WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SIXT SE v. Devin Zhang
Case No. D2015-2001
1. The Parties
Complainant is Sixt SE of Pullach, Germany, represented by Taylor Wessing, Germany.
Respondent is Devin Zhang of California, United States of America ("US").
2. The Domain Name and Registrar
The disputed domain name <sixt-neuwagen.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 5, 2015. On November 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceeding commenced on November 13, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 4, 2015.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on December 18, 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
Complainant is Sixt SE, an international provider of mobility services, in particular vehicle rental and leasing services for business and corporate customers as well as private travelers. Founded in 1912, Complainant is represented in more than 100 countries worldwide, including the US. Complainant owns more than 200 trademark registrations for SIXT, including the following: European Community trademark no. 751065 for SIXT, registered on February 18, 1998 in classes 12, 36, 39; US trademark no. 2663752 for SIXT, registered on November 5, 1999 in class 39; US trademark no. 4767581 for SIXT, registered on September 12, 2014 in class 39; International trademark registration no. 729641 for SIXT registered on November 26, 1998 in classes 12, 36, 37 and 39.
Respondent has registered the disputed domain name <sixt-neuwagen.com> on May 29, 2015.
5. Parties' Contentions
Complainant highlights that previous UDRP decisions confirm its trademark recognition, amongst others, Sixt SE v. Giorgi Pharulava, WIPO Case No. D2014-1948 for <sixtrental.com>; Sixt SE v. Ruben Mirelman, WIPO Case No. D2014-1947 for <sixtrentals.com>; Sixt AG v. DSA QWE Inc., WIPO Case No. D2013-0504 for <sixt-supercars.com>, wherein the panels reached the conclusion that the popularity of Complainant's rental services and the goodwill attached to it was the reason why domain names were registered.
Complainant asserts that Respondent, despite not being authorized to use the SIXT trademark, has registered the disputed domain name <sixt-neuwagen.com> and is using it in connection with sponsored links, which Complainant believes to be pay-per-click links to various providers of car rental or leasing services, including competitors of Complainant. Furthermore, Complainant argues that the disputed domain name does not feature a disclaimer for the lack of relation with or endorsement by Complainant.
According to Complainant, the disputed domain name makes use of the element "sixt" as its distinctive element, which is identical to Complainant's SIXT trademarks. Furthermore, Complainant argues that generic Top-Level Domains ("gTLD") such as ".com" are disregarded for comparison purposes under the Policy, paragraph 4(a)(i) and that the different element "neuwagen" is a descriptive term meaning "new car", which is being currently used by Complainant in the German domain name <sixt-neuwagen.de> to promote leasing and financing of new cars.
Therefore, Complainant alleges that the addition of the descriptive term "neuwagen" is not distinctive or characteristic of the disputed domain name for consumers, as they tend to focus on the word "sixt" and associate it with Complainant's services. Given this scenario, Complainant contends that the disputed domain name is identical or confusingly similar to Complainant's registered trademark SIXT, once it makes use of the term "sixt" in its integrity, causing an inevitable likelihood of confusion before the addressed public, who will believe that the disputed domain name relates to Complainant's rental services.
Complainant further adds that Respondent has no rights or legitimate interests in respect of the disputed domain name, as Respondent is not authorized or licensed to use the SIXT trademark; is not affiliated with Complainant and not an authorized distributor of Complainant; and is not authorized to rent or lease vehicles on behalf of Complainant. Besides, Complainant argues that Respondent registered the disputed domain name <sixt-neuwagen.com> in awareness of the worldwide reputation of Complainant's trademark SIXT, registered many years before the disputed domain name and, for this reason, owner of prior rights over the distinctive expression.
Moreover, Complainant holds that Respondent registered and is using the disputed domain name in bad faith, with the intent of misleading Internet users as to the commercial origin of the website and taking unfair advantage of Complainant's trademark's reputation.
According to Complainant, the disputed domain name reverts to a website with pay-per-click links to various providers of car leasing and rental services, including Complainant's competitors, without any disclaimer of the lack of relation or endorsement by Complainant. This shows, according to Complainant, that Respondent's purpose is to own financial gain by capitalizing on consumers looking for car leasing and rental services offered by Complainant's SIXT trademark. Complainant makes reference to Sixt SE v. Ruben Mirelman, supra to support its claims.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The burden of proving these elements is on Complainant.
A. Identical or Confusingly Similar
Complainant has duly proven the first element under paragraph 4(a) of the Policy by attesting that it is the legitimate owner of trademark registrations for trademark SIXT in the US and in other countries worldwide.
The disputed domain name <sixt-neuwagen.com> incorporates Complainant's trademark SIXT in its entirety combined with the descriptive term "neuwagen", which is currently being used by Complainant in its German domain name <sixt-neuwagen.de>.
The Panel understands that the disputed domain name identically contains Complainant's trademarks and, for this reason, is sufficient to cause confusion and create false associations between Complainant and Respondent, misguiding consumers into believing that Respondent's activities have the same origin as to the products and services provided under Complainant's SIXT trademark.
The Panel therefore finds that the disputed domain name is confusingly similar to Complainant's trademark SIXT.
B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") as follows: "[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 [...]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest[s], the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
In this case, Complainant has provided sufficient prima facie proof of "no rights or legitimate interests", so the burden of production shifts to Respondent. As Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant's prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <sixt-neuwagen.com>.
The Panel acknowledges that Complainant has never entered in any agreement, authorization or license with Respondent regarding the use of Complainant's trademarks and that Respondent is not affiliated with Complainant's activities whatsoever.
The Panel also understands that Complainant owns trademark SIXT since December 17, 2002 and September 12, 2014 before the United States Patent and Trademark Office (USPTO); February 18, 1998 before the European Community Office; and November 26, 1998 before the World Intellectual Property Office, whereas Respondent only registered the disputed domain name on May 29, 2015. This shows that Complainant owns prior rights to the trademarks.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect to the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: "(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".
The Panel finds it is highly unlikely that Respondent had no knowledge of Complainant's company name and trademark SIXT at the time of registration of the disputed domain name, considering its well-known status and success in the car rental field.
The Panel also understands that the fact that Respondent used Complainant's trademark SIXT as the major component of the disputed domain name − considering that "neuwagen" is a descriptive term meaning "new car" − in circumstances in which Respondent did not have any rights to the respective trademark, is indicative of bad faith as well.
Furthermore, the disputed domain name is being used in connection with a commercial link service, or "link farm", as it is designed to lure users and divert them to other commercial sites. This is not a bona fide offering of legitimate goods or services and does not confer a right or legitimate interest in the disputed domain name (see e.g., Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584; Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi, WIPO Case No. D2004-0984; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550).
Consequently, it is clear to the Panel that the disputed domain name <sixt-neuwagen.com> may mislead consumers into believing that Respondent is affiliated or an authorized retailer of Complainant's products, which Complainant has confirmed not to be true.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith as per 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 name, <sixt-neuwagen.com>, be transferred to Complainant.
Gabriel F. Leonardos
Date: December 21, 2015