WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Knorr-Bremse AG. v. WhoisGuard Protected, WhoisGuard, Inc. / Mosco Binzu
Case No. D2019-0616
1. The Parties
The Complainant is Knorr-Bremse AG of Munich, Germany, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Mosco Binzu of Baldivis, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <knor-bremse.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2019. On March 20, 2019, 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 March 21, 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 amendment to the Complaint on March 25, 2019.
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 April 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2019.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on May 2, 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 a well-known developer and manufacturer of braking systems for rail and commercial vehicles. It was founded in 1905 by Georg Knorr, a world pioneer of braking systems. It, therefore, derived its name of Knorr-Bremse from its founder coupled with the German word “Bremse” (in English “brakes”).
Over the years it developed its braking systems and is today one of the world's leading manufacturers of braking systems for commercial vehicles. It employs over 19 000 employees and has established over 90 locations in 27 countries with global sales of EUR 4.3 billion. It is the owner of several international, regional and national (notably Germany and the United States of America) trademarks including, inter alia, numbers 364102, 399312021, 000226803, 2566485 and 726778. All of which are of the word mark KNORR-BREMSE (either in capital letters or lower case). All these marks predate the date of registration of the disputed domain name which, according to WhoIs was February 20, 2019.
5. Parties’ Contentions
The Complainant asserts that the Respondent registered the disputed domain name in a slightly altered form, namely <knor-bremse.com>, as such that it is phonetically identical and “highly similar” if not identical in form to the trademarks of the Complainant. The Complainant contends, however, that this slight alteration by the omission of the letter “r” in no way detracts from the similarity of the disputed domain name when compared to the Complainant’s registered marks and this would clearly give rise to confusion thereby constituting an intrusion into the Complainant’s rights.
The Complainant states that it has not found any registered trademarks or trade names with this designation which, if anything, would be “typosquatting”. The Complainant also complains that the Respondent has not had any authority or license granted to it by the Complainant to use the trademark.
The Complainant contends further that the use and registration of the disputed domain name is clearly in bad faith. In particular, it asserts that the use of a site with sponsored links will generate traffic by would-be customers being attracted to the website of the disputed domain name resulting in commercial gain by the Respondent.
Moreover, the Complainant also contends that the misspelling of its mark was an obvious attempt to mislead would-be customers for the Respondent’s benefit.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and 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 the 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 a service mark in which the complainant has rights.
(ii) That the respondent has no rights or legitimate interests in respect of the domain name.
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration and use of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent’s rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii).
B. Effect of Default
Notwithstanding the fact that a respondent may be in default, the complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the complainant to a finding in its favor by reason thereof, as failure by the complainant to discharge the burden of proof will still result in the complaint being denied (M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, a.k.a. Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).
However, paragraph 14(b) of the Rules provides that, a panel shall draw such inference as it considers appropriate from the failure of a party, in the absence of exceptional circumstances, to comply with any provision or requirement under the Rules (Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942).
However, the Center has furnished proof that the Respondent received Notification of Complaint and Commencement of Administrative Proceeding, as well as the Complaint and its Annexures on April 3, 2019, by email. Attempts by the Center to deliver the Written Notice were, however, unsuccessful. The Panel is nevertheless satisfied that the Respondent was aware of the proceedings on receipt of the email notification albeit the attempted deliveries at its physical address were unsuccessful.
In the circumstances, the Panel considers that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003‑0994; Standard Innovation Corporation case, supra; VKR Holding A/S v. Above.com Domain Privacy/Host Master, Transure Enterprise Ltd., WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters case, supra; RX America LLC v. Matthew Smith, WIPO Case No. D2005-0540; Allianz case, supra; Standard Innovation Corporation case, supra; VKR Holdings A/S case, supra; Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc, WIPO Case No. D2012-1213).
