Decision for dispute CAC-UDRP-107587

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant claims to be the owner of the following trademarks (hereinafter "Complainant's Trademarks"): 

• BABYLOVE - DE Registration Number 302019113481, Registration Date 22 November 2019, covering classes 3, 5, 8, 9, 10, 11, 12, 16, 18, 20, 21,
  24, 25, 26, 28, 29, 30 and 32;
• YOUR BEST - EU Registration Number 814426, Registration Date 17 November 2003, covering classes 33, 5,18, 21 and 31;
• DONTODENT - DE Registration Number 39509627, Registration Date 6 September 1995, covering class 3;
• EBELIN - D E Registration Number 302013033015, Registration Date 19 July 2013, covering classes 3, 8, 9, 10, 11, 14, 16, 18, 20, 21, 24, 25, 26,
  27 and 28;
• PROFISSIMO - DE Registration Number 302012017393, Registration Date 5 April 2012, covering classes 1, 3, 4, 5, 6, 7, 10, 11, 16, 19, 21, 22, 24 and 34;
• PUSBLU - DE Registration Number 302011064029, Registration Date 19 December 2011, covering classes 18, 24, 25 and 28;
• SEINZ - DE Registration Number 302017103657, Registration Date 21 July 2019, covering classes 3, 5, 8, 9, 16, 21, 25, 35, 36, 38, 41 and 44;
• TREND IT UP - DE Registration Number 302014002899, Registration Date 10 June 2014, covering classes 3, 5, 8, 10, 11, 14, 16, 18, 20, 21, 22, 24, 25 and 26;
• ALVERDE - DE Registration Number 30677947, Registration Date 21 March 2007, covering classes 3, 5, 16, 18, 21, 24 and 25;
• BALEA - DE Registration Number 302011005007, Registration Date 9 March 2011, covering classes 18, 3, 5, 8, 21, 24, 25, 26 and 32;

The Complainant is dm-drogerie markt GmbH + Co. KG, a German chain of retail stores founded in 1973, offering cosmetics, healthcare items, household products, and health food and drinks.

The Complainant claims to be the largest retailer of cosmetics and healthcare items in Germany and operates in 12 European countries, with significant market exposure in Austria, Hungary, and the Czech Republic. The Complainant owns a number of trademarks under which it commercializes specific product lines. These include BABYLOVE (diapers), DEIN BESTES (pet food), DONTODENT (dental hygiene and health), EBELIN (cosmetic utensils), PROFISSIMO (cleaning products), PUSBLU (children's clothes), SEINZ (male cosmetics), trend !t up (make up and cosmetics), ALVERDE (cosmetics), and BALEA (cosmetics).

 The Respondents appear to be individuals based in China.

The disputed domain names were registered on 30 July 2024.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain names should be transferred to it.

No administratively compliant response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant claims rights in the Complainant's Trademarks through its trademark registrations. By virtue of its trademark registrations, the Complainant has proven that it has rights in the mark under paragraph 4(a) of the Policy. See Avast Software s.r.o. in Milen Radumilo, 102384, (CAC 2019-03-12).

Furthermore, the Complainant contends that the addition of a generic term such as "de" (Germany) or "the", does not sufficiently distinguish the disputed domain names or eliminate the likelihood of confusion with the Complainant's mark. 

• <babylovede.com> (BABYLOVE + de)
• <baleade.com> (BALEA + de)
• <deinbestesde.com> ( DEIN BESTES + de)
• <dontodentde.com> ( DONTODENT + de)
• <ebelinde.com> ( EBELIN + de)
• <profissimode.com> ( PROFISSIMO + de)
• <pusblude.com> ( PUSBLU + de)
• <seinzde.com> ( SEINZ + de)
• <trenditupde.com> ( SEINZ + de)
• <thealverde.com> (the + ALVERDE)

By doing a side-by-side comparison, the Panel finds that the disputed domain names are indeed confusingly similar to the Complainant's Trademarks. The presence of additional terms and the .com gTLDs do not negate the distinctiveness of the mark or prevent a finding of confusing similarity. See paragraph 1.7 of the WIPO Overview 3.0.

For the foregoing reasons, the Panel finds the Complainant has satisfied paragraph 4(a)(i) of the Policy. 

The Complainant has, to the satisfaction of the Panel, shown the Respondents to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy). More specifically, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and the burden of proof then shifts to the Respondents to show it does have rights or legitimate interests. See PepsiCo, Inc. v Smith power production, 102378, (CAC 2019-03-08) ("The Panel finds that the Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against the Respondents. As the Respondents has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain name.").

