WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dürr Aktiengesellschaft v. Rob Monster, Digital Town, Inc.
Case No. D2018-0757
1. The Parties
The Complainant is Dürr Aktiengesellschaft of Bietigheim-Bissingen, Germany, represented by Baker & McKenzie, Germany.
The Respondent is Rob Monster, Digital Town, Inc. of Bellevue, Washington, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain names <durr.boston>, <durr.shop>, <ecopaint.shop>, <schenck.miami> and <schenck.shop> are registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2018. On April 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 5, 2018, 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 April 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on May 23, 2018. 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 based in Bietigheim-Bissingen, Germany and is a leading manufacturer of automated mechanical and plant engineering systems, including products, systems and services in the chemical and pharmaceutical sectors. The Complainant manages and enforces the intellectual property rights of its two subsidiary companies, Dürr Systems AG and Carl Schenck AG, which, together with the Complainant, form the Dürr Group of companies. As there is no need in this decision to distinguish between the Dürr Group, the Complainant and its subsidiaries, they are collectively referred to as “the Complainant”, save where the context otherwise requires.
The Complainant can trace its roots back to 1895 and now conducts business in approximately 28 countries, including in the United States. It has around 14,900 employees worldwide. The Complainant is the registered proprietor of a number of trade marks, including the following (referred to below as “the Complainant’s trade marks”):
- European Union trade mark No. 005182654 for DÜRR (word mark), registered on August 2, 2007 in classes 6, 7, 9, 11, 12, 37 and 42;
- European Union trade mark No. 000065706 for ECOPAINT (word mark), registered on March 29, 1999 in class 7;
- German trade mark number No. 30032551 for SCHENCK (word mark) registered on July 13, 2000 in classes 7, 9, 12 and 42.
In addition, the Complainant has registered various domain names which incorporate its trade marks, including <durr.com>, which resolves to the global website of the Complainant, and <schenck.net>.
The disputed domain names registered by the Respondent are as follows:
- <durr.boston> (the “first disputed domain name”). This was registered on November 28, 2017 and resolves to a parking page containing a photograph of old buildings in an urban setting. Beneath the photograph are a number of pay-per-click links, in German, to a variety of goods and services, including various insurance-related services and pizza delivery services. There is a small banner at the top of the page stating, “This domain may be for sale. Click here to enquire”;
- <durr.shop> (the “second disputed domain name”). This was registered on September 18, 2017 and resolves to a parked page advertising the second disputed domain name for sale for $7,500; It is assumed that the currency reference is to US dollars, but this is unclear;
- <ecopaint.shop> (the “third disputed domain name”). This was registered on September 19, 2017 and resolves to a webpage which is identical to that to which the second disputed domain name resolves and similarly advertises the third disputed domain name for sale for $7,500;
- <schenck.miami> (the “fourth disputed domain name”). This was registered on December 15, 2017 and resolves to a website which features a very similar parking page to the second and third disputed domain names, albeit it invites an offer for the fourth disputed domain name rather than specifying a price;
- <schenck.shop> (the “fifth disputed domain name”). This was registered on September 19, 2017 and resolves to a webpage identical to that to which the second and third disputed domain names resolves and similarly features an offer to sell the fifth disputed domain name for $7,500.
5. Parties’ Contentions
The Complainant says that the first and second disputed domain names entirely incorporate its DÜRR trade mark and the word “Durr” represents the distinctive element of both disputed domain names. The only difference between the disputed domain names and the Complainant’s trade mark arises from the fact that it incorporates an umlaut – which is incapable of representation in ASCII domain names. “Dürr” is a distinctive term, known only in relation to the Complainant, and it has no independent meaning in German, English, French or any other language.
In the case of the first disputed domain name, the use of the generic Top-Level Domain (“gTLD”) “.boston” misleadingly indicates that the Complainant has a branch in Boston, Massachusetts, in the United States.
The addition of the gTLD “.shop” to the Complainant’s DÜRR trade mark is insufficient to differentiate the second disputed domain name from that mark.
