WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Voith GmbH & Co. KGaA v. Whois Agent, Domain Protection Services, Inc. / Lisa Andrus
Case No. D2020-2478
1. The Parties
Complainant is Voith GmbH & Co. KGaA, Germany, represented by Bardehle Pagenberg, Germany.
Respondent is Whois Agent, Domain Protection Services, Inc., United States of America (“United States” or “U.S.”) / Lisa Andrus, United States.
2. The Domain Names and Registrars
The disputed domain names <voithmail.com> and <voithteam.com> are registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2020. On September 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 27, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 28, 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 September 29, 2020.
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 September 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2020.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on October 26, 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 is a global technology company with a broad portfolio of systems, products, services and digital applications. Complainant is active in a large variety of markets, including the industries of energy, oil and gas, paper, raw materials and transport and automotive.
Complainant was founded in 1867 under the tradename Voith and today employs more than 20,000 people, generates EUR 4.3 billion in sales, operates in about 60 countries around the world and is considered one of the biggest family-owned companies in Europe.
Complainant is the owner of several trademark registrations which protects the sign VOITH for a large variety of goods and services in different countries. Complainant owns three International Registrations (IR number 405353, registered on December 7, 1973, IR number 178950, registered on August 20, 1954, and IR number 447007, registered on August 22, 1979), and other two trademark registrations in the United States, where Respondent is located (TM U.S. 1219400, registered on December 7, 1982, and TM U.S. 4983701, registered on June 21, 2016).
These afore-mentioned trademark registrations predate the registration of the disputed domain names <voithmail.com> and <voithteam.com>, which were both registered by Respondent on August 23, 2020.
Complainant also owns the domains <voith.com>; <voith.us>; <voithgroup.com> and <voithservice.com>.
The disputed domain names <voithmail.com> and <voithteam.com> redirect to a parking page with commercial links (“pay-per-click”) offering a range of services and goods, including those related to Complainant’s business.
5. Parties’ Contentions
Complainant submits that the disputed domain names <voithmail.com> and <voithteam.com> are confusingly similar to its registered trademarks for the word VOITH and to its domain names <voith.com>; <voith.us>; <voithgroup.com> and <voithservice.com>. This is because both disputed domain names reproduce the sign VOITH in its entirety, with the sole addition of the generic terms “mail” and “team”, which are not enough to add a distinctive meaning to the disputed domain names.
Complainant claims that the relevant public will therefore get the false impression that Complainant is offering a mail service or an opportunity to send messages (“mail”) to the company and/or that Complainant is identifying its employees and other affiliates (“team”) under the disputed domain names.
Considering this scenario, Complainant believes that the similarities mentioned hereto are persuading its consumers to wrongly believe that the website under the disputed domain names have any association with Voith GmbH & Co, what is not true, fulfilling paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii), (b)(ix)(1) of the Rules.
Furthermore, Complainant affirms that Respondent does not have any rights or legitimate interests in respect of VOITH trademark, since it has no prior right to “voith” sign and it is not commonly known by the disputed domain names. In addition, Complainant states that no license or authorization of any kind has been given by Complainant to Respondent to use the disputed domain names or the designation VOITH.
Therefore, paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules would be also fulfilled.
In conclusion, Complainant argues that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. On the contrary, Respondent would be showing a clear intent to usurp the goodwill conquered by VOITH trademarks and obtain an unfair commercial gain by misleading Complainant’s consumers to click in pay-per-click links hosted by the disputed domain names.
Complainant notes that Respondent has engaged in a pattern of conduct, which is also an evidence of bad faith. This is because the Respondent has registered two highly similar domain names, both containing the Complainant’s famous trademark VOITH, on the same day, with the same registrar, using a privacy protection mechanism.
Thus, Complainant sustains that paragraph 4(a)(iii) and 4(b) of the Policy and paragraph (b)(ix)(3) of the Rules would have been fulfilled.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, in a UDRP complaint, complainants must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:
(i) the disputed domain name is 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The burden of proving these elements is upon Complainant.
Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, the panel’s decision shall be based upon the complaint.
A. Identical or Confusingly Similar
Complainant has duly proven that the first element under paragraph 4(a) of the Policy is met by evidencing that it has prior trademark rights on the term VOITH registered worldwide, especially in the United States, and that the disputed domain names <voithmail.com> and <voithteam.com> incorporates such trademark in its entirety, with the sole addition of generic terms “mail” and “team” which do not prevent a finding of confusing similarity. See, section 1.8 of the WIPO Overview of WIPO Panel View on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Thus, the Panel finds that the disputed domain names <voithmail.com> and <voithteam.com> are identical or confusingly similar to Complainant’s trademark.
Therefore, the Panel considers the requirement of the first element of paragraph 4(a) of the Policy satisfied.
B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0 as follows: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant 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.”
In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, that burden has not been discharged, and the Panel has considered Complainant’s prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain names <voithmail.com> and <voithteam.com>.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names (Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(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 it is highly unlikely that Respondent had no knowledge of Complainant’s rights to the trademark VOITH at the time of registration of the disputed domain names, taking into consideration its notoriety and that the disputed domain names were both registered on August 23, 2020, that is, several years after Complainant’s first registrations of its trademark VOITH and domain names <voith.com>; <voith.us>; <voithgroup.com> and <voithservice.com>. Therefore, evidence shows that Respondent was likely trying to create a likelihood of confusion with Complainant and its trademark.
In this connection, the Panel also notes that the disputed domain names resolve to a pay-per-click link farm, i.e. a web page in which there are several links for providers of goods and services competing with but not connected to Complainant, and such use of the domain names is further evidence of bad faith. In this sense, the Panel refers to the panel decision in VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925, as can be verified below:
“Because Respondent has registered the disputed domain name that uses a unique combination of terms associated with Complainant, and has only used the disputed domain name to direct Internet users to a pay-per-click link farm parking page that includes third-party competitors of Complainant, the Panel determines that Respondent registered and has used the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.”
In fact, the disputed domain names are being used in connection with a commercial link service, or “link farm”, as they are designed to lure users and divert them to other commercial sites. This is not a bona fide offering of goods or services and does not confer a right or legitimate interest in the disputed domain names (see also e.g., Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi, WIPO Case No. D2004-0984; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550).
Lastly, the Panel notes that, in conjunction with all abovementioned, Respondent’s use of a privacy service, preventing others to have access to its real identity, and the fact that Respondent did not present any response to the Complaint, reinforce the conclusion that Respondent acted in bad faith.
Thus, the Panel concludes that the disputed domain names <voithmail.com> and <voithteam.com> were registered and are being used in bad faith, in accordance with paragraph 4(a)(iii) 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 disputed domain names <voithmail.com> and <voithteam.com> be transferred to the Complainant.
Gabriel F. Leonardos
Date: November 9, 2020