WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WABCO IP Holdings LLC v. Namecheap, Inc., WhoisGuard Protected, WhoisGuard, Inc. / Grauss Gmbh, Grauss GMBH
Case No. D2020-2645
1. The Parties
Complainant is WABCO IP Holdings LLC, United States of America (“United States”), represented by Göhmann Rechtsanwälte, Germany.
Respondent is Namecheap, Inc., WhoisGuard Protected, WhoisGuard, Inc., Panama / Grauss Gmbh, Grauss GMBH, United States.
2. The Domain Name and Registrar
The disputed domain name <wabcopoland.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2020. On October 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 Complainant on October 16, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 21, 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 Respondent of the Complaint, and the proceedings commenced on October 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 16, 2020.
The Center appointed Scott R. Austin as the sole panelist in this matter on December 1, 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 states in its Complaint and provides evidence in the respective Annexes sufficient to support that Complainant is the intellectual property rights holding company for the corporate group WABCO (the “WABCO Group”) and responsible for brand portfolio administration and enforcement of trademarks comprising the word element “WABCO” (the “WABCO Mark”). Founded in the United States in 1869 as the Westinghouse Air Brake Company, the WABCO Group is a global supplier of braking, transmission automation, and stability technologies and services with more than 12,000 employees in 40 countries, 28 manufacturing locations on four continents and subsidiaries in more than 15 countries.
ZF Friedrichshafen AG, Germany (the “ZF Group”, and collectively with the WABCO Group, “Complainant’s Group”) completed acquisition of the WABCO Group in May 2020 and the WABCO Mark continues as both an independent source identifier for WABCO products and services. The WABCO companies continue to operate their businesses within the ZF Group using WABCO as the distinctive element of their company name (e.g., WABCO IP Holdings LLC, USA; WABCO Polska Sp. z o.o., Poland; WABCO Polska Sprzedaz Sp. z o.o., Poland).
Complainant holds registrations for the WABCO Mark in over 210 countries for safety and efficiency components and corresponding spare parts for commercial vehicles, including Poland Trademark Registration No. R.057952, registered December 18, 1980, for a range of goods, including braking systems for vehicles and electronic and mechanical control systems; United States of America Trademark Registration No. 1150784, registered April 14, 1981, for inter alia, pneumatic and electrical components for vehicles; European Union Trademark Registration No. 1609288, registered July 20, 2001, for car and truck parts; and European Union Trademark Registration No. 15801095, registered January 26, 2017, for, amongst others, retail services for automobile parts and appliances, including via the Internet. The WABCO Mark remains the distinctive element of Complainant’s Group’s domain names, e.g., <wabco-auto.com>, used to access the official WABCO website (“Official WABCO Website”) “www.wabco-auto.com”, as well as other domain names incorporating the WABCO Mark.
The disputed domain name was registered on January 9, 2020, and resolves to a website apparently selling Complainant’s products where Respondent displays not only the WABCO Mark and logo, but also texts, pictures and videos copied verbatim from the digital content of the Official WABCO Website to offer Complainant’s WABCO products in the same manner as Complainant’s Group.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed 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 disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
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 has demonstrated its rights because it has shown that it is the holder of multiple valid and subsisting trademark registrations for the WABCO Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.
Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The disputed domain name incorporates Complainant’s WABCO Mark, with the addition of the geographical term “poland”. Prior UDRP panels have considered that the addition of such a term would not prevent a finding of confusing similarity. See, e.g., WABCO IP Holdings LLC v. Hasan Mohammadnia, WIPO Case No. D2016-2235; Sanofi v. Tangzhou, WIPO Case No. D2012-1428.
The Panel finds here that the disputed domain name fully incorporates Complainant’s registered WABCO Mark and is therefore essentially identical (but also confusingly similar) to the WABCO Mark.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393.
Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, Complainant asserts no permission was granted to Respondent to use the disputed domain name incorporating the WABCO Mark, nor is Respondent a subsidiary, licensee, sales representative, or official dealer of Complainant’s Group, or otherwise authorized to use the WABCO Mark in any manner. Complainant has also submitted persuasive evidence that Respondent is not commonly known by the disputed domain name because Respondent clearly bears no resemblance to the term “WABCO”.
