WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutz AG v. Contact Privacy Inc. Customer 0146762513 / Hosein Ezati
Case No. D2017-1077
1. The Parties
The Complainant is Deutz AG of Cologne, Germany, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.
The Respondent is Contact Privacy Inc. Customer 0146762513 of Toronto, Ontario, Canada / Hosein Ezati of North York, Ontario, Canada, self-represented.
2. The Domain Name and Registrar
The disputed domain name <irdeutz.com> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 1, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 12, 2017 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 amendment to the Complaint on June 13, 2017.
The Center verified that the Complaint together with the amendment to 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 June 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2017. The Respondent did not submit any formal response although the Respondent sent an email to the Center on June 18, 2017 and email correspondence ensued between the Respondent and the Complainant's representative. The Center notified the Parties of the commencement of the Panel appointment process on July 4, 2017. On July 5, 2017, the Respondent sent another email to the Center. The Respondent's communications with the Center and the Complainant's representative are dealt with below.
The Center appointed Antony Gold as the sole panelist in this matter on July 7, 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 company based in Cologne, Germany. It was founded in 1864 and it manufactures and distributes diesel engines and associated components for a wide range of machinery. It owns a large number of DEUTZ trade marks to protect its trading style. These include the following;
- International trade mark registration no. 174094 for DEUTZ, registered on January 21, 1954 in classes 7, 11 and 12;
- Trade mark registration no. 64056 for DEUTZ, registered in the Islamic Republic of Iran on March 18, 1989 in classes 6, 7, 9, 11 and 12;
- International trade mark no. 739507 for the Complainant's figurative trade mark for DEUTZ, registered on March 30, 2000 in multiple classes, including 7, 9 and 12.
The Complainant also owns a number of domain names incorporating its DEUTZ trade mark including <deutz.com> <deutzparts.ir> <deutz-parts.ir>and <deutz.co.ir>.
The Complainant operates in a large number of countries, including in the Islamic Republic of Iran where it has a branch office in Teheran.
The disputed domain name was registered on December 13, 2016. The Complainant has provided a screen print of the home page of the website to which the disputed domain name points. Most of the text is in Persian, but the Complainant's figurative trade mark and logo, with a trade mark registration symbol adjacent to it, are very prominent, as are photographs of an engine and engine components. Both the photograph of the engine and the figurative trade mark and logo are identical to those used on the home page of the Complainant's website at "www.deutz.com" and the design of both home pages is very similar.
5. Parties' Contentions
The Complainant says that the disputed domain name is confusingly similar to the Complainant's DEUTZ trade mark in that it incorporates that mark in its entirety and simply adds the prefix "ir". As ".ir" is the country code Top Level Domain ("ccTLD") for the Islamic Republic of Iran, the Complainant says that this small addition to the Complainant's trade mark will not serve to distinguish the disputed domain name from the Complainant and its DEUTZ trade mark. Rather, it is more likely that Internet users will assume that the disputed domain name is intended to identify the Complainant's business in the Islamic Republic of Iran.
The Complainant points to previous decisions under the Policy in which panels have found that the addition to a domain name which incorporates a third party's trade mark, of words or abbreviations denoting a state or geographical region is insufficient to render the domain name dissimilar to the trade mark. By way of example, in Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819, which related to the domain name <usacanon.com>, the panel found that the addition to the complainant's trade mark of purely descriptive matter such as "usa" did not avoid a finding of confusing similarity.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It says that it has not found any registered trade marks corresponding to DEUTZ belonging to the Respondent and that the entity promoting goods and services under the disputed domain name does not seem to have any connection with the word "deutz". The Complainant says that no licence or other authorization has been given by it to the Respondent to use its DEUTZ trade mark and that it has never had any direct contractual relationship with the Respondent.
The Complainant says that, whilst the Respondent's website purports to offer goods which are either original parts manufactured by the Complainant or third party-produced spare parts for the Complainant's engines, this does not constitute use of the disputed domain name in connection with a bona fide offering of goods.
The Complainant says that whether the goods offered for sale are genuine, rather than counterfeit, is immaterial. It says that any manufacturer or retailer of spare parts for engines would only have a strictly limited right to use the trade mark of the original manufacturer. Moreover, it says that such right would not generally include a right or legitimate interest to use the trade mark of the manufacturer of the original parts as part of a domain name. It draws attention to the decision in Deutz AG v. Liushuliang, WIPO Case No. D2013-1807, relating to the domain name <cndeutz.com>, in which the panel said that "Even if the Respondent were selling unoriginal spare parts compatible with the Complainant's products, this would not entitle the Respondent to registered the Disputed Domain Names containing the Complainant's DEUTZ trade mark with other non-distinctive elements".
