WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
thyssenkrupp AG v. 黄浩 (huang hao)
Case No. D2020-1059
1. The Parties
Complainant is thyssenkrupp AG, Germany, represented by thyssenkrupp Intellectual Property GmbH, Germany.
Respondent is 黄浩 (huang hao), China.
2. The Domain Name and Registrar
The disputed domain name <tlhyssenkrupp.com> (the “Domain Name”) is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2020. On April 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2020, 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 Complainant on April 30, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on May 5, 2020.
On April 30, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant confirmed the request that English be the language of the proceeding on May 5, 2020. 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 Respondent of the Complaint in English and Chinese, and the proceedings commenced on May 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 3, 2020.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on June 9, 2020. 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
Complainant thyssenkrupp AG is the result of a merger of two German steel companies, Thyssen AG founded in 1891 and Krupp founded in 1811. In 1997, the companies combined their flat steel activities, and merged in March 1999. Complainant is now one of the world’s largest steel producers and operates in 78 countries, with 162,000 employees and with a revenue of EUR 42 billion. Complainant has a market presence in China with over 30 business groups and affiliates, about 18,000 employees and a sales revenue of about EUR 3 billion in the 2016/2017 fiscal year.
Complainant owns several international registrations with the THYSSENKRUPP mark, including:
- International registration No. 1342637 THYSSENKRUPP (word mark), registered on January 29, 2016, claiming protection in over 60 countries, including China;
- International registration No. 713857 THYSSENKRUPP (word mark), registered on April 29, 1999, claiming protection in 41 countries, including China;
- International registration No. 731636 THYSSENKRUPP (word mark), registered on July 7, 1999, claiming protection in 41 countries, including China;
- International registration No. 726817 THYSSENKRUPP (word mark), registered on April 20, 1999, claiming protection in six countries;
- International registration No. 1009184 THYSSENKRUPP (word mark), registered on October 30, 2008, claiming protection in three countries.
Complainant is also the owner of national trademark registrations consisting of or including the mark THYSSENKRUPP in numerous countries.
Complainant operates its main webpage at “www.thyssenkrupp.com”, which it registered on December 5, 1996. Complainant is also the registrant of numerous additional domain names incorporating its trademark and company name “thyssenkrupp”, including <thyssenkrupp.de>. Complainant also operates a Chinese website at “www.thyssenkrupp.com.cn” for its Chinese market.
Respondent registered the Domain Name on November 3, 2019. The Domain Name redirects users to a gaming and betting website.
5. Parties’ Contentions
Complainant contends that (i) the Domain Name is confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.
In particular, Complainant contends that it has trademark registrations for the THYSSENKRUPP marks and have rights in several domain names incorporating “thyssenkrupp”. Complainant contends that Respondent registered and used the Domain Name, which is a deliberate misspelling of Complainant’s well-known mark, to divert users to another website offering gambling and betting activities. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name which is a deliberate misspelling of Complainant’s mark, and that Respondent has no rights or legitimate interests in the registration or use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in setting up the Domain Name and website, when Respondent clearly knew of Complainant’s rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Procedural Issue – Language of the Proceeding
The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 is Chinese.
Complainant submits in its communication to the Center on May 5, 2020, that the language of the proceeding should be English. Complainant mainly contends that the Domain Name is formed by English alphabetic letters rather than the Chinese script; that the Domain Name redirects to a website containing English elements; that Respondent owns other domain names formed by English alphabetic letters, some of which were registered with the registrars based in the United States of America having websites in the English language only, indicating that Respondent has sufficient knowledge of English; if the documents have to be submitted in Chinese, Complainant would have to incur substantial delay and disadvantage due to the requirement of an external agency for translation and the resulting procedural delays, which would cause damage to its reputation.
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 accepts Complainant’s submissions regarding the language of the proceeding. Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case, all of the communications from the Center to the Parties were transmitted in both Chinese and English. Respondent chose not to respond to the Complaint and comment on the language of the proceeding. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
6.2. Substantive Issues
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the THYSSENKRUPP marks, which have been used since at least as early as 1999, well before Respondent registered the Domain Name on November 3, 2019. With Complainant’s rights in the THYSSENKRUPP marks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the generic Top-Level Domain (“gTLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
Here, the Domain Name is confusingly similar to Complainant’s THYSSENKRUPP trademark. This mark, which is fanciful and inherently distinctive and has no other generic or dictionary meaning, is strongly imitated in the Domain Name. The voluntary addition of the letter “l” in relation to the THYSSENKRUPP mark in the Domain Name, <tlhyssenkrupp.com>, does not change the overall impression produced by the Domain Name and does not prevent a finding of confusing similarity between the Complainant’s trademarks and the Domain Name registered by Respondent.
Thus, Complainant has satisfied the first element of the Policy.
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.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the THYSSENKRUPP marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the THYSSENKRUPP trademarks or to seek registration of any domain name incorporating the trademarks.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that Respondent used the Domain Name to redirect Internet users to a gaming and betting site. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interest in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name 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 Panel finds that Complainant provided ample evidence to show that registration and use of the THYSSENKRUPP marks long predate the registration of the Domain Name by Respondent. Complainant is also well established and known worldwide, including China, where Respondent resides. Therefore, Respondent was likely aware of the THYSSENKRUPP marks when he registered the Domain Name, or knew or should have known that the Domain Name was identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
Under the circumstances, Respondent’s registration of the Domain Name incorporating Complainant’s well-known THYSSENKRUPP trademark in its entirety with an additional letter “l” suggests that Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the THYSSENKRUPP mark, in an effort to opportunistically capitalize on the registration and use of the Domain Name.
The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks.
Moreover, Respondent uses the Domain Name to redirect users to a website displaying links related to online gaming and betting. Respondent’s use and association of the Domain Name with a gaming and betting site may result in tarnishing Complainant’s well-known THYSSENKRUPP trademark, Complainant’s good will and reputation. The Panel finds that by using the Domain Name incorporating Complainant’s trademark in its entirety in connection with a website to offer products or services unrelated to those offered by Complainant, Respondent has intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s trademark, and to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein. Indeed, Respondent’s registration and use of the Domain Name to divert traffic to a gaming and betting site is bad faith under paragraph 4(a)(iii) of the Policy. Moreover, such use of the Domain Name disrupts Complainant’s business.
In addition to the circumstances of registration and use referred to above, Respondent’s failure to file a response is further indicative of Respondent’s bad faith.
Accordingly, the Panel finds that Respondent has registered and used the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy.
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 <tlhyssenkrupp.com> be transferred to the Complainant.
Kimberley Chen Nobles
Date: June 18, 2020