WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thyssenkrupp AG v. Domain Administrator / Samy Sabbah, Kamalahmadpbn
Case No. D2019-0846
1. The Parties
The Complainant is Thyssenkrupp AG, Germany, represented internally.
The Respondent is Domain Administrator, United States of America (“United States”) / Samy Sabbah, Kamalahmadpbn, Canada.
2. The Domain Name and Registrar
The disputed domain name <thyssenkrupp-automotive.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2019. On April 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 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 April 17, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On April 17, 2019, the Respondent sent an email communication to the Center, stating, “please give him back the domain”. The Center sent a communication concerning settlement to the Parties on April 17, 2019. The Complainant filed an amended Complaint on April 18, 2019. On April 18, 2019, the Complainant requested the suspension of the proceedings for 30 days. The administrative proceeding was suspended on April 18, 2019.
On May 14, 2019, the Respondent sent an email communication to the Center, stating, “please take the domain from my account. I don’t need it. I don’t want problem”. On May 17, 2019, the Complainant requested the reinstitution of the proceeding.
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 May 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2019. On May 24, 2019, the Respondent sent an email communication to the Center, stating, “Is it good now? What else you need from me?? Thank you”. The Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of panel appointment process on June 10, 2019.
The Center appointed Jon Lang as the sole panelist in this matter on June 20, 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 diversified industrial group with more than 161,000 employees and a revenue in excess of EUR 42.7 billion. It is one of the world’s largest steel producers with a presence in several countries of the world. The Complainant owns several trademark registration for THYSSENKRUPP in many different countries, including International word mark registration No. 731636 for ThyssenKrupp (Registration date: July 7, 1999) claiming protection in 41 countries in various classes, and International registration No. 1342637 for thyssenkrupp, (Registration date: June 15, 2017) claiming protection in 65 countries, again in various classes including Class 12: “Vehicles, apparatus for locomotion by land, air or water; parts for vehicles and apparatus for locomotion by land, air or water, included in this class; bodies of metal for vehicles and apparatus for locomotion by land, air or water; engines for land vehicles.” The Complainant also has registered trademarks in Canada where the Respondent is based.
The Complainant operates its main webpage at “www.thyssenkrupp.com”, the domain name being registered on December 5, 1996, and is also the registrant of numerous other domain names containing its trademark and company name “thyssenkrupp”, including <thyssenkrupp.de> and <thyssenkrupp.com>.
Not much is known about the Respondent other than that he registered the disputed domain name, <thyssenkrupp-automotive.com> (the “Domain Name”) on November 28, 2018, and it resolves to a website which deals with cars.
5. Parties’ Contentions
The following is a summary of the main assertions of the Complainant.
The Complainant is well-known under the THYSSENKRUPP trademark and brand name and maintains a strong online presence.
One the Complainant’s business areas is “Component Technologies” part of which is concerned with the design, development and sale of automotive equipment. Certain consumers will mistakenly assume that the website to which the Domain Name resolves is the Internet presence of the Complainant’s automotive division which has intensive business activities in North America.
The Domain Name not only infringes the Complainant’s trademark rights, but also blocks the Complainant from being able to create its own Internet appearance for its automotive division under a domain name which is reflective of it, namely “Thyssenkrupp Automotive”. The Complainant not only has a legitimate interest in stopping the infringement, but also in using the Domain Name itself.
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant enjoys wide trademark protection for the word mark THYSSENKRUPP (and other trademarks) by means of several trademark registrations.
The THYSSENKRUPP trademark has been used intensively since its first registration in April 1999.
The Domain Name is confusingly similar to the THYSSENKRUPP trademark. The generic Top-Level Domain (“gTLD”) of a domain name, e.g., “.com” does not affect the analysis. The term “thyssenkrupp” is the distinctive element of the Domain Name. It is fanciful and has no meaning at all for goods and services offered under it. The term “automotive” is a hint towards a specific industrial sector, is clearly descriptive, has no distinctive character and therefore no dominant role in the Domain Name. The sole dominant element of the Domain Name “thyssenkrupp” is prominently located at the beginning of the Domain Name. The relevant public’s attention is captured more by the initial parts of a sign.
