WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DEKRA e.V. v. Eurodnsfraud Eurodnsfraud / Steven Ward
Case No. D2015-1732
1. The Parties
The Complainant is DEKRA e.V. of Stuttgart, Germany, represented by Uexkull & Stolberg, Germany.
The Respondents are Eurodnsfraud Eurodnsfraud of Leudelange, Luxembourg and Steven Ward of Piqua, United States of America (“United States” or “USA”).
2. The Domain Names and Registrar
The disputed domain names <dekra-europa.com>, <dekraeurope.com>, <dekrainternational.com>, <dekra-logistic.com>, <dekralogistics.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 September 29, 2015. On September 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 2, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 8, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 9, 2015.
The Center verified that the amended 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 Respondents of the Complaint, and the proceedings commenced on October 14, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 5, 2015.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on November 19, 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, DEKRA e.V., is based in Stuttgart, Germany and is the proprietor of the trade marks described below. The Complainant’s wholly owned subsidiary, DEKRA SE, is engaged in the business of, inter alia, general inspections and emission controls for motor vehicles, security checks, damage investigations, providing expert analyses on accidents, technical appraisals and material testing, all in the context of the automotive industry. DEKRA SE has 480 branches in Germany, is active in over 50 countries and employs approximately 30,000 people.
The Complainant is also active in the areas of transport and logistics and has annexed to its Complaint a print out of a page from its German website “www.dekra.de” which concerns these aspects of its business.
The Complainant is the proprietor of the following registered trade marks (referred to collectively as the “Trade Marks”):
1. German trade mark number 30751663 for a figurative mark with the words “DEKRA Alles im grünen Bereich”, filed on August 7, 2007 and registered on September 29, 2008 (the “First Figurative Mark”);
2. German trade number 30 2009 075 864 for a figurative mark with the words “DEKRA On the safe side” filed on December 24, 2009 and registered on March 11, 2011 (the “Second Figurative Mark”); and
3. German mark number 30 2014 008 138 for the word “DEKRA” filed on November 18, 2014 and registered on February 13, 2015 (the “Word Mark”).
The Trade Marks are registered, inter alia, for a number of goods and services in classes 39, 41 and 42. The Complainant submits that DEKRA SE and subsidiaries of DEKRA SE have used and continue to use the Trade Marks with the consent of the Complainant.
According to a declaration of Mr. Roland Kemper (who is a member of the legal and compliance department of DEKRA SE) dated July 2013, “DEKRA SE is the only company that is in charge of enforcing the rights in the trademarks and commercial designations of the DEKRA Group and it is entitled to assert the trademark rights of DEKRA e.V. with the consent of the trade mark owner as a fully owned subsidiary”. The Complainant’s entitlement to enforce the Trade Marks and any unregistered rights in the name “DEKRA” are addressed in section 6A below.
The Complainant contends that the Word Mark enjoys an “extremely high brand awareness in Europe, particularly in Germany”. In support of this contention, the Complainant submitted the results of two market surveys. The first market survey was directed at 200 individuals working within the automotive industry. The second market survey was directed at particular sections of the public in Germany, namely (a) those members of the German public who confirmed that they do use vehicle testing services (955 individuals); and (b) those members of the German public who confirmed that they do use vehicle testing services or for whom the use of such services is not out of the question (1,398 individuals).
Since 2003, the Complainant’s corporate group has been the official sponsor of the referees of the German Football Association and “DEKRA” has been included (in 47th place) in a list of fifty top German brands prepared by Interbrand (an international brand consultancy) in 2015.
The Domain Names were registered on August 9 and 10, 2015 and resolve to Pay-Per-Click (“PPC”) parking sites which feature links to a number of third party sites. It is evident that at least some of the links pertain to commercial areas in which the Complainant is active, including the automotive industry and logistics.
The Complainant initially filed a complaint on September 29, 2015, which identified the Respondent as “Eurodnsfraud Eurodnsfraud”. In an email dated October 2, 2015 to the Center, the Registrar confirmed that “The respondent [Eurodnsfraud Eurodnsfraud] is not the current registrant of the [Domain Names]. The concerned account was flagged as fraudulent by our services and therefore EuroDNS SA system automatically suspend (sic) these [Domain Names] and appointed the contact « eurodnsfraud » until the expiration of the domain names. Please know that we have updated the domain names to reflect the real owner.” The registrar also confirmed that the registrant of the Domain Names is Steven Ward of Piqua, USA.
The Complainant submitted an amended Complaint on October 9, 2015, which identified Steven Ward as the Respondent. For the purpose of this decision, both Steven Ward and “Eurodnsfraud Eurodnsfraud” are the Respondents.
