WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DEKRA e.V. v. Andrzej Potrac
Case No. D2015-1223
1. The Parties
The Complainant is DEKRA e.V. of Stuttgart, Germany, represented by Uexkull & Stolberg, Germany.
The Respondent is Andrzej Potrac of Letchworth, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain names <dekra-europe.com>, <dekra-international.com> and <dekra-logistics.com> (the “Domain Names”) are registered with EuroDNS S.A. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2015. On July 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 16, 2015, The Registrar replied confirming that it has received a copy of the Complaint, the Domain Names are registered with it, that the registrant of the Domain Names is Andrezj Potrac, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies, that the Domain Names have been registered to this registrant since at least June 27, 2015, that they will expire on June 26, 2016, and that they will remain locked during this proceeding subject to expiry or dismissal or suspension of the case, and that the language of the registration agreement is English. The Registrar provided the full contact details held on its WhoIs database in respect of the Domain Names. These identified the registrant name as Andrezj Potrac.
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 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2015.
The Center appointed Michael D. Adams as the sole panelist in this matter on August 25, 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.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is a vehicle testing provider based in Stuttgart, Germany. By the Complainant’s own account, the Complainant's primary business includes the periodic inspection of motor vehicles (general inspection including emissions testing), expert appraisals, safety inspections and the inspection of technical systems. It currently maintains a presence in 50 countries in Western and Eastern Europe as well as in the United States of America, Brazil, South Africa, Israel, Japan and China. In Germany, the Complainant maintains 480 of its own branches and is conducting regular inspections of motor vehicles in more than 38,000 work stations. The Complainant generated sales of around EUR 2.5 billion in 2014. The company currently employs around 35,000 people in more than 50 countries (Section II of the Complaint).
The Complainant is the registrant of the domain name <dekra.com> and at least three German trademarks for DEKRA in International Class 39 for use in connection with numerous services including freight transportation and freight transportation logistic services. These trademarks have an earliest priority date of August 7, 2007 (Annex 9 of the Complaint).
Neither the Complainant nor the Respondent has provided information regarding the business of the Respondent, but the Complainant provided screenshots of the Domain Names at the time of the Complaint submission. Based on a review of these screenshots, the Respondent’s use of the Domain Names involve freight transportation and freight transportation logistic services (Annex 10-13 of the Complaint).
5. Parties’ Contentions
The Complainant contends that the Domain Names are effectively identical to its registered trademark DEKRA, from which they differ only from the addition of geographic or descriptive terms.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Names or any corresponding names. Complainant further submits that the Respondent’s use of the Domain Names does not constitute a bona fide offering of goods or services, nor a legitimate, noncommercial or fair use of the Complainant’s marks. The Complainant notes that the Domain Names are directed to web pages that display services that are identical to those contained in the Complainant’s trademark registrations. The Complainant further contends that the Domain Names are being used to deceive consumers, interfere with the Complainant’s business, and trade off the Complainant’s goodwill, and that this does not establish rights or legitimate interests in them.
The Complainant further states that there is no relationship between it and the Respondent and that it has not authorized the Respondent to use its name in this fashion.
The Complainant contends the Domain Names have been registered and used in bad faith by the Respondent, and that the Respondent intentionally attempts to attract for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s marks.
The Complainant requests a decision that the Domain Names be transferred to it.
As noted above, the Respondent did not reply to the Complainant’s contentions or offer any evidence of record.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Names are identical or confusingly similar to a mark or marks in which it has rights; (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. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default in failing to file a Response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar
The Panel finds that the Domain Names are confusingly similar to the mark DEKRA in which the Complainant has registered and unregistered rights. The addition of geographic descriptors, such as “Europe” and “international”, which describe territory and scope of business operations respectively, do not provide any distinction. Likewise, the addition of the descriptive term “logistics”, which describes the purported services, does not provide any distinction under these circumstances. The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
As stated above, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names, and the Respondent has not offered any evidence regarding rights or legitimate interests to the Domain Names. In addition, there is no evidence of record to suggest that the Respondent owns trademark registrations for or is otherwise commonly known by the trademark DEKRA or the Domain Names. While the Panel acknowledges that it is possible for two parties to both possess rights and legitimate interests to an identical term for identical services, there is no evidence to suggest that such is the case here. To the contrary, as elaborated under the heading “Registered and Used in Bad Faith” the available evidence suggests that the Respondent does not use in good faith, nor is commonly known by, the Domain Names. As a result, the Panel considers that this does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the Domain Names. Thus, the Panel concludes that the Respondent’s use of the Domain Names is in bad faith, trading off the Complainant’s goodwill by attracting Internet users seeking the Complainant’s website through confusion with its name and marks.
On the material in the file there is no other basis on which the Respondent could have rights or legitimate interests in the Domain Names. The Panel finds that the Respondent has no such rights and the second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds on the evidence that the Respondent has used the Domain Names intentionally to attract Internet users to their web pages by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of these web pages or of services promoted on them. In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence of registration and use of the Domain Names in bad faith.
There is no material on the file that displaces this presumption. On the contrary, this presumption is reinforced by the Complainant’s submission of webpages clearing showing that the Domain Names appear to resolve to content focused on freight transport and freight transport logistic services, which furthermore incorporate graphical elements used on the Complainant’s own website. The Panel finds the third requirement of the UDRP is satisfied.
All three requirements of the UDRP are met and it is appropriate to direct that the Domain Names be transferred to 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 names, <dekra-europe.com>, <dekra-international.com> and <dekra-logistics.com> be transferred to the Complainant.
Michael D. Adams
Date: September 9, 2015