The “thyssenkrupp” element of the Domain Name coincides with the Complainant’s company name.
There is not only an identity regarding the term “thyssenkrupp”, but also regarding the goods that are covered by the THYSSENKRUPP trademark, given that the Domain Name resolves to a website dealing with cars.
The Complainant’s THYSSENKRUPP trademark is used intensively in the market place. It is not only found on protected goods, but is also used in connection with protected services, as well as on the Complainant’s catalogues, ads and other printed advertising medium. It is of course also used intensively on the Internet, particularly on the Complainant’s websites.
Relevant consumers who know the Complainant’s THYSSENKRUPP trademark will assume that there is at least an economic link between the Complainant and the holder or user of the Domain Name. Given the distinguishing element of the Domain Name (“thyssenkrupp”) and the fact that the Domain Name is also used for goods which are identical to those for which the Complainant’s trademarks are protected, there is a likelihood of confusion on the part of the public.
The Respondent has no rights or legitimate interests in respect of the Domain Name
The Respondent has never sought or obtained any trademark registrations that correspond with the Domain Name, and has never been authorized by the Complainant to register or use any of its trademarks, or to register or use any domain name incorporating the Complainant’s trademark or company name. The Respondent has no connection at all with the Complainant or any of its affiliates.
The term “thyssenkrupp”, which corresponds with the Complainant’s company name and trademarks, is included without modification in the Domain Name and represents its dominant element. Accordingly, a trademark infringement is obvious.
There can be no doubt that the Respondent had knowledge of the Complainant’s well-known trademarks when choosing the Domain Name. Accordingly, the Respondent could not have been using or preparing to use the Domain Name in connection with a bona fide offering of services prior to the dispute.
The Respondent registered the Domain Name in order to benefit from the Complainant’s reputation which constitutes neither a bona fide use of the Domain Name nor a legitimate noncommercial or fair use. Free‑riding on the rights of another does not constitute a bona fide use of a domain name, and thus the Respondent cannot claim any rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith
Given the Complainant’s reputation and market presence, it is clear that the Respondent was aware of the Complainant and its THYSSENKRUPP trademark. It would have been impossible for the Respondent to “invent” a domain name that comprises a term that is exactly the same as the unique name of the Complainant, i.e., “thyssenkrupp”.
The only purpose of the registration of the Domain Name was to prevent the Complainant from reflecting its trademark in a corresponding domain name. There can be no doubt that this was the purpose - to block the Complainant from registering the Domain Name and derive an economic benefit. The registration was undertaken in bad faith.
The Respondent has also used the Domain Name in bad faith.
The Complainant’s company name as well as its THYSSENKRUPP trademark have a strong reputation and are widely known, not only in Germany but also in many other countries of the world. It is inconceivable that the Respondent has legitimate plans to use the Domain Name in the future in a legitimate way since it includes the Complainant’s company name and trademark, which is a unique combination of the names Thyssen and Krupp, the founders of the predecessors of the Complainant. Neither Thyssen nor Krupp, nor their combination has a specific meaning in any language. It is impossible that the Domain Name will not be understood as an indication of the Complainant’s “automotive” business division. Thus, not only is the present use of the Domain Name in bad faith, but also any future use by the Respondent would be in bad faith too.
Prior UDRP panels have held that the registration of a domain name which appears to be connected to a well-known trademark constitutes opportunistic bad faith.
Given the widespread use of the Complainant’s THYSSENKRUPP trademark and the Respondent’s lack of association with the Complainant, the Respondent’s registration of the Domain Name constitutes an attempt to derive unjustified commercial benefit on the back of the Complainant’s rights.
The Respondent has registered the Domain Name and uses it to disrupt the Complainant’s business activities and to profit economically from the Complainant’s good reputation.
