WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DEUTZ AG v. Nader Guirgis

Case No. D2015-1637

1. The Parties

The Complainant is DEUTZ AG of Cologne, Germany, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.

The Respondent is Nader Guirgis of Pointe-Claire, Quebec, Canada.

2. The Domain Names and Registrar

The Disputed Domain Names <deutzenginesshop.com>, <deutzpartnumbers.com>, <deutzpartsonline.com>, <deutzpartsshop.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2015. On September 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 16, 2015, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on September 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2015.

The Center received an email communication from the Respondent regarding the possibility for a settlement between the Parties on October 13, 2015. On October 15, 2015 the Center sent an email communication to the Parties inviting the Complainant to request the suspension of the proceeding if the parties want to explore the possibility of a settlement. On October 16, 2015 the Complainant sent an email communication to the Center stating that a settlement was not possible.

On October 19, 2015 the Respondent did not submit any formal response. Accordingly, on October 20, 2015 the Center notified the Parties that the Center will proceed to the Panel appointment.

The Center appointed Maxim H. Waldbaum as the sole Panelist in this matter on October 30, 2015. 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

The Complainant is an engine manufacturer, based in Cologne, Germany. It was founded in 1864 and it distributes worldwide diesel engines and engine components for agricultural machinery, marine propulsion, automobiles and construction equipment. The Complainant has an array of trademark registrations including but not limited to International word mark DEUTZ registered on January 21 1954, and figurative mark incorporating the word DEUTZ registered on March 30, 2000.

The Complainant owns a registration of the DEUTZ word trademark in Canada (Registration No. UCA48494). It was used in Canada since the year of 1939 and registered on December 28, 1953, and recently renewed on December 28, 2013. Both the International and Canadian trademarks were registered long before the date of registrations of the Disputed Domain Names.

Further, the Complainant is also the owner of various domain names incorporating the DEUTZ trademark, such as <deutzengine.com>, <deutz-engines.com> and so on.

The Complainant promotes its engines through its official website “www.deutz.com” in German and English. It also sells its products and provides services related to engines globally with subsidiaries and/or contractual partners and distributors. Specifically in Canada, the Complainant has a network of almost thirty different authorized distribution points throughout different areas and provinces.

All the Disputed Domain Names were registered on August 16, 2015. They are all appeared to be used as a sponsored links website, containing “Related Links” to various engines, engine/auto parts not only from the Complainant but also the Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

Complainant alleges that:

(a) The Disputed Domain Names are confusingly identical or similar to the Complainant’s mark.

The Complainant claims that all the Disputed Domain Names entirely incorporate the Complainant’s Mark. In each Disputed Domain Name, it combines the Complainant’s mark with generic elements. Such addition is insufficient to avoid a finding of confusing similarity. To the contrary, the relevant public might get the impression that the domain name identifies the Complainant itself and emphasizes the association between the two parties.

(b) The Respondent has no rights or legitimate interests with respect to the Disputed Domain Names.

The Complainant avers that the Respondent has no registered trademarks or trade names or even personal names corresponding to DEUTZ or the Disputed Domain Names. Further, the Complainant has never authorized or licensed the Respondent to use the mark.

In addition, the Complainant states that the Respondent cannot claim any use of the Disputed Domain Names in any bona fide offering of goods and services because they are all used as sponsored links websites containing links not only to engine goods relating to the Complainant, but also the products of the Complainant’s competitors. Furthermore, the Complainant asserts that in the case of manufacturer of spare parts, the right to use the trademark of the manufacturer is strictly limited. And generally it excludes the use of the Complainant’s trademark as part of a domain name. Moreover, the Complainant asserts that the Respondent has intentionally chosen domain names being confusingly similar to the Complainant’s mark in order to generate traffic to sites with sponsored links and such use is misleading internet users. Such activity will not be viewed as bona fide offering. Lastly, the Complainant points out that the Respondent also uses the Disputed Domain Names as SEDO domain parking sites.

The Complainant contends that bad faith is demonstrated through following facts:

The Respondent’s registrations are in bad faith because it must have known of the Complainant’s mark at the time of registration. Such conclusion of bad faith is enhanced, in particular, by the fact that the Complainant is a registered trademark owner in Canada, where the Respondent is located. Further, such prior knowledge is also shown because the Respondent has links at the Disputed Domain Names that offer engine goods of the Complainant under DEUTZ trademark.

In addition, the Respondent’s use is in bad faith because the Respondent is using the Disputed Domain Names to provide sponsored links to websites promoting products related to the Complainant and competitors of the Complainant, which baits users and switches them to competing products and third party offers. It also misleads Internet users to an impression that the Disputed Domain Names are actually official sites of the Complainant. Bad faith, as a result, can also be indicated because the Respondent is trying to exploit the reputation and prestige of DEUTZ trademark to promote its own or third party products for commercial gain.

Also, the Complainant alleges that bad faith can be found because the Respondent has engaged in a pattern of conduct and registered not only one, but four Disputed Domain Names on the same day.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. However, he did convey his offer to sell each Disputed Domain Name at the price of USD 2,500 by email, which was rejected by the Complainant.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) The Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Disputed Domain Names are identical or confusingly similar to the Complainant’s mark.

