WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ThyssenKrupp USA, Inc. v. Richard Giardini
Case No. D2001-1425
1. The Parties
1.1 The Complainant is ThyssenKrupp USA, Inc., a corporation organized under the laws of the State of Delaware with its principal place of business located in Troy, Michigan, USA.
1.2 The Respondent is Richard Giardini, an individual whose contact information provides an address located in Athens, Georgia, USA, according to the Network Solutions, Inc. Whois database.
2. The Domain Name and Registrar
2.1 The disputed domain name is < kruppthyssen.com >.
2.2 The registrar of the disputed domain name is Network Solutions Inc. with a business address in Herndon, Virginia, USA.
3. Procedural History
3.1 Complainant initiated the proceeding by filing a complaint, received by the WIPO Arbitration and Mediation Center ("WIPO") on December 5, 2001.
3.2 On December 17, 2001, WIPO advised the Complainant of deficiencies in its complaint relating to mutual jurisdiction under Network Solutions' 4.0 Service Agreement and requested Complainant to submit an amended complaint.
3.3 On December 18, 2001, Complainant submitted amendments to its complaint pursuant to WIPO's request.
3.4 On December 31, 2001, all formal requirements for the establishment of the complaint were checked by WIPO and found to be in compliance with the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel accepts the WIPO checklist as evidence of proper compliance with the Policy, Rules, and Supplemental Rules.
3.5 December 31, 2001, WIPO transmitted notification of the complaint and commencement of the proceedings to Respondent.
3.6 January 22, 2002, WIPO transmitted notification to Respondent of its default in responding to the complaint.
3.7 On January 25, 2002, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On January 28, 2002, the undersigned transmitted by facsimile the executed Statement and Declaration to WIPO.
3.8 On January 28, 2002, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances it would be required to forward its decision to WIPO by February 12, 2002.
3.9 The Panel has not received any further requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
4.1 Complainant ThyssenKrupp USA, Inc., states that they are a wholly owned subsidiary of ThyssenKrupp AG. On September 27, 1999, Krupp USA, Inc. changed its name to ThyssenKrupp USA, Inc. and the entity currently known as ThyssenKrupp USA, Inc. was formed through the merger of Thyssen Holding Corporation with and into ThyssenKrupp USA, Inc. on September 30, 2001.
4.2 As legal successor to the former Thyssen AG and the former Fried. Krupp AG Hoesch Krupp, ThyssenKrupp AG is the owner of the trademarks THYSSEN, KRUPP and THYSSENKRUPP (the "Trademarks"), which are registered in over 40 countries throughout the world for a variety of goods and services. The Trademarks are registered in over 90 countries internationally. The Trademarks, through ThyssenKrupp AGís predecessors in interest and its subsidiaries, have been in use since as early as 1909 (KRUPP), 1966 (THYSSEN) and 1998 (THYSSENKRUPP). As examples of ThyssenKrupp AGís worldwide registrations for the Trademarks, Complainant attached copies of certificates of registrations in Germany, the European Community and the United States as Annex C of the Complaint.
4.3 ThyssenKrupp USA, Inc. states that it is the exclusive licensee of the Trademarks in the United States pursuant to a Trademark License Agreement, attached to Complainantís Complaint, Annex D.
4.4 The trademarks and services marks in the United States that are licensed exclusively to TyssenKrupp USA, Inc. were included in Exhibit A of the Trademark License Agreement by the Complainant, and they are as follow:
U.S. Serial No.: 75/843161
U.S. Serial No.: 75/695874
U.S. Serial No.: 75/688656
U.S. Serial No.: 75/550,883
U.S. Registration No.: 2,046,865
(f) THYSSEN (stylized)
U.S. Registration No.: 1,114,798
Issued: March 13, 1979
U.S. Registration No.: 1,052,256
Issued: November 9, 1976
U.S. Registration No.: 907,794
Issued: February 16, 1971
4.5 Complainantís states that its parent company, ThyssenKrupp AG has also registered marks for THYSSEN, KRUPP and THYSSENKRUPP in a variety of countries, including: (a) European Union; CTM Registration No.: 000964353 (THYSSENKRUPP); (b) Germany; Registration No.: 828667 (THYSSEN); and (c) Germany; Registration No.: 257167.