The Respondent did not file a formal Response but did send three e-mails, as described at the outset. Despite appearing willing to give up the Domain Name, at least at some point(s), the Respondent appears to have failed to formalize a transfer of the Domain Name, hence the Complainant continuing with these UDRP proceedings.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (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. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in its THYSSENKRUPP trademark.
Ignoring the gTLD “.com” (as the Panel may do for comparison purposes), the Domain Name incorporates the THYSSENKRUPP trademark but adds the word “automotive” after it, and separates the trademark from that descriptive term (“automotive”) by a hyphen to create the <thyssenkrupp-automotive.com> domain name.
Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name to determine whether the trademark is recognizable as such within the domain name. The addition of common, dictionary, descriptive or negative terms would not prevent confusing similarity. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The THYSSENKRUPP trademark is clearly recognizable within the Domain Name. The addition of the descriptive term “automotive” does not prevent the Domain Name from being confusingly similar to the THYSSENKRUPP trademark. Nor does the hyphen, of course.
The Panel finds that the Domain Name is confusingly similar to the THYSSENKRUPP trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any formal answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
A respondent can show that it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate non-commercial 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. Here, however, the Respondent is not known by the Domain Name and given the nature of the website to which the Domain Name resolves (which appears commercial in nature and concerns cars), it cannot be said (a least without a proper explanation) that there is legitimate noncommercial use. As to an absence of an intent to mislead (for commercial gain), the Respondent’s choice of Domain Name, the dominant element being the Complainant’s well known THYSSENKRUPP trademark combined with a word describing a sector associated with the Complainant and its trademark, suggests the very opposite. In these circumstances, the Respondent’s “use”, could not be regarded as “fair” either.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it seems clear that the Respondent set out to acquire a domain name that would create a misleading impression of association with the Complainant and its automotive interests, which has then been used to resolve to a website concerning cars. In these circumstances, it would be difficult to accept that such use could amount to a bona fide offering of goods or services for the purposes of the Policy. See section 2.5.1. of the WIPO Overview 3.0.
The Respondent has sought to create an impression of association with the Complainant, no doubt for commercial ends, and it appears to the Panel that there is very little the Respondent could say to challenge the Complainant’s assertion that it lacks rights or legitimate interests in the Domain Name. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use, as envisaged by the non-exhaustive list of circumstances in paragraph 4(b) of the Policy, is to show that a 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 a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website (or other location) or of products or services on it.
The Respondent was clearly aware of the Complainant’s THYSSENKRUPP trademark at the time of registration and has sought to create a misleading impression of association with the Complainant in its choice of Domain Name. It must have known that Internet users looking for the website of the Complainant, particularly if interested in its automotive offerings, may well end up at any website to which the Domain Name resolves. It is incumbent on a registrant of such an obviously confusingly similar domain name, to come forward and seek to justify its registration if it is to avoid an adverse finding. The Respondent has not done so. (In fact, it appears that the Respondent was prepared, at least at some point, to give up the Domain Name but failed to formalize a transfer).
The circumstances of this Complaint mirror the example of circumstances described above (taken from paragraph 4(b) of the Policy) as being illustrative of bad faith registration and use.
The Complainant has also suggested that the Respondent registered the Domain Name to block the Complainant from registering the Domain Name, to disrupt the Complainant’s business activities and has acted in a way that constitutes opportunistic bad faith. Given the finding in the preceding paragraph, the Panel need not consider what other specific grounds (taken from paragraph 4(b) of the Policy or otherwise) may justify a finding of bad faith registration and use, particularly as it is quite clear, having regard to the general meaning of bad faith under the Policy (i.e., a respondent taking unfair advantage of or otherwise abusing a complainant’s mark), that the Respondent did in fact register and use the Domain Name in bad faith.
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <thyssenkrupp-automotive.com> be transferred to the Complainant.
Date: July 3, 2019