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.
Most importantly, Complainant contends Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because, as Complainant’s evidence of web page printouts shows, the disputed domain name resolves to a website where Respondent is attempting to pass itself off as an official subsidiary or authorized sales representative of Complainant’s Group for the country of Poland. The Panel notes that evidence submitted in the Annexes to the Complaint persuasively supports Complainant’s argument because it shows Respondent’s website features the use of Complainant’s WABCO Mark and stylized WABCO logo with “Poland” added in red beneath it, as well as texts, images of Complainant’s products, and videos copied verbatim from the Official WABCO Website that suggest an affiliation with or sponsorship by Complainant’s Group. The Panel notes that Respondent has taken its false association a step further by suggesting, untruthfully, that Respondent is part of Complainant’s Group when in fact Respondent is not.
Complainant has stated that Respondent is not an authorized reseller of its WABCO Mark products and has also provided sufficient argument and evidence to persuade the Panel that Respondent does not meet the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and described in section 2.8.1 of WIPO Overview 3.0, (the “Oki Data Test”).
Complainant asserts that Respondent does not avail itself of the safe harbors for nominative fair use provided under the Oki Data Test because, inter alia, Respondent does not disclose the relationship, or lack thereof, between Respondent and Complainant, and thereby conveys the false impression that Respondent is authorized to use Complainant’s trademark. Respondent provides no visible disclaimer stating that the website is neither endorsed nor sponsored by Complainant to disclose the lack of authorization or any relationship with the trademark holder. Instead, Respondent clearly misrepresents its affiliation with Complainant’s Group, displays Complainant’s logo and images of Complainant’s products and offers them for sale. Based on these facts, the Panel agrees with previous UDRP panels who have found in similar circumstances that “the risk of misrepresentation has led panels to find that a respondent lacks rights or legitimate interests in cases involving a domain name identical to the complainant’s trademark.” WIPO Overview 3.0, section 2.8.2 and 2.5.1; see Oki Data Americas, Inc., supra; see also Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211.
In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant’s well-known WABCO Mark is recognized and registered around the world, including Poland, where Respondent’s misleading website is focused to attract consumers seeking WABCO products, and in the United States, where Respondent is located. The WABCO Mark has been used to identify products and services provided to millions of consumers for many years prior to Respondent’s registration of the disputed domain name in January 2020. It is implausible, therefore, to believe that Respondent was not aware of the WABCO Mark when it registered the confusingly similar disputed domain name incorporating the WABCO Mark (as determined in section 6.A. above). Likewise, there is no doubt that Respondent was aware of Complainant at the time he registered the disputed domain name because Respondent has created a website dedicated to impersonating Complainant’s Group and purporting to sell its products. Prior UDRP Panels have found bad faith on this basis alone. See Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company, WIPO Case No. D2000-0878.
Further, as noted in detail in section 6.B., Respondent’s website accessed at the disputed domain name advertised Complainant’s Group products for sale and incorporates the WABCO Mark, logo and substantial digital content (text, photos, video) lifted from the Official WABCO Website. In the circumstances of this case, where Respondent registered the disputed domain name to engage in per se illegitimate activity, the Panel finds such a showing is sufficient to establish bad faith registration. See, WIPO Overview 3.0, section 3.1.4.
Bad faith use is clear from Respondent’s website accessed through the disputed domain name, created for the purposes of perpetrating fraud to confuse consumers to visit Respondent’s fake site to purchase Complainant’s Group products by suggesting an affiliation with Complainant. Complainant has shown that when conducting a Google search for “Poland” and “WABCO” the first two Google results link to Respondent’s website. The Panel finds bad faith use, therefore, because the substantial evidence in the record shows Respondent has been and is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s WABCO Mark as to the source, sponsorship, affiliation, or endorsement of its misleading copycat website in violation of paragraph 4(b)(iv) of the Policy. See Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227).
For these reasons, the Panel finds that Complainant has met its burden under 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 name, <wabcopoland.com> be transferred to Complainant.
Scott R. Austin
Date: December 15, 2020