The Complainant also refers to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, in which the panel considered the circumstances in which it might be permissible for a reseller or distributor to register a domain name which incorporated the trade mark of the manufacturer. The panel found that, in order for such a registration to be considered bona fide, the following conditions, as a minimum would need to be met;
- the registrant must actually be offering the goods and services at issue;
- the registrant must use the website only to sell the trademarked goods;
- the website must accurately disclose the registrant's relationship with the trade mark owner;
- the registrant must not try to corner the market in all domain names, thereby depriving the trade mark owner of the opportunity of reflecting its own mark in a domain name.
The Complainant says that the Respondent's registration does not fulfill the criteria set out above. In particular, it says that the Respondent's website does not accurately describe the relationship between the parties because, according to a Google translation of part of the Persian content on the home page of the website, the Respondent claims to be an "Importer and producer DEUTZ engine parts". The Complainant says that this is incorrect because the Complainant does not directly supply the Respondent or the company actually operating the website with spare parts and it is not a producer of original DEUTZ engine parts. Accordingly, the disputed domain name is not being used in connection with a bona fide offering of goods.
Lastly, the Complainant says that the Respondent has registered and is using the disputed domain name in bad faith. It says that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of the Respondent's website.
In support of this contention, the Complainant says, first, that when registering the disputed domain name, the Respondent was clearly aware of the Complainant's prior rights in its DEUTZ trade marks, including its registered trade mark for DEUTZ in the Islamic Republic of Iran. It says that the fact that the Respondent has used the website to which the disputed domain name points in order to sell engines and parts and has adopted the Complainant's and logo shows that it had the Complainant in mind as at the date of registration of the disputed domain name.
So far as bad faith use is concerned, the Complainant says that the Respondent has inaccurately claimed a relationship with the Respondent and is using the Complainant's trade mark to bait users and switch them to its own, competing products. It says that such conduct has been considered as use in bad faith by previous panels and that the Respondent is trying to exploit the reputation and prestige of the Complainant's DEUTZ trade mark for own activities.
The Respondent did not serve a formal reply to the Complainant's contentions. However, as outlined above, following notification of the Complaint and of a substantially similar complaint brought by the Complainant in relation to the domain name <irdeutz.ir>, of which the Respondent is also the registrant, a number of emails were sent by or on behalf of the Respondent to the Center and the Complainant's representative.
The first email, dated June 18, 2017, is from a sender called M Ezati (presumably the Respondent). The email claims that the disputed domain name is not owned by the Respondent, but that that he is a web site designer acting for a customer. He asks for clarification of the Complainant's requirements. On June 19, the Complainant's representative replied explaining that the Complainant was seeking a transfer to it of both domain names.
This email met with a response from the Respondent (sent from the same email address as the one used for the email on June 18, 2017) on the same date, the material parts of which are as follows: "Given that we are working to sell your products, and other companies in Iran, we intend to work with these domains 'without hurting your interests' […] Given the fact that our business is preparation and distribution of parts, tools and equipment of heavy vehicles including your company's products, transferring this domain to your company would be a huge loss for our interests and our business in Iran. According to the above, may you please consider one of the two below offers which are advantageous for both sides: May your company pay the costs that we have incurred for these domains? It is surely less that what you should pay for the legal actions. Is it possible to grant us as your distributor or e-shop in Iran? Since we have several years of useful experience in this field, this option would be better for us".
By email dated June 20, 2017, these proposals were rejected by the Complainant's representative.
On July 5, 2017, in response to the Panel's notification that it was proceeding to a panel appointment, a further communication was sent by the Respondent to the Center, the contents comprising a slightly abbreviated version of its communication dated June 19, 2017.
Paragraph 10 of the Rules includes the following provisions;
(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(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 determine the admissibility, relevance, materiality and weight of the evidence.
Having regard to the above provisions, the Panel intends to consider the issues raised by the Respondent in its communications with the Complainant's representative and the Center.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed 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 with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced extensive evidence of its DEUTZ trade marks, including the specific trade marks which have been detailed above. It has thereby established that it has rights in DEUTZ.
For the purpose of assessing similarity or identicality, the generic Top-Level-Domain ("gTLD") suffix ".com", is ignored. The disputed domain name comprises the DEUTZ trade mark coupled with the prefix "ir". Because ".ir" is the ccTLD for the Islamic Republic of Iran then, as the Complainant has said, it would be understood by many Internet users to denote the Islamic Republic of Iran. The Panel agrees with the Complainant's contention that Internet users aware of the Complainant's goods are likely to assume that the disputed domain name is intended to identify the Complainant's business in the Islamic Republic of Iran. The addition of the prefix "ir" does not therefore serve to render the disputed domain name dissimilar to the Complainant's trade mark or reduce any confusing similarity.
