WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutz AG v. su su xiaoji
Case No. D2015-0272
1. The Parties
The Complainant is Deutz AG, Cologne, Germany, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.
The Respondent is su su xiaoji of Shijiazhuang Hebei, China.
2. The Domain Name and Registrar
The disputed domain name <china-deutz.com> is registered with 35 Technology Co., Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 20, 2015. On February 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 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.
On February 26, 2015, the Center transmitted an email in English and Chinese to the parties regarding the language of the proceeding. On February 27, 2015, the Complainant submitted a Chinese translation of the Complaint, while still requesting English as the language of the proceeding.
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 proceeding commenced on March 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 25, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on April 8, 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 incorporated on July 10, 1884. The Complainant distributes worldwide diesel engines and engine components for agricultural machinery, marine propulsion, automobiles and construction equipment. It distributes its products worldwide through subsidiaries and/or contractual partners and distributors. In China, business is conducted via its subsidiary, Deutz (Beijing) Engine Ltd., amongst 15 other official distributors.
The Complainant has German, European Community, Chinese and International trade mark registrations for the word mark DEUTZ and figurative mark incorporating the word DEUTZ. The International and German trade mark registrations predate the date of registration of the disputed domain name.
The Complainant has domain name registrations incorporating the DEUTZ trade mark including <deutz.com>, <deutz.de>, <deutz.cn>, <deutz-china.com>, <deutzchina.com>, <deutzchina.cn> and <deutzchina.com.cn>. It promotes its engines, in particular, on its website at "www.deutz.com", in German and English.
The disputed domain name was registered on February 23, 2004. The Respondent appears from its website to be offering goods in the nature of spare parts and engines or other products of the Complainant as well as those of the Complainant's competitors.
5. Parties' Contentions
1. The Complainant submits that the disputed domain name is confusingly similar to the trade mark DEUTZ in which it has rights. The disputed domain name fully incorporates the Complainant's DEUTZ mark and combines it with a generic, geographical term, "china". The element "china" will not be perceived by the relevant public as a difference that is sufficient to distinguish the Respondent or the goods and services offered on the Respondent's website from the Complainant. On the contrary, the impression given is that the disputed domain name is intended to identify the Complainant's business in China. It is a well-settled principle that the addition of a geographical term to a trade mark in a domain name is insufficient to avoid confusing similarity under paragraph 4(a)(i) of the Policy.
2. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not found that the Respondent has any registered trade mark, trade name or personal name corresponding to the designation "deutz" or the disputed domain name. Neither the Respondent nor the name of the entity promoting the goods and services under the disputed domain name is in any way related to the term "deutz". Further, the Complainant has not licensed or authorized the Respondent to use and register the disputed domain name.
The Respondent cannot claim to use the disputed domain name in connection with a bona fide offering of goods although it appears to offer spare parts and products of the Complainant. It is a well-known principle of trade mark law that the manufacturer of spare parts is entitled to use the trade mark of the manufacturer of the original products only under certain conditions and within certain strict limits. It does not include a right to use the trade mark in a domain name. Moreover, the Respondent offers products and spare parts from other manufacturers which are competitors of the Complainant.
3. The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website.
When it registered the disputed domain name, the Respondent was clearly aware of the prior rights of the Complainant in the DEUTZ trade marks, which were registered long before the disputed domain name was registered. The Complainant's DEUTZ trade marks appear clearly on the Respondent's website and the spare parts and engine parts offered on the website are expressly to be used for goods manufactured by the Complainant under the DEUTZ trade mark.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Language of the Proceeding
Paragraph 11(a) of the Rules stipulates that: "[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding".
Paragraph 10(b) and (c) of the Rules stipulate, respectively, that:
"(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel."
The Complainant requested that English be the language of the proceeding for the reasons that the Complainant is unable to communicate in Chinese. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to have to incur translation expenses. In any case, it submitted a Chinese translation of the Complaint.
The Panel notes that the disputed domain name consists of Latin characters rather than Chinese characters which shows that the Respondent has an understanding of the English language. Whilst there is a language requirement that is provided for in paragraph 11(a) of the Rules, the Panel, at the same time, has to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case. The Panel is of the opinion that the Respondent has been treated fairly, all the more with the Chinese translation of the Complaint having been provided by the Complainant. The Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but chose not to do so. In the circumstances, the Panel believes that the Respondent would not be prejudiced if English is adopted as the language of the proceeding.
The Panel therefore determines that English should be the language of the proceeding in this case.
A. Identical or Confusingly Similar
The Complainant has established it has rights in the trade mark DEUTZ. The question then turns on whether the addition of the word "china" and hyphen is sufficient to remove the confusing similarity to the Complainant's trade mark. The Panel is of the view that it is not. Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states the consensus view that in order to satisfy the threshold test for confusing similarity under the UDRP, "the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion".
The Panel finds that the DEUTZ trade mark is without question recognizable within the disputed domain name, and the word and hyphen "china-" in the disputed domain name does not alter the character and substance of the disputed domain name such as to distinguish it from the Complainant's DEUTZ trade mark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trade mark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a few non-exhaustive examples whereby a respondent can demonstrate its rights or legitimate interests in a disputed domain name:
"(i) before any notice to you 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."
The Panel finds that the Complainant has satisfied its burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and accordingly concludes that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. The consensus view that has been established in previous panel decisions under the UDRP is that
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP." (See paragraph 2.1 of the WIPO Overview 2.0.)
The Respondent has not filed any Response to refute the Complainant's allegations or to explain why it believes it has rights or legitimate interests in respect of the disputed domain name. The Panel agrees with the decision of the panelist in Deutz AG v. Liushuliang, WIPO Case No. D2013-1807, cited by the Complainant, that "even if the Respondent were selling unoriginal spare parts compatible with the Complainant's products, this would not entitle the Respondent to register the disputed domain name containing the Complainant's DEUTZ trade marks with other non-distinctive elements". The Panel also draws guidance from the consensus view expressed at paragraph 2.3 of the WIPO Overview 2.0:
"Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark",
thus depriving the trade mark owner from reflecting its own mark in a domain name.
The aforesaid view is primarily drawn from the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Applying the above criteria, the Panel is of the view that the use and registration of the disputed domain name incorporating the Complainant's DEUTZ trade mark without the Complainant's consent and the offering of goods of those of the Complainant's competitors are circumstances which do not allow for a finding of a bona fide offering of goods or services.
The Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel concludes that the Respondent's registration and use of the disputed domain name which incorporates the Complainant's DEUTZ trade mark in its entirety and which suggests to Internet users that the Respondent's website is that of the Complainant's subsidiary or authorized dealer or distributor in China constitutes bad faith registration and use. The Respondent was evidently well aware of the Complainant and of its products, and the intention in registering the disputed domain name must have been to divert Internet traffic. There is no relationship between the Respondent and the Complainant and the Respondent has not used the disputed domain name for the sale of only the DEUTZ-trademarked goods but has used it for the purposes of selling the goods of the Complainant's competitors.
The Panel finds, in the circumstances, that the Respondent "by using the [disputed] domain name, [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location" (paragraph 4(b)(iv) of the Policy).
The Panel is therefore satisfied that the third element under paragraph 4(a) of the Policy has been established by the Complainant.
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 <china-deutz.com> be transferred to the Complainant.
Date: April 20, 2015