WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DEUTZ AG. v. James Pollard

Case No. D2020-1880

1. The Parties

The Complainant is DEUTZ AG., Germany, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.

The Respondent is James Pollard, United Kingdom.

2. The Domain Names and Registrar

The disputed domain names <deutzelectric.com> and <deutzhybrid.com> (the “Domain Names”) are registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2020. On July 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 21, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 21, 2020 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 July 22, 2020.

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 July 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2020. On July 23, 2020, the Registrar forwarded an email communication from the Respondent to the Center. On July 23, 2020, the Center sent an email regarding possible settlement to the Parties, to which the Complainant replied on July 24, 2020. On July 30, 2020, the Center received an unsolicited supplemental filing from the Complainant. On July 31, 2020, the Center received another email communication from the Respondent through the Registrar. No substantive Response was filed by the Response due date. On August 13, 2020, the Center informed the Parties that it would proceed to appoint the Panel. The Center received an email communication from the Respondent on the same day.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on August 24, 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

The following facts are undisputed.

The Complainant is based in Cologne, Germany and founded in 1864. The Complainant manufactures and distributes diesel engines and engine components for agricultural machinery, marine propulsion, automobiles, and construction equipment.

The Complainant is the owner of several trademark registrations worldwide in relation to DEUTZ, including, but not limited to, the International registration (combined word /device mark), registration number 739507, registered on March 30, 2000, for goods and services in classes 7, 9, 12, 16, 35, 36, 37, 41, and 42, designating many countries including the United Kingdom. This trademark registration will also be referred to as the “Trademark”.

The Complainant is the owner of various domain names that incorporate the word element DEUTZ, including <deutz.com>, registered in 1996.

The Domain Names were registered on May 14, 2020. The Domain Names are currently not being used in connection with an active website. However, the websites to which the Domain Names resolved were being used as pay-per-click websites.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions.

The Domain Names are confusingly similar to the Trademark. The Domain Names combine the Trademark with the generic elements “electric” and “hybrid”, which refers to electrical or hybrid engines. These generic elements are descriptive and non-distinctive. Therefore, these elements cannot distinguish the Respondent or the goods and services offered under the Domain Names from the Complainant’s business and its goods and services. The relevant public might get the impression that the Domain Names identify the Complainant itself and its new electric or hybrid engines.

The Respondent has no rights or legitimate interest in the Domain Names. The Respondent is not authorized or permitted to use the Trademark, nor is the Respondent associated with the Complainant. The Respondent is using the Domain Names for a sponsored links / pay-per-click website. Therefore, the Respondent is not using the Domain Names in connection with a bona fide offering of goods or services.

The Domain Names were registered in bad faith. When registering the Domain Names, the Respondent was aware of the prior rights of the Complainant in the Trademark, which has been registered before the registration date of the Domain Names.

The Domain Names are being used in bad faith. The Respondent has intentionally chosen the Domain Names in order to generate traffic to websites with sponsored links. The Respondent is misleading Internet users to its website, for commercial gain, only by profiting off the Complainant’s mark and its reputation. The Respondent has engaged in a pattern of such conduct and has registered hundreds of domain names combining well-known trademarks of manufacturers with generic elements. The Respondent has offered to sell the Domain Names to the Complainant in excess of out-of-pocket costs directly related to the Domain Names.

B. Respondent

Except for the email communications received from the Respondent on July 23, 31, and August 13, 2020, the Respondent did not formally reply to Complainant’s contentions. In the above-referenced emails, the Respondent stated that it would “remove” the Domain Names “from [its] website” and that the emails should be viewed as its Response.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Names must be shown to be identical or confusingly similar to that mark.

It is not disputed that the Complainant has rights in the Trademark. This satisfies the Panel that the Complainant has established that it owns registered trademark rights in DEUTZ for the purposes of the Policy.

As set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Names and the Trademark involves a relatively straightforward comparison.