4.6 The Network Solutions' WHOIS database indicates that Respondent registered the domain name <kruppthyssen.com> on October 6, 1999.
5. Partiesí Contentions
"The Complainant, ThyssenKrupp USA, Inc., has valid and subsisting rights in the THYSSEN, KRUPP, and THYSSENKRUPP marks.
ThyssenKrupp AG, a corporation organized and existing under the laws of the Federal Republic of Germany, with its main offices located in Düsseldorf, Germany, is the corporate successor to Fried.Krupp AG Hoesch-Krupp ("Krupp") and Thyssen AG ("Thyssen") as a result of the merger of the two companies, effective March 17, 1999. As one of the largest German industrial undertakings, with more than 193,000 employees worldwide, ThyssenKrupp AG is the parent of more than 1,000 multinational diversified manufacturing and service companies (the "ThyssenKrupp Group of Companies"). Operating on a global basis, the steel segment of the ThyssenKrupp Group of Companies is recognized world wide as a market leader in stainless steel and is one of the worldís ten largest automotive suppliers."
"The Complainant, ThyssenKrupp USA, Inc., is a wholly owned subsidiary of ThyssenKrupp AG. On September 27, 1999, Krupp USA, Inc. changed its name to ThyssenKrupp USA, Inc. and the entity currently known as ThyssenKrupp USA, Inc. was formed through the merger of Thyssen Holding Corporation with and into ThyssenKrupp USA, Inc. on September 30, 2001. ThyssenKrupp USA, Inc. owns, directly or indirectly, 104 companies throughout the world with a workforce of approximately 27,000 employees. The subsidiaries of ThyssenKrupp USA, Inc. are engaged in commercial trade or services including, but not limited to, the manufacture and supply of automotive and industrial components and equipment, steel trading, delivery and logistics, the erection of scaffolding and the manufacture and servicing of elevators."
"As legal successor to the former Thyssen AG and the former Fried. Krupp AG Hoesch Krupp, ThyssenKrupp AG is the owner of the trademarks THYSSEN, KRUPP and THYSSENKRUPP (the "Trademarks"), which are registered in over 40 countries throughout the world for a variety of goods and services including, but not limited to, steel, automotive, engineering, specialized machinery, systems and components, materials processing and distribution, complete industrial and facility services and sophisticated Internet technology capabilities. The Trademarks are registered in over 90 countries internationally. The Trademarks, through ThyssenKrupp AGís predecessors in interest and its subsidiaries, have been in use since as early as 1909 (KRUPP), 1966 (THYSSEN) and 1998 (THYSSENKRUPP)."
"ThyssenKrupp USA, Inc. is the exclusive licensee of the Trademarks in the United States pursuant to a Trademark License Agreement, attached hereto as Annex D."
As examples of ThyssenKrupp AGís worldwide registrations for the Trademarks, Complainant attaches copies of certificates of registrations in Germany, the European Community and the United States as Annex C of the Complaint.
ThyssenKrupp USA, Inc. states that it is the exclusive licensee of the Trademarks in the United States pursuant to a Trademark License Agreement, attached to the Complaint as Annex D.
Complainant also states:
"ThyssenKrupp AG, together with its predecessors and subsidiaries, including Complainant, have spent a substantial sum of money marketing the diverse products and services offered under the Trademarks. As a result of this long use, as well as substantial promotional efforts and expenditures, the Trademarks have become symbols of internationally acknowledged excellence and substantial good will belonging exclusively to ThyssenKrupp AG and its worldwide subsidiaries."
"The domain name registered by Respondent is identical or confusingly similar to the trademarks owned by ThyssenKrupp AG and licensed by Complainant."
"On October 6, 1999, Respondent registered the domain name "kruppthyssen.com" with Network Solutions, Inc. Respondent renewed the registration on September 22, 2001. (See Annex A of Complaint.).
