration No. 1,336,979 for SCHLEICH dated April 3, 2009; Australian Trademark Registration No. 595,196 for SCHLEICH S dated February 3, 1993; United States Trademark Registration No. 3,423,231 for S in circle design dated May 6, 2008; and Australian Trademark Registration No. 1,201,094 for S in circle design dated November 17, 2006. The Respondent registered the disputed domain name <schleich-australia.com> on February 14, 2015. At the time the Complaint was filed, the disputed domain name reverted to a website that prominently featured the Complainant’s S Logo and offered for sale a variety of the Complainant’s figurines. The Complainant wrote several letters and emails to the Respondent requesting transfer of the disputed domain name, but the Respondent did not comply with the request. 5. Parties’ Contentions A. Complainant The Complainant owns many trademark registrations for SCHLEICH, SCHLEICH S and the S Logo, as listed in section 4 of this Decision. The Complainant contends that the disputed domain name <schleich-australia.com> contains the Complainant’s trademark in its entirety. Further, the Complainant asserts that the addition of the geographic word “Australia” does nothing to alleviate any confusing similarity. Complainant relies on WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 , which states: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” With respect to rights and legitimate interests, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the SCHLEICH trademark in any manner. The Complainant submits that there is no commercial relationship between the Respondent and the Complainant. The Complainant provides evidence that the Respondent is using the disputed domain name in association with a website which features the Complainant’s SCHLEICH S Logo and is offering for sale Complainant’s Schleich figurines. However, the Respondent does not have a reseller, distributor, or agency agreement with the Complainant, and is not authorized to use the disputed domain name or the SCHLEICH trademark or the S Logo in any manner. The Complainant notes that the Respondent has not disclosed accurately or prominently on its website that it is not authorized by the Complainant to act as a reseller of SCHLEICH branded products. In the absence of any agreement, authorization or permission, and in the absence of any disclaimer or other disclosure, the Complainant submits that the Respondent is not using the confusingly similar domain name in association with any bona fide offering of goods or services under the Policy. With respect to bad faith, the Complainant asserts that the Respondent has registered a confusingly similar domain name with clear knowledge of the Complainant’s previous rights in the SCHLEICH trademark and S Logo. The Respondent has used the disputed domain name in association with a website that features the Complainant’s registered trademarks, and is offering for sale the Complainant’s products without authorization for the purposes of monetary gain. The Complainant further contends that the Respondent has registered and is using the disputed domain name to interfere with the Complainant’s customers or potential customers and business. The Complainant first wrote to the Respondent on September 9, 2016, and did not receive any response. The Complainant wrote again to the Respondent by letter in 2017, and the parties exchanged emails in late 2017 and early 2018. On each occasion, the Complainant requested that the Respondent transfer the disputed domain name. The Respondent has not complied with these requests, and the only explanation offered by the Respondent was to explain “im [sic] a collector” and “im [sic] a customer and i sell your products, I haven’t finished my website yet but i will love to keep using this domain how can i have this permission please?” B. Respondent The Respondent did not file any reply to the Complainant’s contentions in this matter. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements: (i) The disputed domain name is identical or confusingly similar to the 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. A. Identical or Confusingly Similar The Complainant has submitted evidence of well-established rights in the SCHLEICH trademark in the United States and Australia by virtue of the trademark registrations listed in section 4 of this Decision. The Complainant’s registered trademark has been replicated in its entirety as the first and dominant element of the disputed domain name. The addition of the geographical term “Australia” does not serve to distinguish the disputed domain name from the Complainant’s trademark. See Cox Automotive Australia Pty Ltd. v. Peter Nutley , WIPO Case No. D2017-2098 ; Rejuvatek Medical, Inc. v. Ben Saunders, Biosoft (Aust) Pty Ltd , WIPO Case No. D2016-1331 ; Swarovski Aktiengesellschaft v. Mie Shan , WIPO Case No. D2014-0972 . Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant’s evidence makes it clear that the Respondent has no reseller, distributor or agency agreement with the Complainant, and is not otherwise authorized by the Complainant to use the SCHLEICH Trademark or the SCHLEICH Logo in any manner. The configuration of the Respondent’s website is deceptive to users, in that “the presentation of Respondent’s website is likely to mislead Internauts into believing the site is operated or endorsed by or affiliated with Complainant.” Philip Morris Incorporated v. Alex Tsypkin , WIPO Case No. D2002-0946 . The Complainant rightly asserts that “the dominant position of [Complainant’s] logo” on the Respondent’s website “without any statement as to the true ownership of the site or any disclaimer of association with Complainant, create[s] a strong impression that the site is an official site of Complainant” ( Philip Morris ). The Panel’s review of pages from the Respondent’s website in this matter reveals that there is no indicator of any sort that communicates or displays the nature of the Respondent’s relationship with the Complainant. Accordingly, the Respondent cannot establish rights or legitimate interests as a reseller because it does not “accurately and prominently disclose the registrant’s relationship with the trademark holder.” WIPO Overview 3.0 , section 2.8 . This Panel is therefore able to find that the Respondent cannot establish rights or legitimate interests. Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant’s evidence makes it clear that the Respondent’s choice of the disputed domain name was intended to attract Internet users to the associated website, where those users would see the SCHLEICH Logo and SCHLEICH figures prominently displayed. The Respondent has thereby intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, which constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy. The failure of the Respondent to disclose the nature of its relationship with the Complainant, as set out above in section B, is also material to a finding of bad faith. Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy. 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 <schleich-australia.com> be transferred to the Complainant. Christopher J. Pibus Sole Panelist Date: April 17, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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