The third disputed domain name incorporates the Complainant’s ECOPAINT trade mark in its entirety and without modification. The gTLD “.shop” does not serve to distinguish the third disputed domain name from that mark. ECOPAINT is a non-generic brand used by the Complainant in relation to its business. Whilst ECOPAINT indirectly alludes to the type of business undertaken by the Complainant, it is not purely descriptive. This has been confirmed by the registration of ECOPAINT as a trade mark by the European Intellectual Property Office, which did not refuse registration on the basis that the mark was non-distinctive or descriptive.
In the case of the fourth and fifth disputed domain names, the addition of the gTLDs “.shop” and “Miami” do not distinguish either disputed domain name from the Complainant or its SCHENCK trade mark. The SCHENCK trade mark is the distinctive component of both disputed domain names and they should be considered identical to it. As with the Complainant’s DÜRR trade mark above, the term “Schenck” has a specific meaning only in relation to Carl Schenck AG and has no meaning in German, English, French or any other language.
The Complainant asserts that none of the elements set out in paragraph 4(c) of the Policy which might point to rights or legitimate interests on the part of the Respondent in respect of the disputed domain names are present. The Respondent has no rights in any of the trade marks, has never been known by them, has no registered trade mark identical or similar to them anywhere in the world and has no current or future intention to conduct any legitimate business in relation to any of them. The Respondent is not a licensee of the Complainant and has not otherwise been permitted to use the trade marks belonging to the Complainant or to apply for, or use, any domain name incorporating those trade marks.
Previous UDRP panel decisions have held that once a complainant asserts a prima facie case demonstrating a respondent lacks rights and legitimate interests in a domain name, the burden of production shifts to the respondent to rebut this presumption, by providing evidence of its rights and legitimate interests. See the decision of the panel in Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, which found that the requirement under paragraph 4(a) of the Policy places an obligation on a complainant to prove matters which are peculiarly within the knowledge of a respondent and explains that, once a complainant has made out a prima facie case that the respondent does not own any relevant rights, the burden of rebutting the complainant’s case shifts to the respondent. See also Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252, which held that a respondent should be able to offer some documentary, or demonstrable evidence of his rights to and legitimate interests in a domain name.
Accordingly, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or names corresponding to them, in connection with a bona fide offering of goods or services before notice of the Complaint. The Respondent has not been, and is not commonly known, by any of the disputed domain names in accordance with paragraph 4(c)(ii) of the Policy. The Respondent is only known as variously, Rob Monster, Digital Town, Inc. or Epik, LLC. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers, or to tarnish the Complainant’s trade marks.
Lastly, the Complainant contends that the disputed domain names were registered and are being used in bad faith.
The Respondent registered the disputed domain names in order to prevent the Complainant from reflecting its trade marks in corresponding domain names. Pursuant to paragraph 4(b)(ii) of the Policy, such conduct is deemed to be evidence of bad faith registration and use, where it represents a pattern of conduct by a respondent. The Respondent was aware of the Complainant’s trade marks when registering the disputed domain names. The fact that the Respondent has registered multiple domain names, each of which incorporating one of the Complainant’s trade marks, represents a pattern of conduct by the Respondent sufficient to establish bad faith for the purposes of paragraph 4(b)(ii) of the Policy.
Each of the disputed domain names uses the Complainant’s trade marks without any modification which would serve to distinguish them from those marks. The Respondent has made minimal efforts to mask its intentional use of the Complainant’s trade marks and knew, or should have known, of the existence of the Complainant’s rights prior to the registration of the disputed domain names. Had the Respondent taken any active steps to research the availability of the Complainant’s trade marks, prior to registration of the disputed domain names, the Respondent would have immediately discovered the Complainant and its trade mark rights.
