{ "case_number": "CAC-UDRP-101612", "time_of_filling": "2017-09-15 10:54:34", "domain_names": [ "steiffteddybears.xyz " ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "Margarete Steiff GmbH " ], "complainant_representative": "SKW Schwarz ", "respondent": [ "Code Zone Inc. " ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nThe Complainant contents that the the disputed domain registration infringes the Complainant’s trademarks and right to the company name and presents the following argumentation:\r\n\r\nThe disputed domain name is confusingly similar to the Complainant’s trademarks and company name since it contains the word ‘Steiff’. The component ‘teddybears.xyz’ can be neglected as it is merely a descriptive term for the Complainant’s most famous product. The distinctive character of the domain name is thus coined by the word ‘Steiff’.\r\n\r\nI.\tLack of Rights or legitimate Interests\r\n\r\nNothing indicates that the Respondent has any rights or legitimate interests in respect of the disputed domain name. The Respondent has neither been authorized by the Complainant to register the disputed domain name, nor has the Respondent acquired a legitimate right to use Steiff – trademarks by any preceding or current business activity. The website uploaded under the domain name steiffteddybears.xyz is merely a collection of links to individual offers on Ebay and random content relating to teddy bears. The Respondent undoubtedly seeks to make financial gains from these links. The display of such content does not constitute a legitimate use. The sole purpose of the disputed domain name registration is to create a danger of confusion in order to commercially exploit the reputation of the name and trademark ‘Steiff’. Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, 2017, section 2.9; WIPO Case: Lardi Ltd v. Belize Domain WHOIS Service Lt in Case No. D2010-1437). Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name (Oki-data test – see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, 2017, section 2.8). However, the Respondent is not rendering any of such services as it merely shows a collection of links to Ebay. Even if the Oki-Data criteria were applied, the Respondent does not meet the criteria. \r\n\r\n(1)\tThe Respondent must actually be offering the goods or services at issue.\r\nThe Respondent does not sell teddy bears but provides a list of links. Panels have found that PPC websites do not normally meet the Oki Data requirements as they do not themselves directly offer the goods or services at issue (Johnson & Johnson v. Ebubekir Ozdogan, WIPO Case No. D2015-1031, and ; PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162; Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431, ). \r\n\r\n(2)\tThe Respondent must use the site to sell only the trademarked goods.\r\nToys of different origin can be found on the website, for example: \r\n•\tANTIQUE GERMAN TEDDY BEAR 1910s ART BING BEAR CHARACTER BEAR 15.8\r\n•\tANTIQUE BING TEDDY BEAR 1910s HUGE 31.5 HUNCHBACK CHARACTER BEAR VERY RARE\r\n•\tANTIQUE TEDDY BEAR 1920s MOHAIR FUR & HUNCHBACK RARE WEIERSMÜLLER\r\n•\tANTIQUE TEDDY BEAR 1910s HUNCHBACK CHARACTER TEDDY BEAR SAILOR\r\n•\tANTIQUE BING TEDDY BEAR 1910-1920s HUNCHBACK CHARACTER BEAR VERY RARE NECKBAND\r\n\r\n(3)\tThe site itself must accurately disclose the respondent’s relationship with the trademark owner.\r\nNo such information is disclosed on the website. \r\n\r\n\r\nII.\tBad Faith \r\n\r\nBy using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the Complainant, UDRP paragraph 4(b) provides that this scenario constitutes evidence of a respondent’s bad faith. The Respondent seeks to attract the consumers’ attention to its website using the famous and most distinctive trade mark and company name of ‘Steiff’. The trade mark and company name are unfairly exploited for the Respondent’s commercial interest. This is underlined by the fact, that not only Steiff products but also other plush toys are shown on the website. \r\n\r\nThe warning letter of the Complainant pointing out the legal situation and setting a reasonable deadline for the transfer of the domain remained unanswered. The Respondent therefore not only refused to comply with the Complainants demands, but did not bring forward any legal or factual arguments to his defense. This indicates that the registration was conducted in bad faith (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, 2017, section 3.2.1).\r\n\r\nA copy of the response including any annexes has been sent or transmitted to the Complainant, in accordance with Paragraph 2(b) of the Rules. ", "other_legal_proceedings": "The panel is not aware of any other legal proceedings related to the disputed domain name.", "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.", "rights": "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).", "no_rights_or_legitimate_interests": "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).", "bad_faith": "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).", "procedural_factors": "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.", "decision": "Accepted", "panelists": [ "José Ignacio San Martín" ], "date_of_panel_decision": "2017-10-30 00:00:00", "informal_english_translation": "The Complainant is the owner of the following trademarks:\r\n\r\n-\tEU Trade Mark registration No 000007443 ‘Steiff’; Nice classes 18, 25, 28, registered 3 February 1998\r\n-\tInternational Registration No 947107 ‘Steiff’ (Japan, Republic of Korea, Norway, USA; Switzerland, China, Russian Federation, Ukraine); Nice classes 3, 9, 12, 20, 21, 24, 26, 27, 28; registered 13 September 2007 \r\n-\tInternational Registration No 1240894 ‘Steiff’ (EU, Japan; China, Switzerland); Nice class 35; registered 13 January 2015 \r\n-\tInternational Registration No 933947 ‘Steiff KNOPF IM OHR’ (Japan, Norway, USA; Switzerland; China; Russian Federation); Nice classes 09, 12, 20, 21, 24, 26, 27, 28; registered 10 May 2007 \r\n-\tCanadian Trademark registration No 1333244-00 ‘Steiff’; Nice classes 18, 22, 24, 28; registered 16 February 2010 \r\n-\tGerman Trademark registration No 724750 ’Steiff Teddybär’; Nice Class 28; registered 24 May 1958", "decision_domains": { "STEIFFTEDDYBEARS.XYZ": "TRANSFERRED" }, "panelist": null, "panellists_text": null }