URS DEFAULT DETERMINATION
Fermax Branding, S.L.U. v. PERFECT PRIVACY, LLC
Claim Number: FA1511001649037
DOMAIN NAME
<fermax.club>
PARTIES
Complainant: Fermax Branding, S.L.U. Fermax Branding, S.L.U. of Valencia, Spain | |
Complainant Representative: Ubilibet, s.l.
Carmen Romana of Barcelona, --, Spain
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Respondent: PERFECT PRIVACY, LLC of Jacksonville, FL, US | |
REGISTRIES and REGISTRARS
Registries: .CLUB DOMAINS, LLC | |
Registrars: Network Solutions Inc. |
EXAMINER
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding. | |
Ms. Kateryna Oliinyk, as Examiner |
PROCEDURAL HISTORY
Complainant Submitted: November 20, 2015 | |
Commencement: November 20, 2015 | |
Default Date: December 7, 2015 | |
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules"). |
RELIEF SOUGHT
Complainant requests that the domain name be suspended for the life of the registration. |
STANDARD OF REVIEW
Clear and convincing evidence. |
FINDINGS and DISCUSSION
Findings of Fact: Under URS 9.1. the evidences will be the materials submitted with the Complaint and the Response, and those materials will serve as the entire records used by the Examiner to make a Determination. URS 8.2. reads that the burden of proof shall be clear an convincing evidences. Under URS 8.6. if the Examiner finds that all three standards provided for by URS 8.1. are satisfied by clear and convincing evidences and that there is no genuine contestable issue, then the Examiner shall issue a Determination in favour of the Complainant. Any of the defenses must be asserted by showing that there are facts legally sufficient to excuse the Respondent. The Complainant contends that Fermax Branding, S.L.U. (“Fermax”) was set up in 1949 and is the manufacturer of radio intercom for industrial and professional use, electronic door entry system. Fermax pioneered the application of industrial design in its products and went on to become a badge of identity for its clients. The trademark Fermax is the duly registered mark which is protected under Community trademark “Fermax” nº 000741835, registered on 07/06/1999 for class 9 and Community trademark “Fermax” nº 011871341, registered on 28/10/2013 for the classes 9, 35 and 42. The trademark “Fermax” is well-known and widely recognised to identify Fermax's products and the company itself. Complainant is also the owner of 159 domain names including the trademark “Fermax”. Respondent has not submitted the response. Thus, under URS 12 the case enters default and the Examiner proceeds to review the Complaint for a prima facie case, including complete and appropriate evidence. Thus, the Complainant contends that it has valid trademark rights in the “Fermax” mark and that the Respondent does not have any legitimate right or interest to the domain name <fermax.club> and that the Respondent registered and is using the domain name in bad faith. The Examiner notes that the actual name is concealed in the WHOIS records and is not prominent onto the website. Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended. |
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark: Determined: Finding for Complainant The registered domain name <fermax.club> fully incorporates the word mark FERMAX for which the Complainant holds valid regional registrations and that is in current use. In addition, it is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity, thus “.club” is of no consequence here. Respectively, the Examiner finds that the domain name <fermax.club> is identical to the Complainant’s FERMAX mark under URS 1.2.6.1. (i). [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name. Determined: Finding for Complainant The Examiner determines that the Respondent is not commonly known by the FERMAX name as nothing in the records of the file indicates that, and the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use Complainant’s FERMAX mark in a domain name or otherwise. The domain name is neither generic nor descriptive. The domain name leads to the commercial website selling different types of electronic door entry system, including the FERMAX branded ones. The Examiner determines the Oki Data principles which are typically assessed for websites operated by distributors/resellers for determining whether they are making a bona fide offering of goods and services are not met in this case. This precludes finding of good faith use of the domain name in this case. Therefore, the Examiner finds that the Complaint meets URS requirement of 1.2.6.2.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
Determined: Finding for Complainant The bad faith exists where the respondent, by using the domain name, 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 its website or location or of a product or service on its website or location. The domain name consists of the FERMAX name combined with the suffix ”club”. Club means an organization of people with a common purpose or interest. By visiting the site, customers will most likely expect to reach the FERMAX website or the website operated by someone who has any ties with or relation to FERMAX. The Respondent who has never been granted the right to use the FERMAX mark and who does not have any affiliation ties with the Complainant is using the confusion in the minds of consumers over the use of the well-known FERMAX mark to divert users to the own website. The records of the case do not provide any evidence whatsoever of any actual or contemplated good faith use by the Respondent of the domain name. Thus, the Examiner finds the domain name <fermax.club> misleading that supports finding of bad faith registration under URS 1.2.6.3.(d). FINDING OF ABUSE or MATERIAL FALSEHOOD The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. The Examiner finds as follows:
DETERMINATION
After reviewing the parties’ submissions, the Examiner determines that the Complainant
has demonstrated all three elements of the URS by a standard of clear and convincing
evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for
the duration of the registration:
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Ms. Kateryna Oliinyk Examiner
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