WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jungheinrich AG v. James White
Case No. D2018-1562
1. The Parties
The Complainant is Jungheinrich AG of Hamburg, Germany, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is James White of Pitts, Pennsylvania, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <us-jungheinrich.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 11, 2018. On July 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 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 July 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 10, 2018.
The Center appointed Knud Wallberg as the sole panelist in this matter on August 15, 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 was founded in 1953 and is a leading provider of intralogistics and technical storage solutions.
The Complainant is the owner of several registrations of the trademark JUNGHEINRICH including the United States Trade Mark registration No. 2240031 registered on April 20, 1999 for goods and services in classes 6, 9, 12 and 37.
The Complainant also owns a number of domain names that include the trademark JUNGHEINRICH, of which the domain name <jungheinrich.com> is used for the Complainant´s main international website.
Respondent registered the disputed domain name<us-jungheinrich.com> on June 13, 2018. The disputed domain name does not resolve to an active website but it is used, according to the evidence submitted with the Complaint, as an email address to conduct a phishing scheme.
5. Parties' Contentions
The disputed domain name, which contains the Complainant's trademark JUNGHEINRICH in its entirety with the addition of the suffix "us-" is confusingly similar to the Complainant's trademark.
The Complainant has not licensed the Respondent to use the JUNGHEINRICH trademark and the Respondent is not otherwise authorized to act on the Complainant's behalf. Further, the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has used the disputed domain name to engage in fraudulent activities. The Respondent has sent out emails in which it has presented itself as a representative of the Complainant, as evidenced by Annex 8 to the Complaint, using an email address that reflects the disputed domain name. Such conduct is evidence of bad faith under Policy, paragraph 4(b).
In addition, the Complainant has registered a number of domain names that contains well-known brands with the addition of the suffix "us-", which is a clear indication of bad faith conduct.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <us-jungheinrich.com > is confusingly similar (in the sense of the Policy) to the Complainant's registered trademark JUNGHEINRICH. The disputed domain name incorporates this mark in its entirety with the addition of the prefix "us-" and the generic Top-Level Domain ("gTLD") ".com", which do not dispel a finding of confusing similarity in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Given the circumstances of this case, and in particular the way that the Respondent has been and is using the disputed domain name (discussed below) the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not produced, and indeed there is no other evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the 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 trademark or service 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; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case including the evidence on record of the longstanding of use of the Complainant's trademark, and the distinctive nature of the mark JUNGHEINRICH, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant's mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
As to the use of the disputed domain name the Respondent is using the disputed domain name for what appears to be a phishing scheme to deceive customers or potential customers of the Complainant by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's activities. This constitutes bad faith use under the Policy, see, inter alia, National Westminster Bank plc v. Abdelilah Jadron, WIPO Case No. D2013-2232; NAS Rentals Holdings, Inc. v. Domains By Proxy LLC and Allison Mills, WIPO Case No. D2013-1812; and Valero Energy Corporation, Valero Marketing and Supply Company v. Maurine flavour seafoods, WIPO Case No. D2013-1849.
Complainant further argues that Respondent shows a pattern of bad faith by holding registrations for other domain names that misappropriate well-known trademarks, including inter alia <us-velux.com>, <us−ford.com>, <us-goodyear.com>, <us-ferrarisales.com>, and <us-renault.com>. Referring to the panel decision in Moog Inc. v. James White, WIPO Case No. D2018-0886, the Panel agrees that this constitutes a pattern of bad faith under Policy paragraph 4(b)(ii).
Noting that the disputed domain name incorporates a registered and widely-known trademark, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, that the Respondent is engaged in a pattern of bad faith registrations of domain names and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <us-jungheinrich.com> be transferred to the Complainant.
Date: September 4, 2018