The Complainant is Dekra e.V, Stuttgart, Germany, represented by Uexküll & Stolberg Rechtsanwälte, Hamburg, Germany (“Complainant”).
The Respondent is Pietro Marino, Catania, Italy, represented by Avv. La Piana, Catania, Italy (“Respondent”).
Complainant and Respondent will be hereinafter also defined together as the “Parties”.
The disputed domain names are <dekramultiservice.com> and <dekrasrl.com> (together “Domain Names”).
The registrar of the disputed Domain Names is Register.IT SPA, Bergamo, Italy.
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on November 30, 2009. On the same day, the Center transmitted by email to Register.IT SPA a request for registrar verification in connection with the disputed Domain Names. On December 1, 2010, Register.IT SPA transmitted by email to the Center its verification response confirming that it had received a copy of the Complaint, that the Domain Names are registered with it, that the Respondent is currently listed as the registrant of the Domain Names, that the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”) applies to the Domain Names, and providing the current status of the Domain Names and the contact details available under the WhoIs database.
On the Complainant's request, the administrative proceeding was suspended by the Center from December 8, 2009 to March 22, 2010. The administrative proceeding was re-instituted on March 23, 2010 further to the Complainant's request.
On March 25, 2010, the Center transmitted by email documents in both the English and Italian languages concerning the language of the proceeding to the Parties, giving the Complainant a deadline of March 28, 2010 to submit either a translated version of the Complaint in Italian or a request for English to be the language of the proceeding, or alternatively to provide satisfactory evidence of an agreement between the Parties regarding the language of the proceeding. In addition, the Center gave the Respondent a deadline of March 30, 2010 to file his arguments in this regard. Within the time limits the Parties filed their arguments concerning the language of the proceeding.
On March 30, 2010 the Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) and notified the Parties that the administrative proceeding had been commenced, that the Complaint had been filed in English, that a Response written in either English or Italian would be accepted, and reminding the Parties that the ultimate determination as to the proper language of the proceeding would remain at the discretion of the Panel once appointed. In addition, the Center indicated that April 19, 2010 was the deadline to submit a Response to the Complaint according to the requirements described in paragraph 5 of the Rules. The present Panel considers that the Complaint was properly notified to the Respondent and that all the formal requirements of the Policy, the Rules and Supplemental Rules have been complied with.
The Response in Italian was filed with the Center on April 15, 2010. In addition, the Respondent sent a letter to the Center on March 5, 2010, taking position on the facts under consideration.
The Center appointed Michael A.R. Bernasconi as the Sole Panelist in this matter on April 27, 2010. 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.
The Complainant in this proceeding is Dekra e.V. Its subsidiary, i.e. Dekra AG, has been an international service provider of expert services in the automotive sector since 1925. The Complainant's business units, entitled Dekra Automotive, Dekra International, Dekra Industrial and Dekra Personnel, provide services in the fields of vehicle inspections, expert appraisals, international claims management, consulting, industrial testing, product testing, certification, environmental protection, qualification, temporary work as well as out- and new placement. The Complainant employs 20,000 employees worldwide and maintains 166 subsidiaries and associated companies.
The Complainant is inter alia owner of the following trademarks:
a) German trademark 307 54 168 DEKRA with a priority date of August 17, 2007;
b) German trademark 301 46 145 DEKRA with a priority date of July 31, 2001;
c) German trademark 301 46 146 DEKRA (fig.) with a priority date of July 31, 2001;
d) German trademark 103 55 12 DEKRA with a priority date of December 29, 1981;
e) CTM 2386597 DEKRA with a priority date of September 25, 2001;
f) CTM 7079148 DEKRA Certification (fig.) with a priority date of July 21, 2008;
g) International Registration 782309 DEKRA registered on January 31, 2002;
h) International Registration 965629 DEKRA registered on March 28, 2008;
i) International Registration 617352 DEKRA (fig.) registered on March 19, 1994;
j) International Registration 517098 DEKRA (fig.) registered on September 29, 1987.
These trademarks are inter alia registered for engineering services; damage management for insurances; auditing, examination and certification of management systems, personnel, medical devices and foodstuffs; human resource development as well as surveillance inspection and technical supervision of equipment.
The Respondent is Pietro Marino. He is the registrant of and the administrative contact for the Domain Names. As mentioned above, this information was confirmed by Register.IT Spa by email on December 1, 2009.
The Complainant alleged that:
- The Domain Names <dekrasrl.com> and <dekramultiservice.com> are identical or confusingly similar to the trademarks and/or service marks in which the Complainant has rights, as they contain the distinctive component “Dekra”. The addition of the words “srl” and “multiservice” do not eliminate the similarity as they are purely descriptive.
- All the marks have been and are being intensively used by the Complainant and its subsidiaries. Therefore, they enjoy a very high level of recognition in Germany, Europe, and worldwide.
- The Respondent has no rights or legitimate interests in respect of the Domain Names. There is no evidence of the Respondent's use of or preparations to use the Domain Names or the name “Dekra” in connection with a bona fide offering of goods or services.
