WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Senvion GmbH v. WhoisGuard Protected, WhoisGuard, Inc. / Ross Hogg
Case No. D2021-0223
1. The Parties
Complainant is Senvion GmbH, Germany, represented by Müller Fottner Steinecke, Germany.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Ross Hogg, Canada.
2. The Domain Name and Registrar
The disputed domain name <senvions.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 January 26, 2021. On January 26, 2021, 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 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 February 10, 2021, 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 on February 15, 2021.
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, and the proceedings commenced on February 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 16, 2021.
The Center appointed Scott R. Austin as the sole panelist in this matter on April 1, 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
Complainant states in its Complaint and provides evidence in the respective annexes sufficient to support that Complainant is a leading manufacturer of wind power systems and wind turbines, producing wind-powered machines and wind turbine products as well as maintenance and wind power plant repair services under the trademark SENVION (the “SENVION Mark”). Founded in Germany in 2001, Complainant has various subsidiaries in Europe, North America and Asia.
Complainant also states that since February 2021, