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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alfred Kärcher GmbH & Co. KG v. Vadim Chervinchuk

Case No. D2009-0968

1. The Parties

Complainant is Alfred Kärcher GmbH & Co. KG of Winnenden, Germany, represented by Tov Beiten Burkhardt, Ukraine.

Respondent is Vadim Chervinchuk of Ukraine.

2. The Domain Name and Registrar

The disputed domain name <karcher-ua.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 17, 2009. On July 17, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On July 20, 2009, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2009. On July 30, 2009, the Center received an email communication from Respondent marked "Answer for Complaint" which is understood as the Response.

The Center appointed Clark W. Lackert as the sole panelist in this matter on August 31, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is the owner of the KÄRCHER trademark in over 41 countries, and owns, inter alia, WIPO International Registration Number 603913 registered on February 12, 1993 for goods and services in classes 1, 3, 5, 6, 7, 9, 11, 12, 20, 21, 22, 37, 42, and extended to various jurisdictions including Ukraine. Complainant is one of the world`s largest cleaning equipment manufacturers, selling its products in more than 190 countries across the globe. The history of the Kärcher Company dates back to the mid 20th century, when the company developed its first line of high pressure cleaners. In 2007, Complainant`s annual sales were 1.38 billion Euros, with 6,251,000 units of Kärcher products being sold during that period. The Complainant spends millions of United States dollars in advertising and promoting the KÄRCHER trademark throughout the world. Complainant operates its primary website at the domain addresses <kaercher.com> and <karcher.com>, while additionally promoting its services in numerous other countries, including several country specific websites. At present, Complainant has subsidiaries in 41 countries. In Ukraine, the Complainant is represented by Kärcher Ukraine, located in Kiev. Kärcher Ukraine has its registered website at "www.karcher.com.ua". The Complainant`s worldwide website has information concerning its many products, as well as information on where to buy Kärcher products, including retail outlets, online retailers, as well as from buykarcher.com, an independent authorized retailer. The Complainant`s Ukrainian website is similarly arranged, providing a Ukrainian language version of its worldwide site.

Respondent is a Ukrainian merchant who sells Kärcher products in Ukraine by means of an Internet store. On November 21, 2007, Respondent registered the disputed domain name <karcher-ua.com>.

On March 1, 2008, Complainant became aware of the registration of the disputed domain name and took steps to locate the Respondent. On March 13, 2008, Complainant contacted the Ukrainian State Registrar of Legal Entities and Entrepreneurs to locate Mr. Vadim Chervinchuk. On May 15, 2008, Complainant mailed a cease and desist letter to Respondent, advising Respondent that its registration of the disputed domain name and unauthorized sale of Kärcher products violated Complainant`s legal rights. The letter went on to demand that Respondent relinquish the disputed domain name. No reply from Respondent followed. On June 19, 2008, Complainant again sent the cease and desist letter by email to the email address indicated on the website at the dispute domain name as a contact for the Internet store. By its email reply on June 25, 2008, Respondent stated that it had deleted all KÄRCHER trademark logos from the website, admitted that he used the brand name to sell Complainant`s products, thus promoting KÄRCHER brand, and that its monthly sales exceeds USD 60,000. On June 25, Complainant replied, requesting Respondent discontinue any and all use of the trademark in the domain name, stating: "The authorized dealer of Kärcher may sell you Kärcher products, however, it cannot authorize you to use Kärcher trademark as part of the domain name since the dealer has no corresponding authority and powers." On June 26, 2008, Respondent declined to transfer the domain name. Respondent offered the domain name for sale "to compensate expenses of promoting the domain name". On June 27, 2008, an authorized representative of Complainant sent a reply, refusing to purchase the disputed domain name and insisting that the registration of domain name be cancelled or that the domain be transferred to Complainant. Complainant informed Respondent that it planned to enforce its rights through a WIPO domain name administrative proceeding or in court.