C. Identical or Confusingly Similar
The Complainant is the owner, among others, of the trademark KNORR-BREMSE and, on the basis of its averments and contentions in this matter as to a worldwide reputation, the Panel considers that on the factual background relied upon by it, particularly as it is unchallenged by the Respondent, the Complainant has sufficiently established that it has registered trademark rights.
The Complainant contends that the substitution of a single letter is not sufficient to exclude the confusing similarity (Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435; VRL International Ltd. v. Domaincar, WIPO Case No. D2006-0240; Compagnie Gervais Danone v. Jose Gregorio Hernandez Quintero, WIPO Case No. D2009-1050; and Michelin Recherche et Technique S.A. case, supra).
This is particularly so, in the view of the Panel as it is supported by instances where a single letter has been added to a complainant’s mark which does not detract from it nevertheless being confusingly similar. (Transnet SOC Ltd v. SoftLayer Domains, Softlayer Domain Privacy / Castilo Walker, Trans Chain, WIPO Case No. D2018-2423 and similar cases cited therein).
These decisions illustrate the principle derived therefrom which is that where a respondent adopts a trademark or domain name of a complainant and alters it by adding or removing one letter that does not of itself alter a disputed domain name sufficiently with the result that it may still be identical phonetically (as in this case) or sufficiently similar to cause confusion. More so in this case where the word "knorr" is not a word in ordinary usage but the name of the Complainant’s founder.
In these circumstances, the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production of evidence shifts to the Respondent to rebut or displace the Complainant’s evidence in this regard, despite the overall burden of proof remaining upon the Complainant to disprove each of the three elements of paragraph 4(a) of the Policy. (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com case, supra; Statoil ASA (“Statoil”) v. Anoop Chetty, Telas case, supra).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established.
A search by the Complainant did not show that the Respondent had any trademarks, trade names or personal names corresponding to those of the Complainant's trademarks.
The Complainant contends that it is the proprietor of the trademark KNORR-BREMSE, and that the Respondent has not been given any permission to register or use any domain name adopting or similar to the trademark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark as part of the disputed domain name and that any unauthorized use for commercial purposes would most likely violate the exclusive trademark rights enjoyed by the Complainant. (Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055; Caesar’s World, Inc. and Park Place Entertainment Corporation v. Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp. v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase Inc. v. Analytical Systems, WIPO Case No. D2004-0360; San Lameer case, supra).
Apart from there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase Inc. case, supra).
In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but 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:
“(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 trade mark 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 trade mark 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.”
While bad faith can exist where a domain name contains in its entirety a Complainant’s trademark (Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028), the Panel does not see that this principle cannot also apply in circumstances where the domain name almost in its entirety, save for a one letter change, is an intentional adoption of the Complainant’s registered trademark and domain names, whether this amounts to is “typosquatting” or otherwise.
The implication arising from the disputed domain name, in the mind of a would-be customer, is therefore clearly that it is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with the Complainant via someone authorized on its behalf in relation to its goods. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith. (Media24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer case, supra).
In addition, the fact that the disputed domain name leads to sponsored links is likely to attract customers to the Respondent’s website and resulting in commercial gain for the Respondent (LEGO Juris A/S v. Moustafa Mahmoud, WIPO Case No. D2012-2047).
Furthermore, by use of a domain name confusingly similar to the Complainant’s trademark, the Respondent is trading on the value established by the Complainant in its marks to attract Internet users and thereby deriving economic benefit from either those users attracted to the Respondent’s website or by receiving compensation from others if these would-be customers are routed elsewhere. Such a practice also would constitute bad faith (Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587).
The selection of a domain name that is the same as, or confusingly similar to the Complainant’s trademark and the Complainant’s domain names, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore selected the disputed domain name in circumstances where it must have been well aware of the Complainant’s reputation and intended to benefit therefrom. (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Barclays Bank PLC case, supra).
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <knor-bremse.com> be transferred to the Complainant.
Archibald Findlay SC
Date: May 7, 2019