The "kruppthyssen.com" domain name of Respondent is comprised of words that are identical to the Trademarks in which the Complainant has rights.
Although the order of the words in the domain name "kruppthyssen.com" registered by Respondent is not identical to the Trademarks, each of the words constitute well-known marks in which the Complainant has rights."
"The Complainant possesses rights to the individual marks which comprise the Respondentís domain name. Complainant also has trademark rights to the combination of words "kruppthyssen", albeit in inverse order. This compels a finding that the Respondentís domain name is confusingly similar to the Trademarks in which Complainant has rights."
"The addition of the generic top-level domain (gTLD) name "com" is without legal significance when determining the likelihood of confusion between domain names and trademarks.
"Respondent has no rights or legitimate interests to the domain name that is the subject of this Amended Complaint."
"Respondent owns no trademark registration for either KRUPP, THYSSEN, or KRUPPTHYSSEN. Neither the Complainant nor ThyssenKrupp AG has agreed or consented to Respondentís use or registration of a domain name comprising their unique and well-known Trademarks."
"To the contrary, the Complainant has written letters to the Respondent on two occasions placing the Respondent on formal notice that the domain name "kruppthyssen.com" infringes and/or dilutes the Trademarks and demanding that Respondent immediately cease and desist from using the domain name and assign the name to Complainant. Copies of these communications dated July 30, 2001 and August 20, 2001, together with a Certified Mail Return Receipt executed by the Respondent on August 27, 2001 confirming delivery, are appended hereto as Annex E. Respondent never responded to these letters."
"The domain name "kruppthyssen.com" previously resolved to a web site which offered the domain name for sale by stating "Would you like to own this Website?". Currently, the domain name resolves to a web site indicating only that it is "Under Construction". " Complainant attached copies of the web sites described herein as Annex F.
"Since Respondent registered the domain name, Respondent has made no legitimate or commercial use of the name. Simple stocking of the domain name by the Respondent does not create any right or legitimate interest in the domain name."
"The domain name was registered and is being used in bad faith.
It cannot be credibly argued that Respondent selected the domain name "kruppthyssen" independently. The two companies that merged to create ThyssenKrupp AG in March 1999 were each founded by family members more than a century ago. The company that evolved into Fried.Krupp AG Hoesch Krupp was founded by Friedrich Krupp in 1811 and the company that became Thyssen AG was founded by August Thyssen in 1891. In addition, the trademark KRUPP has been registered in the United States since 1976 and the trademark THYSSEN was registered in the United States in 1971. By virtue of these circumstances, together with the wide spread use and fame of the Trademarks throughout the world, Respondent could not have coined this name independently.
Respondent has made a general offer to sell the "kruppthyssen" domain name. Respondentís domain name previously resolved to a web page which read: "Would you like to own this Website?" See Annex F."
"Complainant has twice attempted to correspond with Respondent and demand that Respondent cease and desist from using the "kruppthyssen.com" domain name and immediately assign the name to Complainant. (See Annex E.) Respondent never responded to these letters. To the contrary, Respondent took affirmative steps and extended the domain name registration in September 2001, which was after Complainant informed Respondent that the domain name registration violates Complainantís rights in the Trademarks."
"Respondent has never used the "kruppthyssen" domain name in connection with the bona fide offering of goods or services nor has Respondent made a non-commercial or fair use of the Trademarks which comprise Respondentís domain name."
"Currently, the domain name resolves to a web site that indicates it is "Under Construction". (See Annex F.)"
"Based on Respondentís aforementioned conduct, ThyssenKrupp USA, Inc. submits that Respondentís bad faith is well established."
Respondent did not file a response to the complaint.
6. Discussion and Findings
6.1 The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
6.2 It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
6.3 WIPO forwarded notification of the complaint to the Respondent and his separate technical contact via courier, facsimile (technical contact only), and email. Currently the <kruppthyssen.com> domain name resolves to a default screen operated by the technical contact.
