WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sew-Eurodrive GmbH & Co. KG v. Hamed Shirkhodai
Case No. D2017-0380
1. The Parties
The Complainant is Sew-Eurodrive GmbH & Co. KG of Bruchsal, Germany, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Hamed Shirkhodai of Tehran, Islamic Republic of Iran, self-represented.
2. The Domain Name and Registrar
The disputed domain name <sew-eurodrives.com> is registered with Realtime Register B.V. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2017. On February 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2017, 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.
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 the Respondent of the Complaint, and the proceedings commenced on March 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 24, 2017. An email communication from the Respondent, which will be referred below, was received on April 24, 2017.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on May 4, 2017. 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 a German manufacturing company operating in the technology sector, producing various products including motorized gearboxes. The Complainant operates under the name Sew- Eurodrive GmbH & Co. KG. The Complainant is the holder of various trademarks including "sew-eurodrive", such as International Trademark Registration No. 646909 SEW-EURODRIVE (word mark), registered on August 21 1995, and German Trademark Registration No. 970102 SEW-EURODRIVE (word mark), registered on April 14, 1978.
The disputed domain name <sew-eurodrives.com> was registered on September 20, 2016. According to the evidence submitted with the Complaint, the disputed domain name resolved to a website with a similar "look and feel" to the Complainant's website.
5. Parties' Contentions
The Complainant is a company founded in Germany in 1931 by Christian Pähr under the name "Süddeutsche Elektromotoren Werke". Today the Complainant operates under the name "Sew- Eurodrive GmbH & Co. KG", or in its short form "Sew-Eurodrive". The Complainant operates worldwide and employs over 16,000 people. It has 15 production plants and 77 drive technology centers in 51 countries on five continents. Complainant is a world leader in drive technology and a pioneer in drive-based automation and is known for quickly solving the most difficult power transmission and motion control challenges. It has EUR 2.7 billion in sales and offers a broad product line in its industry – from gear motors and heavy industrial gear units to electronic drives, software and complete drive-based automation systems.
The SEW-EURODRIVE trademark is well known worldwide. The Complainant actively promotes its SEW−EURODRIVE trademark through its website linked to the domain name <sew-eurodrive.com>.
The SEW-EURODRIVE trademark is registered in various countries around the world, including the Islamic Republic of Iran, and is used in relation to the Complainant's global business of designing and developing mechanically powered transmission systems and motor control electronics.
The Complainant has used its SEW-EURODRIVE trademark continuously since well before the first trademark registration in 1978, and whilst the Complainant was known as SEW from as early as its foundation in 1931, SEW-EURODRIVE was used for Complainant's business from 1971 onwards.
The Complainant uses the SEW-EURODRIVE trademark in its external communication and branding, e.g., on its company website accessible at "www.sew-eurodrive.com", on the products it sells, on buildings, and on advertisements.
The Complainant has become aware of the registration and use of the disputed domain name <sew−eurodrives.com> which resolves to a website which is an almost exact copy of the Complainant's website.
The Complainant's contentions are that:
a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights;
b) The Respondent has no rights or legitimate interests in the disputed domain name;
c) The Respondent registered and is using the disputed domain name in bad faith.
The Complainant seeks the transfer of the disputed domain name to itself.
The Respondent did not file a formal response in reply to the Complainant's contentions. However, the Respondent sent an email communication to the Center on April 24, 2017, which the following content:
"I am a website designer in Iran
only to sell more SEW products by name (www.sew-eurodrives.com) I have made this website of adlisanat
Adlisanat is not seller of SEW products
Only i used this name for seller SEW products a little
You are right
I am very sorry for this mistake
I deleted all the following
6. Discussion and Findings
The Rules state that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate (paragraph 15 of the Rules).
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non−exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <sew-eurodrives.com> incorporates the Complainant's SEW-EURODRIVE trademark in its entirety.
In Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435, the panel stated that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. The panel took a similar view in Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888.
In this case, the disputed domain name incorporates the Complainant's SEW-EURODRIVE trademark in its entirety with the addition of the letter "s" at the end of the trademark. The Complainant contends that the sole addition of the letter "s" will be perceived by the Internet user "as representing the plural form of Complainant's trademark, if perceived at all. This addition is therefore insufficient to distinguish the disputed domain name from Complainant's SEW-EURODRIVE trademark and will accordingly not remove the confusing similarity". In F. Hoffman-La Roche AG v. PrivacyProtect.org, Domain Admin/Edwin Ilminovic, N/A, WIPO Case No. D2013-0945,the panelstated that: "The Domain Name <valiums.info> includes the trademark VALIUM of the Complainant and the only difference is the letter 's' added at the end, which does not sufficiently distinguish the Domain Name from the trademark."
