WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
thyssenkrupp Rothe Erde GmbH v. Rong Tao
Case No. D2019-2040
1. The Parties
The Complainant is thyssenkrupp Rothe Erde GmbH, Germany, represented by thyssenkrupp Intellectual Property GmbH, Germany.
The Respondent is Rong Tao, China.
2. The Domain Name and Registrar
The disputed domain name <rotheerdechina.com> (the “Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2019. On August 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 21, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 22, 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 in English on August 27, 2019.
On August 22, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on August 27, 2019. The Respondent did not comment on the language 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 in English and Chinese, and the proceedings commenced on September 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2019. The Respondent submitted Response on September 17, 2019, in which the Respondent appeared to be willing to settle with the Complainant. On September 18, 2019, the Center informed the Parties that if they wished to explore settlement options, the Complainant should submit a request for suspension. In absence of a suspension request from the Complainant, the Center informed the Parties that it would proceed with panel appointment on September 24, 2019.
The Center appointed Karen Fong as the sole panelist in this matter on October 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 global manufacturer of slewing bearings, rolling bearings and one of the world’s largest producers of seamless rolled rings. It is a business unit within the thyssenkrupp AG group, which is a diversified industrial group and one of the world’s largest steel producers and was ranked 10th largest worldwide by revenue in 2015. The Complainant has 11 companies, with 15 plants in 10 countries and more than 7,000 employees. Its main German plants are located in Dortmund, Lippstadt and Eberswalde. The company also manufactures in the United States of America, China, Japan, Italy, United Kingdom, Brazil, Spain, and since 2006, India.
The Complainant has since 1935 used the name “Rothe Erde” continuously in its company name. The Complainant also uses the name “Rothe Erde” as its trade mark and has trade mark registrations for the name globally including in China (the “Trade Mark”) under trade mark registration numbers 3100912 (registered on August 21, 2003) and 3100913 (registered on May 28, 2003). The Complainant also maintains a strong online presence and its main webpage is at “www.rotheerde.com” which is redirected to <thyssenkrupp-rotheerde.com>. The domain name which comprises the Trade Mark, <rotheerde.com> was registered since January 8, 1999. The Complainant also has a portfolio of domain names which include the Trade Mark. These include <rotheerde.de>, <rotheerde.net>, <thyssenkrupp-rotheerde.com>, <thyssenkrupp-rothe-erde.com>, <thyssenkrupp-rotheerde.de>, <thyssenkrupprotheerde.com>, <thyssenkrupp-rotheerde.de> and <rotherde.it>.
The Complainant has extensive business activities in China. In 2002, the Complainant expanded its activities in China to include a production facility in Jiangsu Province. In 2006 the Complainant founded a further production facility in Jiangsu Province. The Complainant also operates a Chinese version of its website aimed exclusively at Chinese consumers.
The Respondent appears to be based in China and registered the Domain Name on October 31, 2017. The Domain Name is not currently connected to an active website. However it was connected to a website which displayed the name “Rothe Erde Slewing Bearings - manufacturer of quality slewing bearing” (the “Website”). The Website provided information of different categories of slewing bearings including drawings.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent contends as follows:
- The Domain Name was registered in good faith with the intention of purchasing selling Rothe Erde branded slewing bearings in China.
- The Website is under construction. The content is currently in English, as the Website is developed based on a template of a foreign design company. The Chinese content is being prepared. It will be phased in gradually.
6. Language of the Proceeding
The Rules, paragraph 11(a), provide that unless otherwise agreed by the Parties or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
- the Domain Name is in the English language;
- the Domain Name is spelt exactly the same as the Complainant’s name;
- the Website is entirely in English which is evidence that the Respondent is proficient in the English language;
- the Complainant may be put to undue delay and expense which goes against the spirit of the Policy if it has to translate the Complaint into Chinese.
The Respondent seems in its Response (in Chinese) be suggesting that the language of the proceeding be Chinese as it states that it hopes that the Panel appointed will be proficient in Chinese.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel finds that the Website has content in the English language. Further the Respondent did respond to the Complaint which provides sufficient evidence to suggest the likely possibility that the Respondent is familiar with the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds that the Respondent would not be prejudiced, should the decision be rendered in English. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(i) It will accept the filings on behalf of the Complainant in English;
(ii) It will accept the filings on behalf of the Respondent in Chinese; and
(iii) It will render this decision in English.
7. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Name contains the Complainant’s Trade Mark in its entirety and the addition of the geographical term “China”. The addition of this term does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Name. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie wu/Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement.
The Panel finds that the Domain Name is identical or confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use 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 has been commonly known by the domain name, even if it has acquired no trade mark 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or 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 submits that the Respondent has not sought or obtained any trade mark registration that correspond with the Domain Name. The Respondent has never been authorised by the Complainant to register or use the Trade Mark nor has it been authorized to register or use any domain name incorporating the Trade Mark and/or its company name. As it is clear that the Respondent has knowledge of the Complainant and the Trade Mark, the use of the Domain Name cannot be in connection with a bona fide offering of goods or services. The Website has been set up to obtain a benefit from the Complainant’s reputation. Such use therefore cannot be claimed to be making a legitimate noncommercial or fair use of the Domain Name.
The Respondent claims that the Domain Name was registered with the intention of purchasing and selling slewing bearings under the Trade Mark in China.
Section 2.8.1 of WIPO Overview 3.0 says this:
“Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.” See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
In this case, there is nothing on the Website explaining the relationship between the Complainant and the Respondent. Indeed, there is minimal information on the Website about the Respondent. It is not clear from the Website whether the slewing bearings are original products from the Complainant or counterfeits or lookalikes.
It does appear to the Panel that the content of the Website was intended to mislead Internet users into thinking that there is a connection between the Complainant and the Respondent. The Panel finds the requirements set out in the Oki Data test are not satisfied in this case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent’s response did not offer any sensible basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name given the fame of the Trade Mark and the fact that the Respondent has in its Response admitted to wanting to purchase and sell products bearing the Trade Mark.
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.
The Panel also concludes that the actual use of the Domain Name is also in bad faith. The use of the Trade Mark as the dominant part of the Domain Name is intended to capture Internet traffic from Internet users who are looking for the Complainant’s products. The Domain Name and the content of the Website are calculated to confuse Internet users that the Respondent is somehow connected to the Complainant when this is not the case. There is a clear intention on the part of the Respondent to attract Internet users for commercial gain by confusing and misleading Internet users into believing that the Website and the products sold on it were authorised or endorsed by the Complainant.
The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name are in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <rotheerdechina.com> be transferred to the Complainant.
Date: October 15, 2019