5. Parties` Contentions

A. Complainant

Although Respondent uses the disputed website to sell Kärcher products in Ukraine, Respondent is not owned or controlled by Alfred Kärcher GmbH & Co. KG or Kärcher Ukraine, is not an authorized agent or licensee of Complainant or any of its subsidiaries, and there is no contractual relationship between Complainant and Respondent. Additionally, Respondent has received no authorization to use or otherwise exploit the KÄRCHER trademark from Complainant. The name of a business entity does not appear on any portion of the site as it has been submitted to the Panel, while Complainant`s products are prominently featured.

Identical or Confusingly Similar

The KÄRCHER trademark has been registered in more than 41 countries in the world, including in Germany and Ukraine. The trademark has been used extensively and it is well known by consumers worldwide, and is the company name of Complainant. The mark has acquired and enjoys substantial goodwill and a valuable reputation. As prior panels have held, the fact that the domain name wholly incorporates a complainant`s registered mark is sufficient to establish identity or/and confusing similarity for purposes of paragraph 4(a)(i) of the Policy despite the addition of other words to such marks. (Oki Data Americas, Inc v. ASD, INC, WIPO Case No. D2001-0903; EAUTO, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096; Komatsu Ltd. and Komatsu America International Company v. RKWeb Ltd., WIPO Case No. D2000-0995). Here, the disputed domain name incorporates the whole of Complainant`s name and identical spelling. The use of Complainant`s mark and sale of its products further contribute to the confusing similarity of Respondent`s site. (Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137). The sole difference between Complainant`s trademark and the spelling of the domain names in question is the substitution of "ä" in the trademark registration by letter "a" in the registration of the domain name. As an umlaut cannot be used in domain names, the dots on the "ä" are overlooked, and the "ä" is replaced by "a", so that it reads "Karcher". This way of spelling the name is common and widely used. The domain name is nothing more than the international spelling of "Kärcher". The suffix does not detract from the overall impression of the dominant part of the name, namely the trademark being recognized as identifying the goods as those of Complainant. (Sony Kabushiki Kaisha v. Inja, Kil, INC, WIPO Case No. D2000-1409). Further, Respondent`s formation of the disputed domain name is identical in form to that used by Complainant`s domain name for its United States` affiliate, incorporating a "-" or hyphen, which separates the product name and country suffix designation. What is more, the suffix "ua" coincides with the country code top level domain name for Ukraine, as seen by and incorporated in Complainant`s Ukrainian domain name <karcher.com.ua>.

Rights or Legitimate Interests

Respondent`s use of the domain name does not meet the criteria for a bona fide offering of Complainant`s products. Respondent does not have a relationship, e.g. sales agent, with Complainant and the disputed site does not openly disclose Respondent`s lack of relations with Complainant (Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211). In fact, the disputed site fails at all to disclose the identity of Respondent in any manner, and offers no disclaimer to this effect. Despite the absence of any bona fide connection to Complainant, Respondent exploits the disputed domain name, and name of "Karcher" in a commercial manner for financial gain. The disputed domain name incorporates Complainant`s name in a manner that improperly suggests that it is the official site of Complainant, while using the disputed website to sell Alfred Kärcher GmbH & Co. KG`s products or Kärcher Ukraine (Oki Data Americas, Inc v. ASD, INC, WIPO Case No. D2001-0903). In this respect, Respondent is acting as an unauthorized seller of Kärcher products. The information contained on the website with the domain name does not explain the fact that Respondent is not owned or controlled by Alfred Kärcher GmbH & Co. KG or Kärcher Ukraine. There is no indication on the website that the page was not associated with Complainant, and instead was a production of Respondent. Respondent`s name does not appear on any portion of the site, while Complainant`s products are prominently featured. Moreover, Respondent is not commonly known by the domain name and Respondent has not acquired any trademark or service mark rights in these names. Respondent cannot be said to be commonly known by the domain name since there is no mention of the domain name or <karcher-ua.com> on the website or in other evidence. (Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137). Respondent simply identifies itself as an Internet store. Additionally, as mentioned supra, Respondent is not an authorized agent, licensee or retailer of Complainant and Complainant has not permitted Respondent to utilize its trademark. Finally, Respondent exploits Complainant`s trademark in an illegitimate manner for commercial gain. As prior panels have held, if, as a result of the content of the page, a visitor to a respondent`s site would be likely to believe that it was a complainant`s official site; such a confusing commercial use cannot be "legitimate" under the Policy. (Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211). Here, a visitor to Respondent`s site would be likely to believe that the disputed site belongs to official representative of Complainant in Ukraine, because the website is designed to create an impression of association with Complainant`s domain name of Kärcher Ukraine ("www.karcher.com.ua"). Respondent has made nominal substitutions when comparing the disputed domain name to Complainant`s address. Also, the disputed website prominently features and offers for sale Complainant`s products using Complainant`s distinctive brand colors and trade dress/get-up (yellow and black). In this regard, the disputed domain name bears an illegitimate relationship to the business and commercial interests of Complainant. Further, Respondent misleadingly diverts away potential customers from Complainant`s official sites to its website for commercial and financial gain, as evidenced by Respondent`s substantial monthly turnover from the sale of Complainant`s products. By the very nature of the disputed domain name, i.e. offering the products for direct sale, the site is clearly for the purpose of commercial gain, and there can be no conceivable noncommercial fair use of the disputed domain name by Respondent.