- The use of “Dekra” as a business designation is circumscribed by the prior trademark rights of the Complainant who has been using it in connection with specific goods and services. The relevant public will associate the challenged Domain Names with the Complainant rather than with the Respondent.
- The use of the challenged Domain Names in the past does not constitute a bona fide offering of goods or services as the use constitutes an infringement of the Complainant's trademarks and business designations. In particular:
- In August 2009, the homepage located at “www.dekrasrl.com” offered services with regard to the maintenance and repair of vehicles under the term “Dekra”, services which are highly similar to the services which the DEKRA trademarks of the Complainant are registered for. Further, the “Dekra” sign used by the Respondent on the website was green as is the Complainant's “Dekra” logo.
- In November 2009, the homepages at “www.dekrasrl.com” and “www.dekramultivervice.com” offered inter alia services with regard to building maintenance. These services are highly similar to the “engineering services” of the Complainant's trademarks.
- The Domain Names have been registered and used in bad faith by the Respondent. At the time of the registration the DEKRA mark was well known in Italy, in Europe and worldwide. By using the Domain Names the Respondent intentionally attempts to attract for commercial gain Internet users to his web site by creating a likelihood of confusion with the well-known Complainant's marks. Internet users are likely to mistakenly believe that Respondent's activities are offered, authorized, licensed or sponsored by the Complainant. This constitutes bad faith.
The Complainant has requested that this Panel issue a decision ordering that the disputed Domain Names be transferred to it.
The Respondent alleged that:
- The only legislation which applies to the case under consideration is the Italian law.
- The Complainant's trademarks are not protected to the point that the use of the Domain Names by the Respondent can be refused.
- The term “Dekra” is used by five companies registered in the Italian Register of Commerce. It is true that all these companies are affiliated with the Complainant. However, the fact that this term is used by so many companies diminishes the degree of originality of the trademarks and, therefore, their protection.
- There is no identity between the activities of the Complainant and the activities of the Respondent. Therefore, there is no risk of confusion.
- All activities of the Complainant are related to vehicles. It is contested that the Complainant is also active in the construction business. In any event, this is not its principal activity. The Complainant identifies over all with its activity in the domain of vehicles. This is also shown by the names of the different sectors: Dekra Automotive Service, Dekra Certification and Dekra Revisions Italy, as well as by the images on the Complainant's website.
- Concerning his own activities, the Respondent affirms in the letter dated March 5, 2010 that the only activities exercised by the Respondent are in the construction business, in particular in the construction and restoration of buildings. However, in the Response, he affirms that even though the provision of services relating to the construction and restoration of buildings is mentioned within the numerous activities listed in the purpose statement of the Respondent's enterprise (Dekra s.r.l.), such activity is only potential. In fact, Dekra s.r.l.'s activities essentially concern the administration and cleaning of public and private buildings and of condominium areas as well as the adaptation of electrical and sanitary equipments. As the services offered by the Parties are not the same, there can be no confusion within the two enterprises and, therefore, there is no abuse of the trademark.
- The Respondent alleges that the registration of the trademark DEKRA (expressed in alphabetical letters) took place on February 2, 2003, only. As Dekra s.r.l. was registered with the Register of Commerce on July 27, 2000, article 2571 of the Italian Civil Code applies. There is no exclusive right to use a trademark when it is registered after a similar denomination has been previously acquired by another company. There could be at the most a situation of duopoly, in particular (but not exclusively) when the activities of the companies differ from another. The use of a local trademark gives the right to continue to use this trademark in the same territory even after the registration of a similar or identical trademark by another company. The Respondent claims that this applies in the case under consideration as the Respondent used the trademark before its registration by the Complainant.
- Trademarks composed by alphabetical letters or by abbreviations are, according to the Italian jurisprudence, “weak trademarks”, i.e. they are less protected than other trademarks.
Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (i) that the Domain Names registered by the Respondent are identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and, (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and, (iii) that the Domain Names have been registered and are being used in bad faith.
This Panel considers that the Respondent, by registering the Domain Names with Register.IT SPA (an ICANN-accredited domain name registrar), agreed to be bound by all terms and conditions of the Registration Agreement concluded with Register.IT SPA and all pertinent rules or policies therein, as well as the Policy. The Policy sets out which mandatory proceedings must be conducted thereunder, in accordance with the Rules and the selected dispute-resolution service provider's supplemental rules (in the present case, the Supplemental Rules). Therefore, this dispute is within the scope of the above-mentioned agreements and Policy, and this Panel has jurisdiction to decide this dispute.
Furthermore, by entering into the above mentioned Registration Agreement, the Respondent agreed and warranted that neither the registration of either of the Domain Names, nor the manner of its intended use would directly or indirectly infringe upon the legal rights of a third party. In addition, the Respondent agreed that the resolution of a dispute arising under the Registration Agreement may result in the Respondent's use of either of the Domain Names being suspended, or its registration being cancelled or transferred.
This Panel considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that the parties, and therefore also a respondent, in a domain name dispute case be given adequate notice of proceedings initiated against them and that the parties have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases.