The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:
(i) before any notice of the dispute, it can show 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) it can show that it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Circumstances (ii) and (iii) above are, on the facts as outlined above, inapplicable. The issue which requires consideration is whether the Respondent can show (or whether the facts establish) that it has been using the disputed domain name in connection with a bona fide offering of goods and services.
As the Complainant has pointed out, whilst the decision in Oki Data, related to circumstances in which there was a contractual relationship between the owner of the trade mark and the reseller/distributor, the principles are also of application when there is no such relationship. The Panel accordingly considers it helpful to have regard to the four criteria used by the panel in Oki Data in determining whether the Respondent might be found to have rights or a legitimate interest in the disputed domain name.
First, is the Respondent offering the goods or services in issue? The available evidence is equivocal but the Complainant acknowledges the possibility that the Respondent might be selling either the Complainant's engines or other components. Moreover, the email exchange with the Respondent summarized above, tends to suggest that the Respondent is selling the Complainant's products or, at least, spare parts for them. The Respondent is considered to satisfy this criterion.
Second, is the Respondent using the site to sell only goods marked by the trade mark at issue? The Complainant has only provided a copy of the home page of the website to which the disputed domain name points. That does not provide any indication that the website is being used for the sale of products unconnected with the Complainant. Whilst recognizing that the Respondent's business might extend beyond the sale of engines and components connected with the Complainant, which might have been in fact confirmed by the Respondent in the above-referenced correspondence between it and the Complainant, the Panel will for purposes of its assessment assume that the website to which the disputed domain name points is not used as a means for offering for sale products or services connected with another manufacturer or indeed that the Respondent is engaging in a "bait and switch" approach. The Respondent is also considered to satisfy this criterion of the Oki Data test.
Third, does the Respondent's website accurately disclose its relationship with the Complainant? According to the Complainant, and not challenged by the Respondent, the home page of the Respondent's website contains, in Persian, a claim to be an "Importer and producer DEUTZ engine parts". This statement, in isolation, does not exclude the possibility that the Respondent is an independent company with no direct commercial links with the Complaint. But it is ambivalent, and clarity on the Respondent's status is important in order to ensure that Internet users are not deceived as to its connection, or lack of connection, with the Complainant. Moreover, the branding used by the Respondent on its home page is very similar to that used by the Complainant. It features a large photograph, identical to the image used by the Complainant on its home page. It uses the Complainant's figurative trade mark and logo and the design of the home page makes very similar use of the same shades of red, white and grey. Furthermore, there is a complete absence of any visual cues which might lead an Internet user to appreciate that the Respondent has no commercial relationship with the Complainant. Accordingly, taken as a whole, Internet users are likely to conclude from the home page of the Respondent's website that it is either operated by, or with the authority of, the Complainant. The Respondent does not accordingly meet this requirement of the Oki Data guidelines.
Last, has the Respondent tried to corner the market in all domain names thus depriving the trade mark owner of reflecting its own mark in a domain name? The Panel considers that the expression "all domain names" requires a sensible construction because, of course, the number of domain names which might incorporate the Complainant's trade mark is vast. Moreover, as outlined above, the Complainant already has at least three (3) domain names in the ".ir" ccTLD Registry so it has not been deprived of the opportunity of reflecting its mark in a domain name. However, it is not necessary for a distributor selling products connected with a third party to own more than a single domain name which incorporates the third party's trade mark. This registration of two domain names incorporating the Complainant's DEUTZ trade mark, when only one is required, casts further doubt over whether the Respondent is using the disputed domain name for a bona fide offering of goods and services.
The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
It is evident from the communications between the Complainant's representative and the Respondent summarized above that the Respondent was aware of the Complainant and its business as at the time of registration of the disputed domain name and that the disputed domain name was registered in order that the Respondent could claim an association with the Complainant's range of products. The form of the Respondent's website which was established within a relatively short period after registration, coupled with the lack of any statement which sought clearly to clarify that the Respondent was not an authorized distributor of the Complainant, points to the Respondent's intent from the outset being to confuse Internet users into believing that its website was operated by, or with the express approval, of the Complainant.
Paragraph 4(b)(iv) of the Policy provides that one of the non-exhaustive circumstances which will be evidence of the registration and use of a domain name in bad faith is if a respondent has, by using the domain name, intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site. This accurately characterises the Respondent's conduct in respect of the disputed domain name.
For this reason, the Panel accordingly finds that the disputed domain name was registered and is being used in bad faith. It is not therefore necessary to consider the Complainant's additional submissions.
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 <irdeutz.com> be transferred to the Complainant.
Date: July 21, 2017