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

   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:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

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.
  a. Registrant has registered or acquired the domain name primarily for the purpose 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 documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site 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 Registrant’s web site or location or of a product or service on that web site or location.

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:


  1. The Complaint was neither abusive nor contained material falsehoods. 

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:

  1. fermax.club

 

Ms. Kateryna Oliinyk
Examiner
Dated: December 12, 2015

 

 

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