The Complainant asserts that it is not aware of the Respondents being commonly known by the disputed domain names. The disputed domain names redirect Internet users to websites hosted on the domain name <loitershop.com>, which impersonate the Complainant's brands by prominently displaying its trademarks and, on most of the websites, the associated logos. This conduct is likely to cause consumer confusion and constitutes a diversion of consumers through clearly infringing activity, which can never give rise to legitimate rights or interests on the part of the Respondents. The use of the disputed domain names is therefore manifestly illegitimate.

The Panel finds that the Complainant has established a prima facie case that the Respondents lacks rights or legitimate interests in the disputed domain names. See Harley-Davidson Motor Company, Inc. in. Lina, Case No. 106758 (CAC, Sept. 4, 2024) (“Past panels have agreed that the use of a domain name for illegal activity (eg, the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. See also paragraph 2.13 of the WIPO Jurisprudential Overview 3.0.

Accordingly, the burden shifts from the Respondents to demonstrate any rights or legitimate interests in the disputed domain names. However, the Respondents have failed to submit a response within the required timeframe to rebut the Complainant's assertions.

For the foregoing reasons, the Panel finds the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

The Complainant asserts that its trademark rights predate the registration of the disputed domain names by nearly five years. The fact that the disputed domain names are used to display Germany-targeted websites that impersonate the Complainant's brands strongly suggests that the Respondents were fully aware of the Complainant's rights at the time of registration. The Complainant submits that the registration of the disputed domain names with full knowledge of the Complainant's prior trademark rights, and with the intent to target those rights, constitutes bad faith registration.

The Complainant further alleges that the disputed domain names have been used exclusively to redirect Internet users to websites hosted on the domain name <loitershop.com>, which impersonate the Complainant's brands. The impersonation is evidenced by the prominent display of the Complainant's brand-specific logos. Such use constitutes clear trademark infringement. It also provides manifest evidence of bad faith registration and use.

In addition, the Complainant submits that the Respondents have registered at least ten disputed domain names targeting the Complainant's trademarks, demonstrating a pattern of conduct aimed at preventing the Complainant from reflecting its marks in domain names.

Upon reviewing the website screenshots associated with the disputed domain names, and taking into account the Respondent's failure to submit a response within the required period of time, the Panel concludes that the Respondents were likely aware of the Complainant's Trademarks at the time of registration. See Guangdong Qisitech CO., LTD. vs mone meo, 107380 (CAC 2025-04-04) ("The evidence suggests that the Respondent registered and is using the disputed domain name to deliberately target the Complainant. Given the Respondent's reputation and the similarity of the disputed domain name, coupled with the Respondent's failure to challenge the Complainant's allegations, the Panel infers bad faith. The Respondent's actions fall within the criterion for bad faith under paragraph 4(b)(iv) of the UDRP Policy.")

Furthermore, the Panel finds that the Respondent's deliberate impersonation of the Complainant for commercial gain constitutes evidence of bad faith. See Esselunga SpA v Xuxu, 105785 (CAC, 2023-11-13) (“The Panel is persuaded that the Domain Name, comprising the Complainant's fanciful trademark and the ordinary word 'shop,' inherently impersonates the Complainant. Given the nature of the Domain Name and the size and reputation of the Complainant's business under the ESSELUNGA mark, the Panel is also persuaded that this impersonation is deliberate on the part of the Respondent.”).

For the foregoing reasons, the Panel finds the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

The Panel is satisfied that all procedural requirements under the UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

PRELIMINARY FINDINGS - CONSOLIDATION:

Pursuant to paragraph 10(c) of the Rules that a Panel shall decide a request by a Party to consolidate multiple disputed domain name disputes in accordance with the Policy and these Rules. The Rules further state that Respondent means the holder of a domain name registration against which a complaint is initiated. The Complainant submitted a request for consolidation, noting that all of the disputed domain names were registered on 30 July 2024. This suggests that they were registered by the same person or as part of a coordinated effort by a group of individuals engaged in a common enterprise.

Furthermore, all the disputed domain names redirect Internet users to websites hosted on the domain name <loitershop.com>, which impersonate the Complainant's brands. These websites share an identical layout and contain the same mentions, further supporting the conclusion that they are operated by a single entity or a coordinated group.

The Respondent did not submit a timely Response within the required period of time.

Apart from sharing the same registration date and registrar, the Panel also notes that almost all of the disputed domain names include the suffix “de” between the brand name and the generic top-level domain “.com.” In addition, all of the disputed domain names redirect to websites hosted on the same domain name, <loitershop.com>, which prominently feature the Complainant's name and brands. The Panel finds that, even if the disputed domain names were not registered by the same individual, it is evident that they are very likely controlled by the same entity or a coordinated group.

Accordingly, the Panel accepts the Complainant's request for consolidation of the disputed domain names.

Having established all three elements required under the UDRP Policy, the Panel concludes that the disputed domain names should be transferred to the Complainant.