In accordance with paragraph 4(b)(i) of the Policy, evidence of registration and use in bad faith will also be found in circumstances in which the Respondent registered the disputed domain names primarily for the purposes of selling, renting or otherwise transferring the disputed domain names to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s documented out of pocket costs. All the disputed domain names resolve to webpages advertising them for sale, invite Internet users to make an offer and in the case of the second, third and fifth disputed domain names, advertise the price of the domain name as $7,500. Moreover, the Respondent’s bad faith is further underlined by the fact that the each of the disputed domain names incorporates gTLDs which indicate that they relate either to a shop, or a branch in the United States of the Complainant.
In addition, each of the disputed domain names have been registered and used in bad faith pursuant to paragraph 4(b)(iv) of the Policy; because the Respondent has used them to intentionally attempt to attract for commercial gain, Internet users to his websites, by creating a likelihood of confusion with the Complainant’s trade marks, as to the source, sponsorship, affiliation, or endorsement of the websites to which the disputed domain names resolve. Internet users will be attracted to the disputed domain names with the expectation of finding commercial websites related to the Complainant.
The Complainant further asserts that the disputed domain names all resolve to essentially inactive websites. This passive holding by the Respondent indicates his bad faith registration and use in accordance with paragraph 4(a)(iii) of the Policy, because none of the websites resolved to are genuinely active websites which would commercially justify the registration of the disputed domain names. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Finally, the Respondent has previously been found to register domain names in bad faith. See the previous panel decision in Oscar Studio di Cavallin Oscar and 5282 S.R.L v. Rob Monster, WIPO Case No. D2014-2257.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The details the Complainant has provided of its trade mark registrations for DÜRR, SCHENCK and ECOPAINT, as set out above, establish its trade mark rights in each of those marks.
When assessing the degree of similarity between a domain name and a complainant’s trade mark, the gTLD is typically disregarded as a technical requirement of registration. As explained at section 1.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[t]he practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to “new gTLDs”); the ordinary meaning ascribed to a particular TLD would not necessarily impact assessment of the first element. The meaning of such TLD may however be relevant to panel assessment of the second and third elements”.
The umlaut, which is a typographical symbol used in words in the German language to indicate a different vowel characteristic, and which is a component of the Complainant’s DÜRR trade mark, is of no significance in assessing the degree of similarity between the Complainant’s DÜRR trade mark and the first and second disputed domain names, because it is not technically possible to represent the umlaut within ASCII domain names.
Save for the umlaut, each of the disputed domain names fully incorporates, without alteration, the entirety of one of the three trade marks of the Complainant which have been set out above.
The Panel accordingly finds that the disputed domain names are identical to trade marks in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, three circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely;
(1) before any notice to it of the dispute, it had used or made 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
(2) it had been commonly known by the domain name, even if it had acquired no trade mark or service mark rights; or
(3) it was making 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.
Dealing with these grounds in reverse order, the use of the disputed domain names simply to point to websites which offer the domain names for sale is not a legitimate, noncommercial or fair use of the disputed domain names. Moreover, there is nothing to suggest that the Respondent has been commonly known by the disputed domain names. The Panel accepts the Complainant’s submission that the Respondent is not, nor has ever been, licensed or otherwise permitted by the Complainant to use its trade marks or register any domain name incorporating the trade marks and does not, so far as the Complainant is able to ascertain, own any of the trade marks or rights in the trade marks.
Turning to paragraph 4(c)(i) of the Policy, section 2.2 of the WIPO Overview 3.0 provides non-exhaustive examples of prior use, or demonstrable preparations to use a domain name, in connection with a bona fide offering of goods or services and explains that, “[w]hile such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required”. Merely offering the disputed domain names for sale does not amount to use in connection with a bona fide offering of goods or services. See, by way of example, Educational Testing Service v. TOEFL,WIPOCase No. D2000-0044, in which the panel found that simply using a domain name to advertise that it is for sale to any party does not support a respondent’s right or legitimate interest under the Policy.
The gTLDs “.shop”, “.boston” and “.miami”, are terms which might loosely be associated in some way with the Complainant and its business, albeit none of these words are obviously connected with an international engineering business in the manner contended for by the Complainant. But, for the reasons indicated above, it is not necessary for the Complainant to rely on the characteristics of the gTLDs chosen by the Respondent in order to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
As explained at section 2.1 of the WIPO Overview 3.0, “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”.
