WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bernard Krone Holding GmbH & Co. KG v. Privacy Protection, DELTA-X Ltd.

Case No. D2014-1233

1. The Parties

The Complainant is Bernard Krone Holding GmbH & Co. KG of Spelle, Germany, represented by SZA Schilling, Zutt & Ansch├╝tz, Germany.

The Respondent is Privacy Protection, DELTA-X Ltd. of Kyiv, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <kroneosten.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2014. On July 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant cured the deficiency on July 28, 2014.

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 the Respondent of the Complaint, and the proceedings commenced on July 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2014.

The Center appointed Clark W. Lackert as the sole panelist in this matter on August 28, 2014. 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 record shows that the Respondent attempted to modify or delete the registration for the disputed domain name after the Complaint was filed. This was confirmed by an email from the Registrar to the Center dated July 31, 2014. Because the domain name was subject to a UDRP proceeding, it was not modified or deleted in response to the Respondent’s request.

4. Factual Background

The Complainant is a producer of machinery and equipment which is used in the field of agriculture. The Complainant has approximately 2,000 employees and maintains subsidiaries in 40 countries. The Complainant advertises its goods and services under its KRONE trademark which is registered in word and design forms. The record shows that the Complainant owns registrations for its KRONE word and KRONE Crown design marks in the European Community (no. 001644145) and an international registration (no. 911460) for its KRONE word mark which has been extended to Australia, Bulgaria, Belarus, Switzerland, Croatia, Iceland, Japan, South Korea, Montenegro, Norway, Romania, Russian Federation, Turkmenistan, Turkey, the United States, and Ukraine. These trademarks were registered in 2001 and in 2006 and cover agricultural equipment and machinery, vehicles, and installation, maintenance, and repair services related to vehicles and machines/apparatus used in the fields of agriculture, horticulture, and forestry. The record also shows that the Complainant owns and maintains domain names incorporating its KRONE trademark including the domain names <krone.de> and <krone-trailer.com>.

The disputed domain name was created on March 27, 2014. The disputed domain name is registered through the Registrar, using a domain name privacy protection service. In response to communication from the Center, the Registrar confirmed that the registrant of the disputed domain name was DELTA-X Ltd. of Kiev, Ukraine as of July 18, 2014. The record shows additional contact details for the Respondent, specifically “Central Office of Krone Osten” of Kiev, Ukraine. The Respondent did not submit a response to the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to its KRONE trademarks because it combines the literal element “krone” with “osten”, the German word for “east”. The Complainant states that the disputed domain name <kroneosten.com> could confuse Internet users because it combines the Complainant’s KRONE trademark with a geographic term which could lead Internet users to believe that it is the domain name for “Krone of the East”. The Complainant maintains that KRONE is the only distinctive portion of the disputed domain name and that the use of the common term “osten” in the disputed domain name does not add distinction.

The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent is not commonly known by the domain name. The Complainant also alleges that the Respondent is using the disputed domain name as part of a “phishing” scheme and is using the Complainant’s trademarks and trade dress on the webpages of the disputed domain name in the interest of driving Internet traffic to the disputed domain name. The Complainant also cites content of the disputed domain name which suggests a relationship between the Complainant and the disputed domain name, specifically language suggesting that the disputed domain name is related to a subsidiary of the Complainant and that this subsidiary is located in the Ukraine.

Regarding bad faith, the Complainant maintains that the Respondent’s use of its trademarks and trade dress is diverting Internet traffic and that the disputed domain name’s content suggesting a relationship between the disputed domain name and the Complainant is misleading. Specifically, the Respondent is using the Complainant’s KRONE mark and KRONE Crown design logo, referring to itself as a subsidiary of the German company Krone on its website, and otherwise presenting itself as an “eastern” branch of the German Complainant. The Complainant also alleges that false contact information has been provided by the Respondent in the interest of concealing its identity.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The record shows that the Complainant owns prior rights in its KRONE trademark and its KRONE Crown design mark. These rights date to 2001 in the European Community and to at least as early as 2006 elsewhere. The records shows that the Complainant’s rights in its KRONE mark have been extended to multiple jurisdictions throughout the world including Ukraine, the jurisdiction cited as the Respondent’s residence.

It has been held that the combination of a trademark with a geographic term to form a domain name does not create a domain name which is distinctive from the trademark at issue. See, e.g., ALDI GmbH & Co., KG v. Web Advertising Corp., WIPO Case No. D2007-1066 (finding confusing similarity between the ALDI trademark and the domain name <aldi-sued.org>, a domain name translated from German to English as “ALDI south”). The disputed domain name in this case combines the Complainant’s KRONE trademark with the German term “osten” which is translated in English as “east”. The addition of the term “osten” to the Complainant’s KRONE trademark to form a domain name does not add distinction and in fact contributes to a finding of confusing similarity because it could lead Internet users to believe that the disputed domain name is a branch or subsidiary of the Complainant located in an eastern geographic location.

The requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

There is no evidence in the record indicating that the Respondent has any rights or legitimate interests in or to the disputed domain name. There is nothing to establish that the Respondent is known by the term “Kroneosten” or provides goods or services in an area of trade under the term “kroneosten”. The Complainant has established its prima facie case that the Respondent lacks rights or legitimate interests, which the Respondent has not rebutted.

The requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

The record shows that the Complainant has established trademark rights in KRONE which precede the registration of the disputed domain name. The Respondent’s use of “krone” in the disputed domain name indicates that it was aware of the Complainant’s trademark when registering the disputed domain name. Any doubts in favor of the Respondent are minimized upon consideration of the Respondent’s lack of formal reply to the Complaint.

The record shows that the disputed domain name has been used to trade off of the Complainant’s trademarks and divert web traffic. Specifically, the content of the disputed domain name features the Complainant’s KRONE word and the KRONE Crown design marks and images of agricultural machinery as well as pages describing the website as belonging to a related company of the Complainant. As examples, the webpages of the disputed domain name submitted as Annex 6 of the Complaint state the following:

- KRONE OSTEN is the eastern region affiliate of the German manufacturer of agricultural machinery KRONE.

- KRONE OSTEN maintains a fleet of machinery in the Ukraine

- KRONE OSTEN has maintained positive relationships with agricultural producers in the Ukraine for many years

The above are English translations of the German content on the aforementioned webpages. This content confirms that the Respondent is aware of the Complainant and its trademarks and is indicative of efforts by the Respondent to trade off the goodwill of the Complainant’s trademarks and divert web traffic. The registration of a domain name incorporating another party’s trademark and use of the domain name to display content related to goods or services provided under that trademark has been held to be indicative of a respondent’s knowledge of the goods or services provided under the trademark. See Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517.

By registering the disputed domain name and displaying content related to the goods and services provided by the Complainant under its KRONE word and design marks, the Respondent is diverting traffic in violation of paragraph 4(b)(iv) of the Policy. The incorporation of content suggesting a relationship between the disputed domain name and the Complainant also supports a finding of bad faith.

Finally, it is noted that some of the contact information provided by the Respondent on the website to which the disputed domain name resolves was false.

The requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

7. Decision

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

Clark W. Lackert
Sole Panelist
Date: September 16, 2014