The addition of the generic Top-Level Domain ("gTLD") ".com is incapable of amounting to a distinguishing feature since such addition is without significance from the standpoint of comparing the disputed domain name and the Complainant's marks under the Policy: the use of a gTLD is a technical requirement for domain name registrants.
The Panel finds the disputed domain name to be confusingly similar to the Complainant's mark, and is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends first that the Respondent is not commonly known by the disputed domain name: "… the Whois records indicated on February 22, 2017 that Respondent is named 'Hamed Shirkhodai'. Consequently, Respondent is not commonly known by the disputed domain name."
Second, the Respondent has not acquired trademark or service mark rights and Respondent's use and registration of the disputed domain name was not authorized by Complainant: "In the absence of any license or permission from Complainant to use its well-known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed."
Finally, the Complainant states that the disputed domain name: "is used to resolve to a website which is an almost exact copy of Complainant's website. Respondent even went so far as to modify Complainant's trademark by adding the letter 's' in the same color and font. Obviously, such use cannot constitute a legitimate or fair use according to the policy. Such use only increases the likelihood of confusion for Internet users who may be convinced that they are visiting Complainant's legitimate website or who may be contacted via email by Respondent for fraudulent purposes."
The Respondent was entitled to deal with the Complainant's allegations, and was entitled to demonstrate any rights or legitimate interests in the disputed domain name by way of the circumstances listed in paragraph 4(c) of the Policy. The Respondent has not done so. It is for the Complainant to prove the three elements of paragraph 4(a) of the Policy. However, it is established that, once the Complainant has made out a prima facie case, it is then a matter for the Respondent to answer that case.
Based on the above, the Panel is satisfied that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Registration in bad faith
The Complainant contends that it is evidence of registration in bad faith if at the time the Respondent registered the disputed domain name it must have known of the Complainant and its trademarks. In LANCOME PARFUMS ET BEAUTE & CIE, L'OREAL v. 10 Selling, WIPO Case No. D2008-0226, the panel stated that: "In light of the reputation of the LANCOME and L'OREAL trademarks, the reproduction by Respondent of those trademarks in their entirety, and the combination of each of those trademarks with generic and descriptive terms or with misspelling errors, it is clear that Respondent in all likelihood knew of the existence of Complainants' trademarks and of their relevance in the United States market. As decided before, 'knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith' […]".
The Complainant notes the following matters:
- The reputation of Complainant's trademark follows directly from the fact that Respondent has simply copied the Complainant's figurative trademark on the website linked to the disputed domain name, "even modifying it in such a way that it matches the disputed domain name by adding the letter 's' […]".
- The disputed domain name redirects to a website which is almost identical to the Complainant's website.
- The Complainant's SEW-EURODRIVE trademark is also protected in the Islamic Republic of Iran, where the Respondent resides.
Use in bad faith
The Complainant contends that the use of a domain name that is the same as or similar to a Complainant's trademark "suggests at the very least an endorsement of, or affiliation with, Respondent's service […] In the present case, the impression of an endorsement or affiliation is increased by the fact that the disputed domain name simply redirects to a website constituting an almost exact copy of Complainant's genuine website."
Further, the Respondent has included one working bookmark on the website linked to the disputed domain name. This bookmark redirects to a page listing all of the Complainant's partners worldwide: "While a lot of those partners' contact information is incorrect, the list also at one point is inconsistent with Complainant's actual list of partners. The list contains one authorized seller for Iran, while Complainant, nonetheless, does not deliver any goods to Iran and has no business relations with Iran. Remarkably, the website of this authorized seller, Adli Company, is registered to Respondent. It seems that Respondent is using the website linked to the disputed domain name to illegitimately convince clients of an affiliation to Complainant's business. By taking advantage of Complainant's reputation for commercial gain, Respondent clearly demonstrates a use in bad faith."
The Complainant submits that it is impossible to imagine any plausible legitimate use of the disputed domain name by the Respondent "especially in view of the well-known character of Complainant's trademark and the link between the disputed domain name and Complainant's business."
Again the situation is that the Respondent had the opportunity to answer the Complainant's case by submitting a Response, but has not done so. To the contrary, the assertions made by the Respondent in his email sent to the Center on April 24, 2017, seem to confirm the Complainant's contentions made in the Complaint. The Panel is satisfied that the Complainant has proved the requirements of paragraph 4(a)(iii) 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 <sew-eurodrives.com> be transferred to the Complainant.
Anthony R. Connerty
Date: May 13, 2017