Decision for dispute CAC-UDRP-108139

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

EU Trademark Registration No. 010221505 SILVERCREST registered from 26 August 2011 for various goods in classes 7, 8, 9, 10 and 11.

The Complainant operates a supermarket chain. Its headquarters are in Germany and it has over 12,600 stores located primarily in Europe and the United States of America.

As part of its business, the Complainant offers an inhouse range of small kitchen appliances, such as kettles, air fryers and the like, in its store under its trademark "Silvercrest".  It holds trademark registrations in numerous jurisdictions for "Silvercrest" in relation to such goods, including the above-mentioned European Union registration.

The disputed domain name was registered on 30 July 2024. It resolves to a webpage that prominently displays the SILVERCREST trademark in the header, contains an image of a small kitchen appliance and contains text in German. The text promotes kitchen machines and refers to "SILVERCREST" having satisfied "millions of households in Germany and across Europe". The webpage also contains pay-per-click advertisements.

The Respondent provides its name as Tao Jiang and its address as a location in China.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name 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 name is 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 has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

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

Paragraph (4)(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name registered by the Respondent should be transferred to the Complainant:

1) the disputed domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3) the disputed domain name has been registered and is being used in bad faith.

The Panel is satisfied that the Complainant has satisfied all three elements for the principal reasons set out below.

RIGHTS IN AN IDENTICAL OR CONFUSINGLY SIMILAR TRADEMARK

As mentioned above the Complainant asserts it has a European Union trademark registration consisting of the word SILVERCREST. This registration predates the registration date of the disputed domain name by over a decade.

To satisfy paragraph 4(a)(i) of the Policy it is enough that the panel is satisfied that the Complainant has registered rights in a trademark that predates the registration of the disputed domain name in a single jurisdiction (even if that single jurisdiction is not one in which the Respondent resides or operates) (Koninklijke KPN N.V. v. Telepathy, Inc D2001-0217 (WIPO May 7, 2001); see also WIPO Case Nos. D2012-0141 and D2011-1436). The Complainant has clearly satisfied such in relation to the trademark SILVERCREST.

The next question is whether the disputed domain name is confusingly similar to the SILVERCREST trademark.

The Panel disregards the gTLD suffix ".com" for the purpose of this comparison. 

Turning to the remaining elements of the disputed domain name. The disputed domain name merely adds a "de" after "silvercrest". The Complainant has asserted that "de" would be understood by internet users as a geographical reference to Germany. The Panel accepts that submission. However, even if an internet user was unfamiliar with this reference to Germany the mere addition of two letters inconspicuously from the middle section of the disputed domain name, just before the gTLD, does nothing to prevent confusion. Internet users perusing the disputed domain name quickly are likely to mistakenly see it as merely a reference to SILVERCREST.

The disputed domain name is confusingly similar to the SILVERCREST trademark.

NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests (Croatia Airlines d. d. v. Modern Empire Internet Ltd. WIPO Case No. D2003-0455). Once such a prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a) (ii) of the Policy.

The Respondent is not identified in the Whois database as having a name related to the disputed domain name. Past panels have held that a Respondent was not commonly known by a disputed domain name if the Whois information was not similar to the disputed domain name. Thus, the Respondent is not known as the disputed domain name. Forum Case No. FA 1781783, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group <bobsfromsketchers.com> (“Here, the WHOIS information of record identifies Respondent as “Chad Moston / Elite Media Group.” The Panel therefore finds under Policy paragraph 4(c) (ii) that Respondent is not commonly known by the disputed domain name under Policy paragraph 4(c) (ii).”).

There are no other facts which would indicate the Respondent has any rights or legitimate interests in the disputed domain name. Further, the matters stated below under the heading "BAD FAITH" indicate that the Respondent's interests in the domain name are not 'legitimate' at all.

In such circumstances, the Complainant has made out its prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has no rights or interests in the disputed domain name.

BAD FAITH

As noted above, the Respondent has directed the disputed domain name to a website that:

• Prominently displays the Complainant's SILVERCREST trademark;
• Contains German text in which the Respondent purports to be a kitchenware brand known as SILVERCREST that is well known in German and Europe; and 
• Contains pay-per-click advertising.

It is clear from these facts and the strong reputation and presence of the Complainant in Germany and Europe that the Respondent has registered the domain name to impersonate the Complainant. It is further clear that by listing pay-per-click advertisements on the said website the Respondent is fraudulently seeking to opportunistically profit from confusing similarity.

Therefore, the disputed domain name has been registered and is being used in bad faith.