6.4 Based on the methods employed to provide the Respondent with notice of the complaint and the subsequent use of a default screen by the Respondent's technical contact, who was also notified of the complaint, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. The Panel also finds that the failure of the Respondent to furnish a reply is not due to any omission by WIPO.
6.5 Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondentís domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
6.6 Complainant asserts that the domain name <kruppthyssen.com> is identical and confusingly similar to Complainant's pending THYSSENKRUPPS marks and the combined registered trademarks, KRUPPS and THYSSEN exclusively licensed by Complainant.
6.7 As the Respondent has failed to submit a response to the complaint, the Panel accepts as true all of the allegations of the complaint. (See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, February 29, 2000).
6.8 The Panel finds the <kruppthyssen.com> domain name is confusingly similar to the THYSSENKRUPPS applications and the combined registered trademarks, KRUPPS and THYSSEN exclusively licensed by Complainant, and that the Complainant has established it has rights in the name, "THYSSENKRUPPS," pursuant to paragraph 4(a)(i) of the Policy.
6.9 The reversal of "KRUPPS" and "THYSSEN" in Respondents' domain name is of no consequence. As Complainant noted, in Audi AG v. Hans Wolf, WIPO Case No. D2001-0148, the domain name <audi-lamborghini.com> was formed from the combination of the Complainantís mark and the mark Lamborghini of the Complainantís subsidiary. That Administrative Panel reasoned that even if an Internet user was unaware that Lamborghini was owned by Audi, the user would understand the addition of Lamborghini as referring to some relationship or association between the two companies. The Administrative Panel found that the domain name was confusingly similar with the trademark of Audi.
6.10 Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
6.11 The length of time the mark has been used, the amount of advertising conducted and the popularity of Complainant's products sold under the registered THYSSEN, KRUPPS and THYSSENKRUPPS marks leads to the conclusion that Respondent was or certainly should have been aware of the mark prior to registering the domain name. (See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137, April 18, 2000).
6.12 There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name <kruppthyssen.com>.
6.13 The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name <kruppthyssen.com>, pursuant to paragraph 4(a)(ii) of the Policy.
6.14 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) states:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
6.15 The Panel has already accepted Complainant's assertion that Respondent knew or should have known of the Complainant's trademarks at the time it registered the domain name <kruppthyssen.com>.
6.16 In the absence of contrary evidence, awareness of the Complainant's mark coupled with an offer made to the general public to sell the domain name is evidence of registration and use in bad faith. (CCA Industries, Inc. v. Bobby R. Dailey, WIPO Case No. D2000-0148, April 26, 2000; World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256, June 7, 2000).
6.17 The Panel finds that the Respondent purchased <kruppthyssen.com>, to intentionally sell its web site for commercial gain and create a likelihood of confusion with the Complainant's mark. Paragraph 4(b)(i) of the Policy, clearly indicates that registering a "domain name primarily for purposes of sellingÖor otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service markÖfor valuable considerationÖ" "shall be evidence of the registration and use of a domain name in bad faith."
6.18 In EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036, the Administrative Panel determined that posting the notice "DOMAIN FOR SALE" without a fixed asking price constituted satisfactory evidence, when combined with Respondentís lack of legitimate rights or interests to the domain name, that the Respondentís primary purpose in registering the domain name was to sell it in contravention of the Policy. Here Respondentís conduct likewise satisfies the Policy, when viewed in conjunction with his lack of legitimate rights or interest in "kruppthyssen", as Respondentís primary purpose in registering the domain name appears to be to offer to sell it to Complainant or ThyssenKrupp AG. Therefore, the Panel finds the Complainant has established that the Respondent registered and used the domain name <kruppthyssen.com> in bad faith, pursuant to paragraph 4(b)(iv) of the Policy.
As the Complainant, ThyssenKrupp USA, Inc., has established that the Respondent, Richard Giardini, has engaged in abusive registration of the domain name <kruppthyssen.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <kruppthyssen.com> be transferred to the Complainant.
R. Eric Gaum
Dated: February 12, 2002