The Complainant has made out a prima facie case in relation to this aspect of the Policy and the burden of production accordingly shifts to the Respondent. In the absence of any response from the Respondent, it has failed to satisfy that burden.
The Panel accordingly finds that the Respondent does not have any rights or legitimate interests with respect to the disputed domain names.
C. Registered and Used in Bad Faith
The Complainant has asserted that the Respondent’s conduct falls within a number of the grounds set out at paragraph 4(b) of the Policy, which, without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These include those set out at paragraph 4(b)(i) of the Policy which, in summary, includes if the circumstances indicate that a respondent has registered or acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name.
Given that the words “Dürr”, “Schenck” and “Ecopaint” have no apparent independent meaning except in relation to the Complainant, it is highly improbable that the Respondent registered the disputed domain names which comprise the Complainant’s trade marks, in full and without alteration, over a period of approximately three months without an awareness of the Complainant and its trade marks. The websites resolved to by the second to fifth disputed domain names make plain that the Respondent’s intention in registering these domain names was to sell them to the Complainant or a competitor, to whom these disputed domain names would be of most value. The directory page resolved to by the first disputed domain name, whilst containing a photograph of an urban landscape and some links, evidently unrelated to either the Complainant or the city of Boston, United States, also indicates that the first disputed domain name is for sale, invites offers for it and is essentially in the same category as the other disputed domain names.
The stated cost set out in the websites resolved to by the second, third and fifth disputed domain names, of $7,500, is substantially more than any documented out-of-pocket costs directly related to these disputed domain names that the Respondent could have incurred. In the case of the first and fourth disputed domain names, the Respondent has not invited a fixed offer. However, it is reasonable to infer, in the light of the amounts sought by the Respondent in respect of the second, third and fifth disputed domain names, that the Respondent has been seeking appreciably more than a nominal sum for the sale of these disputed domain names. In ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425, the panel concluded that “[i]n the absence of contrary evidence, awareness of the Complainant’s mark coupled with an offer made to the general public to sell the domain name is evidence of registration and use in bad faith”.
The panel in Oscar Studio di Cavallin Oscar and 5282 S.R.L v. Rob Monster, WIPO Case No. D2014-2257, found it likely that the Respondent to these proceedings “intentionally set out to target the Complainants’ brand and to derive commercial gain on the back of the fame of the Complainants’ brand. The Respondent is a self-proclaimed expert in the consumer Internet area and the Panel believes it more likely than not that the Respondent will have investigated the potential of the Domain Name before acquiring it and will have monitored the use to which it has been put”. Note that section 3.1.2 of the WIPO Overview 3.0 explains that “UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration”.
Section 3.1.1 of the WIPO Overview 3.0 considers the factors that might support a Complainant’s case under paragraph 4(b)(i) of the Policy. Among the factors listed that might indicate that a respondent’s intent in registering a domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trade mark, is the respondent’s likely knowledge of the complainant’s rights, the distinctiveness of the complainant’s mark, a pattern of abusive registrations by the respondent and the failure of a respondent to present a credible evidence-backed rationale for registering the domain name. Each of these factors is present in the Respondent’s registration of the disputed domain names and/or its conduct in these proceedings. Moreover, as explained at Section 3.1.4 of the WIPO Overview 3.0, panels have consistently found that the mere registration of a domain name which is identical to a widely known trade mark by an unaffiliated third party creates a presumption of bad faith.
Having regard to all of these factors, the Panel accordingly finds that each of the disputed domain names was registered for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names.
The Panel accordingly finds the disputed domain names were registered and are being used by the Respondent in bad faith. It is therefore not necessary to consider the Complainant’s additional submissions in respect of this element 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 <durr.boston>, <durr.shop>, <ecopaint.shop>, <schenck.miami> and <schenck.shop> be transferred to the Complainant.
Date: June 6, 2018