WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
thyssenkrupp AG v. WhoisGuard Protected, WhoIsGuard Inc. / Mark Lawrence, The Great Train Stores
Case No. D2017-1793
1. The Parties
The Complainant is thyssenkrupp AG of Essen, Germany, internally represented.
The Respondent is WhoisGuard Protected, WhoIsGuard Inc. of Panama City, Panama / Mark Lawrence, The Great Train Stores of Mercer County, New Jersey, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <thyssenkrupp-marinesystems.org> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2017. On September 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2017, 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 September 18, 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 amended Complaint on September 22, 2017.
The Center verified that the Complaint together with 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 Respondent of the Complaint, and the proceedings commenced on September 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2017.
The Center appointed Jane Lambert as the sole panelist in this matter on October 26, 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 public company incorporated in Germany. It was formed through the merger of two well known German public companies, Thyssen AG, which was founded in 1891, and Friedrich Krupp AG, which was founded in 1811 but traces its origins much further into German history.
The Complainant and its subsidiaries throughout the world are among the world’s largest steelmakers and manufacturers. Their products range from lifts for buildings to warships for the German and foreign navies.
Ships, naval equipment and associated services are supplied by the Complainant’s subsidiary, Thyssenkrupp Marine Systems GmbH.
That same subsidiary is the registered proprietor of the European Union trade mark THYSSENKRUPP MARINE SYSTEMS which was registered at the European Union Intellectual Property Office for the following classes of goods and services with effect under registration number EU004032447 from September 17, 2004:
Water vehicles and parts therefor, surface and underwater naval vessels, merchant ships and yachts, driving machines and auxiliary engines and parts therefor, for ships.
Repair, modernisation, conversion and maintenance, in particular carrying out shipbuilding and mechanical engineering repairs of all kinds, repair and maintenance of electric and nautical installations, ship conservations and ship conversions.
Engineering, in particular with regard to the planning and construction of ships.”
The Complainant itself is the registered proprietor of THYSSENKRUPP trade marks in many countries around the world including the United States where the Respondent, Mark Lawrence, is said to be located and Panama where the Respondent, WhoIsGuard Inc., carries on business.
According to the Complainant, anyone who types the disputed domain name into a browser is redirected to Thyssenkrupp Marine Systems GmbH’s website at “www.thyssenkrupp-marinesystems.com”. The Complainant also alleges that the disputed domain name has been used for emails to Thyssenkrupp Marine Systems GmbH’s customers and competitors with links to dangerous malware.
The Complainant has no connection with the Respondent and has never authorized or licensed the Respondent to use any of its trade marks or those of its subsidiaries.
Nothing is known of the Respondent beyond the information that has been disclosed by the Registrar upon the request for verification.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name on the following grounds.
If the generic Top-Level Domain (“gTLD”) “.org” is disregarded, the disputed domain name is identical to Thyssenkrupp Marine Systems GmbH’s trade mark EU004032447.
As the Complainant has never licensed or authorized the Respondent to use any of its trade marks or those of its subsidiaries, the Respondent can have no rights or legitimate interest in the disputed domain name. Were he to use or attempt to use such trade marks anywhere in the world, it could be injuncted for trade mark infringement or passing off. The Complainant adds that it is highly unlikely that the Respondent would have chosen the name coincidentally or can otherwise justify the use of the Complainant’s corporate name or trade marks.
The Complainant contends that the redirection of those who type the disputed domain name into their browser is intended to induce them to believe (or is likely to have the effect of leading them to believe) that the disputed domain name is an official domain name of the Complainant in the expectation or hope that they will drop their guard when they receive emails from the disputed domain name. Those who accept the emails and click the links risk infection by the malware.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Respondent’s registration agreement incorporated the Policy which provides:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that;
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
A. Identical or Confusingly Similar
The Panel is satisfied that the first element is present.
She agrees with the Complainant that the disputed domain name is identical to the corporate name of the Complainant’s subsidiary Thyssenkrupp Marine Systems GmbH if the gTLD “.org” and the abbreviation “GmbH” which stands for “Gesellschaft mit beschränkter Haftung” or “company with limited liability” are disregarded. It is also identical to the EU004032447 trade mark if the above-mentioned gTLD is disregarded.
Whether intentional or not, the Panel also agrees that the redirection to the website “www.thyssenkrupp-marinesystems.com” is likely to cause users to believe that the disputed domain name is an official domain name of the Complainant which would amount to confusing similarity.
B. Rights or Legitimate Interests
The Panel finds the second element is present.
Section 2.1 of the WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) contains the following guidance:
“While the overall burden of proof in UDRP proceedings is on the complainant, previous UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
As the Respondent has failed to respond to the Complaint, the Panel’s task is to determine whether the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests. In the Panel’s judgment, the Complainant has met that requirement. It has adduced evidence of its trade mark registrations for THYSSENKRUPP and THYSSENKRUPP MARINE SYSTEMS. In the absence of evidence of prior use of one or other of those trade marks (which is highly unlikely) or a licence from the Complainant or its subsidiaries (which is denied) any use of the disputed domain name would be unlawful.
For the sake of completeness, there is no evidence that any of the circumstances in paragraph 4(c) of the Policy applies.
C. Registered and Used in Bad Faith
The Panel finds the third element to be present.
The term “bad faith” is not defined in the Policy but section 3.1 of the WIPO Overview states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. To facilitate assessment of whether this has occurred, the WIPO Overview adds that paragraph 4(b) of the Policy provides a number of scenarios that constitute evidence of a respondent’s bad faith. It is important to note that those circumstances evidence “unfair advantage or abuse” but do not constitute it and that the words “without limitation” indicate that other evidence can be considered.
The meaning of the words “unfair advantage” or “abuse” of a trade mark is perhaps even more obscure that the concept of bad faith that they are supposed to illuminate. In the Panel’s view, Mr. Justice Arnold provided a much more helpful definition in Red Bull GmbH v Sun Mark Ltd and another  EWHC 1929 (Ch) (17 July 2012) at paragraph  of his judgment :
“[B]ad faith includes not only dishonesty, but also ‘some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined.’"
All the circumstances provided by paragraph 4(b) of the Policy would fall within that definition.
The disputed domain name has been used for emails that are intended to spread malicious software. That is self-evidently conduct that falls short of acceptable commercial behaviour by anybody’s standards. That clearly satisfies the requirement of use in bad faith.
What about registrationin bad faith? In paragraph 6.A the Panel observed:
“Whether intentional or not, the Panel also agrees that the redirection to the website
“www.thyssenkrupp-marinesystems.com/ is likely to cause users to believe that the disputed domain name is an official domain name of Thyssenkrupp Marine Systems GmbH.”
That is obviously a foreseeable consequence of the redirection to the website “www.thyssenkrupp-marinesystems.com”. It is also foreseeable that it might cause some recipients of infected emails with the disputed domain name to drop their guard. It is therefore reasonable to infer that that was the Respondent’s intention. Accordingly, the Panel concludes that:
- the disputed domain name was registered to facilitate the spread of infected software,
- it was used for such purpose,
- registration for such use falls short of acceptable commercial behaviour, and therefore
- the disputed domain name was registered as well as used in bad faith.
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 <thyssenkrupp-marinesystems.org> be transferred to the Complainant.
Date: November 2, 2017