WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cadea-Gesellschaft für Anwendung und Realisierung computerunterstützter Systeme mbH v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Scott Brickman
Case No. D2019-0490
1. The Parties
The Complainant is Cadea-Gesellschaft für Anwendung und Realisierung computerunterstützter Systeme mbH of Eichenau, Germany, represented by JonesDay Rechtsanwälte Patentanwälte, Germany.
The Respondents are Registration Private, Domains By Proxy, LLC, DomainsByProxy.com, of Scottsdale, Arizona, United States of America (“United States”) / Scott Brickman of Potomac, Maryland, United States.
2. The Domain Name and Registrar
The disputed domain name <cadiea.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2019. On March 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2019, 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 March 6, 2019, 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 March 8, 2019.
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 March 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2019.
The Center appointed Richard C.K. van Oerle as the sole panelist in this matter on April 11, 2019. 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 Cadea-Gesellschaft für Anwendung und Realisierung computerunterstützer Systeme mbH of Eichenau, a limited liability company incorporated under German law. The Complainant is engaged in the development and design of components and assembly processes for the automotive industry.
The Complainant is the proprietor of the following trademark registrations:
- German trademark no. 30168498 CADEA, filed on November 28, 2001, registered on May 17, 2002, for services in classes 41 and 42;
- European Union (“EU”) trademark no. 9835448 CADEA, filed on March 23, 2011, registered on September 1, 2011, for goods and services in classes 12 and 42;
- United States trademark no. 4,326,539 CADEA, enjoying the priority date of the aforementioned EU trademark;
- Canadian trademark no. TMA 844,733 CADEA, enjoying the priority date of the aforementioned EU trademark;
- Indian trademark no. 2122809 CADEA, enjoying the priority date of the aforementioned EU trademark;
All aforementioned trademarks have been registered and are in force.
The Complainant is using its trademark CADEAalso on its website ‘‘www.cadea.de’’.
The disputed domain name was registered on June 5, 2018, and does not lead to any active website.
5. Parties’ Contentions
The Complainant first argues that the disputed domain name is confusingly similar to its trademark CADEA. The only difference is the additional vowel “i”. As a result, users will believe the disputed domain name to be at least associated to the Complainant. The term “.com” does not distinguish the disputed domain name from the trademark, but rather is a technical requirement for registration and a mandatory addition for the disputed domain name in the ‘‘.com’’ generic Top-Level Domain (“gTLD”). Therefore, the addition of the term ‘‘.com’’ is regarded as insufficient to prevent threshold Internet user confusion.
The Complainant affirms that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the disputed domain name “cadiea.com” or any other domain name. Furthermore, the Respondent is not known under the disputed domain name and the Respondent does not use the disputed domain name as trade or business name.
The Complainant finally considers that the disputed domain name has been registered and is being used in bad faith. The disputed domain was registered and is being used only to seriously disrupt and harm the business of the Complainant. The Respondent was able to “hack” into the email correspondence between the managing director of the Complainant and its customer in the United States by using the email address “[...]@cadiea.com” instead of the original email address “[...]@cadea.de”. In such fake email, the customer was informed that the Complainant has established allegedly new bank details, and these false new bank details were provided with the email. In consequence, the amount of EUR 828,760 was transferred to this fake bank account. Following criminal police investigations, EUR 735,056.59 were recovered and are currently seized by the police on the fake bank account while criminal investigations by the German authorities are ongoing. The remaining EUR 93,703.41 had already been transferred to a foreign bank account and, thus, could not be recovered so far.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
I. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
II. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
III. the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1.)
The Complainant proves that it has rights in the trademark CADEA based on different trademark registrations. The trademark has been registered well before the Respondent registered the disputed domain name on June 5, 2018.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The added suffix “.com” does not change the finding that the disputed domain name is confusingly similar, since the suffix “.com” is understood to be a technical requirement. In making the comparison between the trademark and the disputed domain name, the gTLD “.com” is disregarded.
The trademark has no dictionary meaning, is fully incorporated into the disputed domain name. The only difference is the additional vowel “i”, by which the word remains meaningless.
The overall facts and circumstances of a case may support a finding of confusing similarity (WIPO Overview 3.0, section 1.7). In this case it appears from the fact that the email address “[...]@cadiea.com” was used to mislead someone, that the Respondent registered the disputed domain name precisely because it believed that the disputed domain name was confusingly similar to a mark held by the Complainant. From the facts mentioned above, it has become clear that the disputed domain name has indeed been confused with the Complainant’s trademark.
Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the disputed domain name <cadiea.com> or any other domain name. Furthermore, the Respondent is not known under the disputed domain name and the Respondent does not use the disputed domain name as trade or a business name.
The Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the disputed domain name.
In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
I. circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
II. you have 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 you have engaged in a pattern of such conduct; or
III. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
IV. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
The disputed domain name was registered long after the Complainant first registered its CADEA trademark. The evidence on the record provided by the Complainant with respect to the extent of use of its CADEA trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the Complainant’s CADEA trademark, and knew that it had no rights or legitimate interests in the disputed domain name. The evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to disrupt the Complainant’s business by using it as an email address to impersonate the Complainant for commercial gain. For all these reasons, the Panel is satisfied that the disputed domain name has been registered and is being used in bad faith.
The Panel therefore considers the requirement of paragraph 4(a)(iii) of the Policy to be met.
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 <cadiea.com> be cancelled.
Richard C.K. van Oerle
Date: April 25, 2019