It is well settled that the inclusion of a registered mark in its entirety in a domain name results in confusing similarity for purposes of paragraph 4(a)(i) of the Policy. And here, the Disputed Domain Names all consist of the Complainant’s mark DEUTZ in its entirety. Followed by DEUTZ in all of the Disputed Domain Names, however, are different descriptive terms including “engineshop”, “partnumbers”, “partonline” and “partsshop”. Then the question here comes to whether the addition of such generic or descriptive terms will be sufficient enough to avoid the confusion. Numerous cases have illustrated such point in the past and it is clearly stated in paragraph 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that:

“The addition of generic or descriptive words to a trademark in a domain name normally does not avoid a finding of confusing similarity, particularly where the trademark constitutes the dominant or principal component of the domain name. Further, the use of a generic or descriptive word that describes the products or services with which the trademark is ordinarily used may exacerbate or increase the confusing similarity.”

This is obviously the case here. The terms added are not only descriptive but in exact connection with what the Complainant is known for manufacturing of engine and related parts. Accordingly the addition of the generic terms does not avoid a finding of confusing similarity (see Perkins Holdings Limited v. Michele Caroli SRL, WIPO Case No. D2013-1364).

Therefore, the first Policy element has been established.

B. Rights or Legitimate Interests

The Panel concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.

Although a complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance would often require the impossible task of proving a negative because such information is frequently within the sole possession of a respondent (see Altria Group, Inc. v. Steven Company, WIPO Case No. D2010-1762). Accordingly, a complainant need only make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name (see Valero Energy Corporation and Valero Marketing and Supply Company v. Kim A Waugh, Kim Consult, WIPO Case No. D2014-1819 “Upon such a showing, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the Disputed Domain Names.”).

In this case, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Disputed Domain Names within the meaning of paragraph 4(a)(ii) of the Policy.

This finding is inter alia based on the following, non-disputed circumstances:

(1) The Complainant has asserted that the Respondent has no relationship or affiliation with the Complainant and has never authorized or licensed the Respondent to use its trademark to apply for a domain name.

(2) The Respondent’s use of the Disputed Domain Names is not in a bona fide offering of goods and services.

Notably, this Panel would like to address several points regarding determination in favor of the Complainant that there is no “bona fide offering of goods and services”.

On the website of “www.sedo.com”, the Respondent offers to sell the Disputed Domain Names and the Respondent uses them as parking sites. Offering to sell a domain name on a public website for a large sum has been found to indicate that a domain name has primarily been registered with the intention of selling it to the Complainant or a competitor in return for a payment that exceeds the “valuable consideration of your documented out-of-pocket costs directly related to the domain name” under paragraph 4(b)(i) of the Policy. On “Sedo” and in an email of September 18, 2015 from the Respondent, it asked for a price of USD 2,500 for each domain name and in the Panel’s view this exceeds the Respondent’s expenses within the meaning under paragraph 4(b)(i) of the Policy.

The Complainant has provided evidence that the Respondent also used the Disputed Domain Names to redirect to its sales site on “www.sedo.com” and that they currently resolve to parking sites with sponsored links. As discussed in paragraph 2.6 of the WIPO Overview 2.0, it is generally recognized that use of a domain name to post parking pages may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. Based on the fact that each of the Disputed Domain Names contains links (presumably for commercial gain) not only to engine goods relating to the Complainant, but also the products of the Complainant’s competitors, the Panel finds that such use is not bona fide within the meaning of the Policy.

As nothing in the record rebuts the Complainant’s prima facie case, the Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by the Complainant and that the Respondent’s bad faith registration and use of the Disputed Domain Names have been proven.

Paragraph 4(b) provides the following four (nonexclusive) circumstances which are deemed to provide evidence of bad faith registration and use of a domain name:

(i) circumstances indicating that you [respondent] have registered or you [respondent] 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 the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you [respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your web site or your location.

This Panel finds that several circumstances set out in paragraph 4(b) are fulfilled here.

As illustrated in the former part, the Respondent’s registered the Disputed Domain Names with the purpose of selling or otherwise transferring them to the Complainant or any competitor for an amount in excess of its out-of-pocket costs. Such fact shall be considered as an evidence of bad faith.

This Panel agrees with the Complainant that the Respondent’s behavior constitute a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name, and thus bad faith can be found (see General Electric Company v. Normina Anstalt a/k/a Igor Fyodorov, WIPO Case No. D2000-0452).

As explained above, this Panel also agrees that the Respondent had prior knowledge about the Complainant’s mark when it registered the Disputed Domain Names, which is recognized as another ground for the finding of bad faith. This is clear to this Panel because the Complainant owns numerous registrations of DEUTZ mark and all of them predate the registrations of Disputed Domain Names. This is also based on the fact that the Respondent incorporated DEUTZ entirely in all its registrations as well as hosted links to the Complainant’s products.

Along with the fact that the Disputed Domain Names are used as sponsored links based on Complainant’s trademark value, it is fair for this Panel to determine that the circumstance specified in paragraph 4(b)(iv) is manifested and suffices a suggestion of the Respondent’s bad faith.

The Panel, in view of all the circumstances of this case, including the fact that the Complainant is a widely known corporation along with its valid trademarks and that no response to the Complaint has been filed, concludes that the Disputed Domain Names were registered and are being used in bad faith.

Taking all the above into account, this Panel finds for the Complainant on the third element of the Policy.

7. Decision

In light of the foregoing, the Panel finds that all four Disputed Domain Names are confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and that the Respondent registered and is using the Disputed Domain Names in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel orders that the Disputed Domain Names <deutzenginesshop.com>, <deutzpartnumbers.com>, <deutzpartsonline.com>, <deutzpartsshop.com> be transferred to the Complainant.

Maxim H. Waldbaum
Sole Panelist
Date: November 13, 2015