Registered and Used in Bad Faith

The disputed domain name has been registered in bad faith in accordance with the Policy, paragraph 4(b)(i) and (iv). Respondent`s registration and use of the domain name contravenes the Policy, paragraph 4(b)(i). An offer to sell a domain name in settlement discussions are evidence of bad faith. (CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243). Here, the offer for transfer of the domain name "to compensate for expenses of promoting the Domain Name" was made by Respondent by email on June 27, 2008 is an indication of bad faith in accordance with the Policy, Paragraph 4(b)(i). Despite Complainant`s cease and desist letters, Respondent continues to use the domain name, and further stated it will not transfer the website unless Complainant provided compensation in excess of out-of-pocket expenses for registration (Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066). In this regard, the Respondent has failed to respond to Complainant`s requests for transfer, and ultimately demonstrates a purpose of registration the site for the purpose and with the intent of transferring for valuable consideration. Respondent`s registration of the disputed domain name additionally contravenes the Policy, paragraph 4(b)(iv). By registering and using the domain name, Respondent intentionally attracts and diverts for commercial gain, Internet users to Respondent`s web site or other on-line location by creating a likelihood of confusion with Complainant`s mark as to the source, sponsorship, affiliation, or endorsement of Respondent`s web site or location of a product or service on Respondent`s web site. Respondent`s design of the website with the disputed domain name, and use to exclusively promote and sell Kärcher products, without acknowledging the Kärcher mark or providing any reference to Complainant or its affiliate in Ukraine, demonstrate Respondent`s intent to exploit Complainant`s name and mark for commercial gain. (Easy Heat, Inc. v. Shelter Products, WIPO Case No. D2001-0344). Further, Respondent intentionally attempts to create the likelihood of confusion with the website "www.karcher.com.ua" which is the domain name of Complainant`s official representative office in Ukraine. This similarity creates potential confusion in customers by attracting searches to the disputed domain name away from the Karcher Ukraine website. In this regard, Respondent`s registration of the domain name constitutes bad faith. Beyond the Policy points, panels have identified additional factors which demonstrate bad faith. A respondent`s registration is deemed to be in bad faith, where the respondent (i) has knowledge of complainant`s mark at the time it registered the domain name, and (ii) has used the entire mark without a plausible good faith use (Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066). The very use of the whole trademark KÄRCHER by Respondent in its domain name suggests bad faith. (Veuve Cliquot Ponsardin, Maison Fondeee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). Respondent knew of Complainant`s mark at the time of registration since Respondent created the site solely for the purpose of selling Complainant`s products. Further, the marked similarity between the disputed domain name and Complainant`s official site for its Ukrainian affiliate demonstrates Respondent`s intent to create a likelihood of confusion with Complainant`s Ukrainian site, thereby making obvious its knowledge of the latter site. In this regard, the incorporation of the Kärcher name by Respondent who has no connection with Complainant is opportunistic bad faith. Respondent`s use of the entire mark without plausible good faith use further evidences its bad faith. (Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066; Cellular One Group v. Paul Brian, WIPO Case No. D2000-0028). Here, Respondent has utilized Complainant`s name in its entirety, namely Kärcher. There is no explanation for Respondent`s use of Complainant`s name and mark other than to capitalize on Complainant`s good name and reputation. (Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066). Respondent does not have a license or other authority to use Complainant`s trade name, and in this regard, Respondent`s is making a non-legitimate commercial and unfair use of the domain name, with the deliberate and misleading intent for commercial gain to divert consumers by creating a false impression that the disputed domain is an authorized dealer of Alfred Kärcher GmbH & Co. KG or create the likelihood of confusion with Karcher Ukraine`s official website ("www.karcher.com.ua"). Respondent, additionally, has come forward with no facts to contradict any assertion of bad faith. (Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066). The fact that Respondent offered to transfer the domain name for a profit in its correspondence to Complainant on June 25, 2008 confirms Respondent`s bad faith registration of the disputed domain name. Respondent has offered no other evidence for why its use and registration of the domain name could be found to be in a plausible good faith use.

