(I) CONFUSING SIMILARITY WITH COMPLAINANT'S RIGHTS
Since the domain names and the Complainant’s trademarks are not identical, the key element investigated and considered by the Panel is whether the disputed domain names consisting of a prima facie generic term “CARGLASS” are confusingly similar to the Complainant’s Carglass Trademarks.
Having in mind the complexity of this issue, the Panel below reveals in detail its considerations and findings:
(i) Existing Case Law
In decisions by various panels constituted under the UDRP process, there has been discussion of what constitutes confusion for the purposes of paragraph 4(a)(i) of the UDRP where registered trademarks and domain names already in use had been joined together with generic prefixes or suffixes to form a new domain name (sometimes referred to as a derivative).
Although the panel is well aware that the principle of stare decisis does not apply in these proceedings and that it is not bound by decisions reached by earlier panels, it is of the opinion that a review of some the cases provides some support for the conclusions of this decision.
Decisions dealing with an issue of descriptiveness of the trademark (or a trademark and a generic word) often resulted in rejection of the complaint (see, for example, Hotels unis de France vs. Christopher Dent / Exclusivehotel.com, WIPO D2005-1194, Pinnacle Intellectual Property vs. World Wide Exports. WIPO D2005-1211, City Utilities of Springfield vs. Ed Davidson, WIPO D2000-0407 and similar).
In light of the above, assessment of a level of descriptiveness (generic nature) of a term “carglass” is principal.
(ii) Legal Analysis
Ad 1) Generic vs. Distinctive Nature of the Carglasss Trademarks
In the Panel’s view, after careful review of provided evidence, research performed by the Panel and consultations with native English speakers, the term “carglass” is not commonly used in the English language. Therefore, a generic nature of such term as presumed by the Respondent is only putative, namely in eyes of non-native speakers. Therefore, the term “carglass” shall not be perceived as a descriptive generic term. An affidavit provided by the Respondent that the term “carglass” shall be translated to Czech as “autosklo” is not in a conflict therewith – a term “carglass”, if translated, indeed most likely corresponds to a Czech term “autosklo”, however it does not imply that such term (i.e. carglass) is used in the English language.
In addition, the Carglass Trademarks have through extensive use acquired additional level of distinctiveness due to their reputation and well-known character and as such shall enjoy higher degree of protection than “standard” trademarks.
As supporting evidence on a well-known character of Carglass Trademarks, the Panel has endorsed principles and findings already discussed and applied in the following UDRP decisions:
Belron Hungary Kft. - Zug Branch v. F. Boom, WIPO Case No. DNL2013-0037, <careglass.nl>, <care4urglass.nl> and <cglass.nl>
Belron Hungary Kft. - Zug Branch v. Hartmut Clasen, Falkenber Consultants Ltd., WIPO Case No. D2014-2248, < chris-a-carglass.com>
In light of the above, the Panel contends that he term “carglass” as well as the Carglass Trademark are distinctive and satisfy the criteria as set in the paragraph 4(a)(i) of the UDRP.
Ad 2) Confusing Similarity Between the Carglass Trademarks and Disputed Domain Names
The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name. An addition of common, dictionary, descriptive, or other descriptive terms is typically insufficient to prevent threshold Internet user confusion. Confusing similarity test under the UDRP customarily involves a straightforward visual or aural comparison of the trademark with the domain name.
Applying the principles described above, the Panel contends that incorporation of the dominant “carglass” element of Carglass Trademarks (which standalone enjoys distinctiveness) into the disputed domain names constitute confusing similarity between Complainant’s trademark and such domain names. Addition of a non-distinctive element “service” or “servis” to the “carglass” denomination cannot prevent the association in the eyes of internet consumers between the disputed domain names and the Complainant’s Carglass Trademarks and thus the likelihood of confusion still exists.
For sake of completeness, the Panel asserts that the top-level suffix in the domain name (i.e. the ".com" or the “.net”) must be disregarded under the confusing similarity test as it is a necessary technical requirement of registration.
Therefore, the Panel has decided that there is confusing similarity in this case and it also concludes that the Complainant has satisfied paragraph 4(a)(i) of the UDRP.
(II) NO RIGHTS OR LEGITIMATE INTEREST
The Complainant’s assertions that the Respondent is not commonly known by the disputed domain name and is not affiliated with nor authorised by the Complainant are sufficient to constitute a prima facie illustration of absence of rights or legitimate interest in the disputed domain names on the part of the Respondent.
Respondent’s affiliation to a company Car Glass International Ltd., is not relevant since the domain names are registered in the name of the Respondent (natural person), not the said company.
Thus, the Panel has taken a view that the Respondent has no rights or legitimate interest in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the UDRP).
(III) BAD FAITH
Since the Respondent was aware of the Court Resolution, the Panel contends, on the balance of probabilities, that the domain names have been registered (and that the above discussed similarity between the disputed domain names and Carglass Trademarks has been established) by the Respondent on purpose and in a bad faith. Moreover, while the more senior Carglass Trademarks were well-known and in wide use on the Internet and in the industry in which the Respondent was active at the time the disputed domain names were registered, Respondent's denial of bad faith is highly improbable.
The Respondent has not used the disputed domain names in any manner, however, the Panel concludes (as it has been ruled in many similar cases, as for example Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, <telstra.org>, Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, <jupiterscasino.com>, Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131, <ladbrokespoker.com>) that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name(s) without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith.
Conclusively, the Panel has taken a view that the disputed domain names have been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the UDRP).
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