WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EagleBurgmann Germany GmbH & Co. KG v. Registration Private, Domains By Proxy, LLC / Eric Wright
Case No. D2020-3170
1. The Parties
The Complainant is EagleBurgmann Germany GmbH & Co. KG, Germany, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (the “United States”) / Eric Wright, United States.
2. The Domain Name and Registrar
The disputed domain name <eagleburqmann.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2020. On November 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2020, 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 the Complainant on November 29, 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 December 7, 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 December 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2020.
The Center appointed Marilena Comanescu as the sole panelist in this matter on January 28, 2021. 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 German company specialized in the field of sealing technology, its portfolio of goods and services includes inter alia mechanical seals and seal supply systems, magnetic couplings, carbon floating ring seals, expansion joints and gaskets.
The Complainant is part of the German Freudenberg and Japanese EKK Group and, according to its allegations, it employs around 5,800 employees and has obtained revenues of more than 850 million in 2019. The Complainant serves around 45,000 customers in 86 coutries.
The Complainant holds trademark registrations for EAGLEBURGMANN mark, such as the following:
- the United States Trademark Registration No. 3492809 filed on August 25, 2006 and registered on August 26, 2008 for EAGLEBURGMANN (word), covering goods and services in classes 7, 11, 17 and 42; and
- the International Trademark Registration No. 913774 registered on August 25, 2006 for EAGLEBURGMANN (word), covering goods and services in classes 7, 9, 11, 12, 17 and 42 and designating many jurisdictions worldwide.
The Complainant holds domain names reflecting its EAGLEBURGMANN trademark such as the following: <eagleburgmann.com> (the main website), <eagle-burgmann.com> and <eagleburgmann.us>.
The disputed domain name <eagleburqmann.com> was registered on October 27, 2020 and, at the time of filing the Complaint, it resolved to an inactive page.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its trademark EAGLEBURGMANN being a typical case of typo-squatting, where the letter “g” is replaced by letter “q”, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly Similar
The Complainant holds rights in the EAGLEBURGMANN trademark.
The disputed domain name incorporates the Complainant’s trademark EAGLEBURGMANN with a minor alteration of one letter, respectively the second letter “g” was replaced by the letter “q”. However, such misspelling does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.
Numerous UDRP panels have considered that a domain name which consists of a common, obvious or intentional misspelling of a trademark is confusingly similar to the relevant mark for the purpose of the first element. See section 1.9 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.info”, “.club”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the theWIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark EAGLEBURGMANN, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark EAGLEBURGMANN, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.
Under the Policy, “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”. See section 2.1 of theWIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant holds trademark rights for EAGLEBURGMANN since at least 2006.
The disputed domain name was registered in 2020 and incorporates the Complainant’s coined mark in its entirety with a minor alteration.
From the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.
At the time of filing the Complaint the disputed domain name resolved to an inactive page.
From the inception of the UDRP, UDRP panels have found that the non-use of a domain name (including a blank or “coming soon” or other similar inactive page) would not prevent a finding of bad faith under the doctrine of passive holding. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be relevant circumstances found to be indicative of bad faith include the degree of distinctiveness or reputation of the Complainant’s mark and the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use. See section 3.3 of the WIPO Overview 3.0.
The Complainant’s trademark is distinctive and used worldwide for more than a decade, the Respondent did not submit a response and there is no plausible reason for the Respondent to choose and register the disputed domain name other than to create confusion or association with the Complainant and its EAGLEBURGMANN mark.
Moreover, the Respondent registered the disputed domain name under a privacy service and refused to participate in the present proceedings in order to put forward any arguments in its favor, which further suggests the Respondent’s bad faith.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <eagleburqmann.com> be transferred to the Complainant.
Date: February 11, 2021