B. Respondent

Respondent`s Response in this proceeding is an email dated July 30, 2009 with no other evidence, although a contract with an entity called Yuventa-K was produced later in reply to a Panel Order this Panel issued. Respondent entered into a contract with an alleged authorized Kärcher dealer in Ukraine, Yuventa-K, which allegedly authorized Respondent to use the KÄRCHER trademark in Respondent activities and advertising. Also, Respondent claims that its use of this domain name is not a violation of Ukrainian law. Respondent claims that he and his company collaborated with an authorized Kärcher dealer in Ukraine and made agreements concerning the content of his Internet store at <karcher-ua.com>. According to contract "№ 10/02.09 date 05.02.2009" paragraph 4.1.5 with Yuventa-K, Respondent claims that he can use Complainant`s logo and trade mark in his activity and advertising. Respondent also points out that there are several other websites aimed at the Ukrainian market which also use the word "karcher" in their domain names such as "http://karcher.at.ua/", "http://karcher-shop.org.ua/", "http://www.mir-karcher.com.ua/", "http://blesk-karcher.com.ua/", "http://www.karcher-te.com/", "http://www.karcher-yuventa.com/", "http://www.chisto-karcher.com/". Finally, Respondent states that his company is legitimate and honest and that he wants to cooperate with Complainant, since he has invested resources into the project and wants to save it.

6. Discussion and Findings

Complainant must prove each of the following three elements set forth in the Policy, paragraph 4(a) (i), the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.

Complainant has asserted rights in the trademark KГ„RCHER, and that the domain name in issue is confusingly similar to it. The Panel finds that the trademark and the domain name are confusingly similar, and that Complainant has asserted and proven trademark rights in such term. Accordingly, the Panel finds that the Complainant has the requisite rights to object pursuant to the Policy, paragraph 4(a)(i).

There is no proof in the record of rights or legitimate interests of Respondent pursuant to Policy, paragraph 4(c). Respondent has made a claim that it was authorized to use Complainant`s trademark in its domain name but the produced contract is unclear as to what is authorized by a party which in any event is not the Complainant. Moreover, Complainant in its June 26, 2008 email to Respondent disputes the authorization, and further states that in any event, the Ukraine distributor does not have the power or authority to authorize such use even if there were a contract. Accordingly, the Panel finds that Complainant has met its burden of proof concerning the Policy, paragraph 4(a)(ii).

The last element in the proceeding is bad faith pursuant to Policy, paragraph 4(a)(iii), examples of which are provided in subsection (b) of paragraph 4 of the Policy. Policy 4(b)(i) states "circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name" shall be evidence of the registration and use of a domain name in bad faith. In this proceeding, the record indicates that Respondent offered to sell the domain name to Complaint for profit (see Complaint Annex 7, email dated June 26, 2008) since he "invested a considerable amount of money in the promotion of the said website".

Accordingly, the Panel finds that Respondent registered and is using the domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <karcher-ua.com> be transferred to the Complainant.

Clark W. Lackert
Sole Panelist

Dated: September 18, 2009