5. Parties’ Contentions
The Complainant contends as follows:
1. The Domain Names are confusingly similar to the Trade Marks and the business designations in which the Complainant has rights. In particular:
1.1 the Domain Names feature the distinctive component “DEKRA” which enjoys a very high level of distinctiveness and reputation; and
1.2 the terms “international”, “Europe”/”Europa” and “logistics”/”logistic” are purely descriptive and can therefore be disregarded.
2. The Respondents have no rights or legitimate interests in the Domain Names. In particular:
2.1 the Respondents do not own any registered trade mark for “DEKRA”;
2.2 there is no evidence that the Respondents possess any rights in the terms Dekra-europa, Dekra-logistic, Dekraeurope, Dekrainternational and Dekralogistics;
2.3 the Complainant has never instructed or authorised the Respondents to register or use the Domain Names; and
2.4 the Domain Names have not been used in connection with a bona fide offering of goods and services.
3. The Domain Names have been registered and used by the Respondents in bad faith. In particular:
3.1 the Respondents have registered five domain names incorporating the Complainant’s Word Mark which suggests intent to profit from the activities of others (see Nikon, Inc and Nikon Corporation v Technilab, WIPO Case No. D2000-1774); and
3.2 the PPC pages to which the Domain Names resolve cause Internet users to erroneously assume that those website pages and the third party websites to which the sponsored links resolve are connected with the Complainant. Furthermore, the Respondents may gain a commercial benefit each time a user clicks on a sponsored link.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to be entitled to the transfer of a domain name, a complainant shall prove the following three elements:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 5(e) of the Rules provides that, if the respondent fails to submit a response (as in this case), in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint.
A. Identical or Confusingly Similar
The Panel has noted that the Complainant is the parent company of DEKRA SE. According to the declaration referred to in paragraph 4 above, DEKRA SE is the “only” company that “is in charge of enforcing the rights in the trademarks and commercial designations of the DEKRA Group”. Having considered that: (a) the Complainant has submitted as evidence copies of the registrations for the Trade Marks which confirm that the Complainant is the registered proprietor of the Trade Mark; and (b) the declaration does not explicitly state that DEKRA SE is entitled to enforce the Trade Marks to the exclusion of the Complainant, the Panel takes the view that there is sufficient basis to conclude that the Complainant is entitled to enforce the Trade Marks and any rights acquired from trading under the “DEKRA” name (Komatsu Deutschland GmbH v. Ali Osman / ANS, WIPO Case No. D2009-0107).
It is accepted by the Panel that the Complainant has rights in the word “Dekra” by virtue of the Trade Marks referred to above and as a result of its use and the use by its subsidiaries of “Dekra” in connection with the services described above in section 4, particularly in Germany.
The Domain Names incorporate the Complainant’s Word Mark and the dominant textual component of the First Figurative Mark and the Second Figurative Mark (the word “DEKRA”). The Panel accepts the Complainant’s contention that the addition of descriptive suffixes to the word DEKRA, namely “-europa”, “europe”, “international”, “logistic” and “logistics” are insufficient to prevent confusing similarity.
Accordingly, the Panel finds that the Domain Names are confusingly similar to the Complainant’s Trade Marks and the business designation (namely the word “DEKRA”) in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has made out a prima facie case that the Respondents lack rights or legitimate interests in the Domain Names such that the burden of production shifts to the Respondents, who must rebut that prima facie case. The Respondents have not responded to the Complainant’s complaint and the Panel therefore infers that the Respondents have no rights or legitimate interest in the Domain Names (Betsson Malta Limited v John Droker, WIPO Case No. D2010-0883) and that the requirement under paragraph 4(a)(ii) of the Policy is satisfied.
Furthermore, the evidence presented by the Complainant indicates that the Domain Names have not, and are not, being used by the Respondents in connection witha bona fide offering of goods and services.
C. Registered and Used in Bad Faith
The Panel accepts that at the dates that the Domain Names were registered, the Complainant’s Word Mark and business designation (namely the word “DEKRA”) were well known, particularly in Germany. Taking all of the circumstances into account, the Panel considers it unlikely that the Respondents were not aware of the Complainant’s rights in “DEKRA” and it agrees with the Complainant’s submission that the number of Domain Names registered by the Respondents suggests that they have been registered, and are being used, in bad faith. This is particularly so in circumstances where the Respondents have not provided any evidence to the contrary.
The Domain Names resolve to PPC pages, which direct Internet users to third party websites, at least some of which relate to commercial areas in which the Complainant is active, including the automotive industry and logistics. The Respondents are using the Complainant’s Trade Marks and reputation to mislead Internet users into thinking that the websites to which the Domain Names resolve and/or the websites to which the sponsored links resolve are connected with the Complainant, for commercial purposes.
Accordingly, the Panel finds that the Domain Names were registered and are being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
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-europa.com>, <dekraeurope.com>, <dekrainternational.com>, <dekra-logistic.com>, <dekralogistics.com> be transferred to the Complainant.
Date: December 1, 2015