Geberit International AG and Geberit Holding AG v. QIN TAI / Wen Zhou Heng Pin Wen Hua Chuang Yi Co., Ltd.
Claim Number: FA2303002038216
Complainant is Geberit International AG and Geberit Holding AG (“Complainant”), represented by Florian Traub of Pinsent Masons LLP, London, United Kingdom. Respondent is QIN TAI / Wen Zhou Heng Pin Wen Hua Chuang Yi Co., Ltd. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ghberite.com.de>, registered with AsiaRegister, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant participated in the mandatory CentralNic Mediation and the mediation process was terminated on March 23, 2023.
Complainant submitted a Complaint to Forum electronically on March 31, 2023; Forum received payment on March 31, 2023.
On April 3, 2023, AsiaRegister, Inc. confirmed by e-mail to Forum that the <ghberite.com.de> domain name is registered with AsiaRegister, Inc. and that Respondent is the current registrant of the name. AsiaRegister, Inc. has verified that Respondent is bound by the AsiaRegister, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On April 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents registration as technical, administrative, and billing contacts, and to postmaster@ghberite.com.de. Also on April 5, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On May 1, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the CDRP Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint”.
There are two Complainants in this matter: Geberit International AG and Geberit Holding AG. Geberit Holding AG is an entity which holds intellectual property rights and other assets including a portfolio of domain names including <geberit.com> for and on behalf of Geberit International AG.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants. Thus, the Panel will treat them as a single entity in this proceeding and the proceeding may go forward on that basis. Accordingly, throughout this decision, the Complainants will be collectively referred to as “Complainant.”
A. Complainant
Complainant made the following contentions.
Complainant is a Swiss-based international group that manufacturers and supplies sanitary parts and systems. Complainant has rights in the GEBERIT mark through its registration with EU trademark registrations. See Amend. Compl. Annex 2. Respondent’s <ghberite.com.de> domain name is identical or confusingly similar to Complainant’s GEBERIT mark as it replaces the first “e” with the letter “h” and an additional letter “e” has been added at the end of the mark and the “.com” generic top-level domain (“gTLD”) and the “.de” country-code top-level domain (“ccTLD”).
Respondent lacks rights and legitimate interests in the <ghberite.com.de> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its GEBERIT mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use as Respondent passes off as Complainant by advertising counterfeit versions of Complainant’s products for sale on an unauthorized basis.
Respondent registered or uses the <ghberite.com.de> domain name in bad faith. Respondent’s website disrupts Complainant’s business as Respondent registered the disputed domain name to pass off as Complainant and sell unauthorized products for Respondent’s financial gain. Next, Respondent had actual knowledge of Complainant’s rights to the GEBERIT mark prior to registering the disputed domain name as evidenced by Respondent’s use of the mark. Further, Respondent registered the disputed domain name with a privacy shield and a false address.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Swiss-based international company that manufactures and supplies sanitary parts and systems.
2. Complainant has established its rights in the GEBERIT mark through its registration of the mark with European Union trademark registrations.
3. Respondent registered the <ghberite.com.de> domain name on November 11, 2019.
4. Respondent has caused the disputed domain name to be used to pass Respondent off as Complainant by advertising counterfeit versions of Complainant’s products for sale on an unauthorized basis.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation and that said mediation must have been terminated prior to the consideration of the Complaint. That requirement has been verified by the evidence.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon prior UDRP decisions as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the GEBERIT mark through its registration of the mark with EU trademark registrations. See Amend. Compl. Annex 2. The Panel has examined that evidence and finds that it supports Complainant’s contentions. Registration of a mark with a governmental agency is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Teleflex Incorporated v. Leisa Idalski, FA 1794131 (Forum July 31, 2018) (“Registration of a mark with governmental trademark agencies is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i).”).Therefore, the Panel finds that Complainant has demonstrated its rights in the GEBERIT mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GEBERIT mark. Next, Complainant argues that Respondent’s <ghberite.com.de> domain name is identical or confusingly similar to Complainant’s GEBERIT mark as it replaces the first “e” with the letter “h” and an additional letter “e” has been added at the end of the mark and the “.com” gTLD and the “.de” ccTLD. The addition of letters and a gTLD and ccTLD fails to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See Klein Tools, Inc. v. chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains the entire KLEIN TOOLS mark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)); see also ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Forum May 6, 2011) (“Neither the addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es,’ nor the insertion of a gTLD has a distinctive function”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s GEBERIT mark and to use it in its domain name and to replace the first “e” with the letter “h” and to add an additional letter “e” at the end of the mark, neither of which can negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <ghberite.com.de> domain name on November 11, 2019;
(c) Respondent has caused the disputed domain name to be used to pass Respondent off as Complainant by advertising counterfeit versions of Complainant’s products for sale on an unauthorized basis;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent lacks rights or legitimate interests in the <ghberite.com.de> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the GEBERIT mark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS information for the disputed domain name lists the registrant as “QIN TAI / Wen Zhou Heng Pin Wen Hua Chuang Yi Co., Ltd.” and Complainant asserts there is no other evidence to suggest that Respondent was authorized to use the GEBERIT mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent is not using the <ghberite.com.de> domain name for any bona fide offering of goods or services, nor any noncommercial or fair use as Respondent passes off as Complainant by advertising versions of Complainant’s products for sale on an unauthorized basis. Using a disputed domain name to pass off as a complainant for the purpose of the unauthorized sale of versions of a complainant’s products may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Complainant provides a screenshot of the resolving website using a disputed domain name that is nearly identical to Complainant’s, showing a logo that is almost identical to Complainant’s, and purportedly selling products that are identical to those products that Complainant offers. See Amend. Compl. Annex 5. The Panel therefore finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith or has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered or used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent registered or uses the <ghberite.com.de> domain name in bad faith as Respondent registered the disputed domain name to pass itself off as Respondent in order to mislead and confuse users for Respondent’s financial gain. Registration of a confusingly similar domain name with the intent to disrupt business by passing off as a complainant by selling unauthorized versions of products can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The Panel recalls that Complainant provides screenshots of the disputed domain name resolving to a website that sells nearly identical products as Complainant and uses a similar logo to Complainant. See Amend. Compl. Annex 5. Complainant argues that Respondent is deliberately misleading users and creating a false impression of association in order to attract business for Respondent’s financial gain. As the Panel agrees, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant contends that Respondent registered or uses the <ghberite.com.de> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights to the GEBERIT mark. Use of a mark to divert Internet traffic to a disputed domain name where a respondent passes itself off as a complainant can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent’s use of the GEBERIT mark in the disputed domain name as well as Respondent’s resolving website using an identical logo as Complainant’s and selling identical products as Complainant demonstrate Respondent’s actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name. As the Panel agrees, the Panel finds that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant contends Respondent registered or uses the <ghberite.com.de> domain name in bad faith as Respondent registered the disputed domain name using a privacy shield to hide its identity. Registration of a confusingly similar domain name using a privacy shield or providing false WHOIS information can evince bad faith registration and use per Policy ¶ 4(a)(iii).See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). In addition, an extract of the WHOIS search results shows a Chinese company as the Registrant and the German address on the disputed domain name is clearly fake as it does not exist. See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”). Complainant submits that using a privacy shield and providing a false address indicate the disputed domain name has been registered with fraudulent intensions. As the Panel agrees, the Panel finds that Respondent registered or uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ghberite.com.de> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC, Panelist
Dated: May 2, 2023
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