In this case, this Panel upon review of the evidence and of the documentation submitted, is satisfied that these proceedings have been carried out in compliance with such requirements.
This Panel, as directed by paragraph 15(a) of the Rules, shall render the decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.
This Panel notes that the entire word “Dekra” is included in the Domain Names, the only additions being “srl” and “multiservice”. These additions are purely descriptive and do not alter the dominant impression of the trademark represented in the Domain Names. In addition, a TLD such as “.com” is required for registration of the Domain Names. This Panel finds that Respondent's Domain Names <dekrasrl.com> and <dekramultiservice.com> are similar to the trademarks of the Complainant.
Although not necessary for a finding under the first element of the Policy, the Panel notes that there is also a similarity in the activities of the Complainant and the Respondent. Both activities may be seen as related. According to the web site of the Complainant, it is active in the automotive, in the industrial and in the personnel business sectors, including: vehicle inspections, expert appraisals, international claims management, consulting, industrial testing, product testing, certification, environmental protection, qualification, temporary work as well as out- and new placement. According to the web site of the Respondent, he is active in the administration and cleaning of public and private buildings and of condominium areas, in the construction and restoration of buildings as well as in the adaptation of electrical and sanitary equipment. It is not clear from the allegations of the Respondent whether his activities in the construction and restoration industries are currently active or still in the planning and development phase. In any event, this Panel does not see why the Respondent shall offer a certain service on its website if he has no intention to deliver it. It is irrelevant if these activities are exercised or are only potential as nevertheless there is a risk of confusion for the public. Furthermore, the addition of the word “multiservice” in one of the Domain Names intensifies this risk because it underlines that the company provides several kind of services. The public is confronted with Domain Names that contain a broad range of similar services. The risk of confusion is therefore high.
This Panel concludes that the Respondent's Domain Names <dekrasrl.com> and <dekramultiservice.com> are confusingly similar to the trademarks of the Complainant.
It is not clear to the Panel what the Respondent is alleging by stating that the trademarks of the Complainant are so-called “weak trademarks” because they are composed by alphabetical letters. In any case, so-called “weak trademarks” are also protected against the use of confusingly similar names by other companies. Also the fact that the trademarks are used in Italy by five companies of the Complainant's group does not diminish their protection, on the contrary.
The Domain Names <dekrasrl.com> and <dekramultiservice.com> were registered by the Respondent on January 25, 2009 and on July 14, 2009. The trademarks DEKRA were registered by the Complainant on an international level between 1987 and 2008 (in alphabetical letter format since 2002). Therefore, at the moment of the registration of the Domain Names the trademarks DEKRA were already registered at an international level.
The fact that the Respondent states it executed some form of business registration with the Italian Register of Commerce in the year 2000 and that he may have used the name “Dekra” already then has not been proved by the Respondent to this Panel's satisfaction. But even if these allegations were demonstrated, the Panel notes that according to Italian law and jurisprudence the use of a trademark gives only the right to continue of use this trademark in the same way as done before registration of a similar or identical trademark by another company. In particular, the jurisprudence cited by the Respondent in his annex 2 explicitly states that this use is permitted “nei limiti della diffusion locale”, and article 2571 of the Italian Civil Code states that the company may use the trade mark further “nei limiti in cui anteriormente se ne é valso”. The registration of the Domain Names would in this Panel's opinion give rise to a new use of the Respondent's alleged or claimed mark. Nevertheless, the Panel notes it is unnecessary to resort to a study on Italian law in this case as the Respondent has nevertheless not proven a bona fide use of “Dekra” in the Domain Names under the Policy or otherwise. Thus, the Panel finds that in light of all of the circumstances in this case, the Respondent has not successfully rebutted the Complainant's arguments indicating that the Respondent has no rights or legitimate interests in respect of the Domain Names.
The Respondent does not contest the fact that the trademark DEKRA has been and is being intensively used by the Complainant and its subsidiaries and that it enjoys a very high level of recognition in Germany, Europe and worldwide.
On registering the Domain Names, the Respondent was likely aware of the fact that DEKRA is well-known and enjoys a global reputation. Based on the record, the Panel finds that by using the Domain Names the Respondent intentionally attempts to attract for commercial gain Internet users to his web site by creating a likelihood of confusion with the well-known Complainant's marks and services. Internet users are likely to mistakenly believe that Respondent's activities are offered, authorized, licensed or sponsored by Complainant. This constitutes bad faith.
In addition, the use of the Domain Names in the past does not constitute a bona fide offering of goods or services as the use constitutes an infringement of the Complainant's trademarks.
This Panel finds that the disputed Domain Names are confusingly similar to the Complainant's trademark, that the Respondent lacks rights or legitimate interests in the Domain Names, and that the Domain Dames were registered and are being used in bad faith
Therefore, pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel requires that the registrations of the Domain Names <dekrasrl.com> and <dekramultiservice.com> be transferred to the Complainant.
Michael A.R. Bernasconi
Dated: May 21, 2010