In light of the foregoing, the Panel finds that the Domain Names are confusingly similar to the Trademark. The Domain Names consist of the word element “deutz” included in the Trademark and the terms “electric” and “hybrid”, respectively. The element “deutz” is identical to the word element in the Trademark. The elements “electric” and “hybrid” relate to electrical and hybrid engines, which engines are also manufactured by the Complainant. The Panel finds that the Trademark is included in its entirety in the Domain Names and that the elements “electric” and “hybrid” do not prevent a finding of confusing similarity.

In addition, with regard to the suffix “.com” (which indicates that the Domain Names are registered in the “.com” generic Top-Level Domain (“gTLD”)), as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the suffix is a necessary component of a domain name and does not give any distinctiveness in this particular matter.

Thus, the Panel finds that the Domain Names are confusingly similar to the Trademark.

For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.

B. Rights or Legitimate Interests

The Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence, and email communications that have been received from the Respondent.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Names, such as:

(i) use or preparation to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the Domain Names (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence submitted by the Parties that the Respondent has any rights or legitimate interests in the Domain Names.

The Respondent does not appear to be affiliated with the Complainant in any way. There is no evidence that the Respondent is commonly known as “deutz”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever been permitted in any way by the Complainant to register or use the Trademark, or to apply for or use any domain name incorporating either of these.

The Respondent did not demonstrate any use or demonstrable preparation to use the Domain Names in connection with a bona fide offering of goods or services. The Panel notes that the Domain Names are currently not being used, but have formerly been used. After removing the websites to which the Domain Names resolved, the Respondent has not made any demonstrable preparation to use the Domain Names in connection with a bona fide offering of goods or services, but is rather offering the Domain Names for sale.

Insofar relevant, the Panel notes that that the websites to which the Domain Names resolved, were being used as pay-per-click (“PPC”) websites. As set out in WIPO Overview 3.0, section 2.9, parked pages comprising PPC links do not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users.

Consequently, the Panel finds it established that the Respondent has no rights or legitimate interests in the Domain Names.

Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Names may also be inferred by the fact that no formal response was filed by the Respondent.

Therefore, the Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The Panel finds that the Domain Names were registered and are being used in bad faith.

The Panel refers to its considerations under section 6.B and adds the following.

In light of the evidence filed by the Complainant, the Panel finds that the Trademark and the Complainant’s activities are well known throughout the world. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights at the time the Respondent registered the Domain Names.

The Panel finds that the Respondent, by formerly using the Domain Names, has intentionally attempted to attract, for commercial gain, Internet users to his 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 his website or location or of a product or service on his website or location. This is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv).

In addition, the Panel finds that the Respondent is engaged in a pattern of conduct of preventing a trademark holder from reflecting its mark in a domain name, as the Respondent has registered multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners, see WIPO Overview 3.0, section 3.1.2. The Complainant has sufficiently provided evidence that the Respondent has registered several hundred domain names which contain, aside from the Complainant’s Trademark, numerous other famous or well-known third party marks. In the Panel’s view, there is no other plausible explanation why the Respondent registered the Domain Names, other than the Respondent being aware of the Complainant and the Trademarks and prevent the Complainant from reflecting its Trademark in a corresponding domain name.

The Panel notes that after this Complaint was filed, the Respondent offered for sale the Domain Names for GBP 100,000. In the opinion of the Panel, this suggests that the Respondent registered the Domain Names primarily for the purpose of selling the Domain Names to the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Names. This is evidence of registration in bad faith under Policy paragraph 4(b)(i). Moreover, offering a domain name for sale in such a manner is in itself evidence of use in bad faith of the domain name. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001, finding that “[b]ecause respondent offered to sell the domain name to complainant ʻfor valuable consideration in excess of any out-of-pocket costs directly related to the domain name, respondent has ʻusedʼ the domain name in bad faith as defined in the Policy.”

In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Names were registered and are being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <deutzelectric.com> and <deutzhybrid.com> be transferred to the Complainant.

Willem J. H. Leppink
Sole Panelist
Date: September 7, 2020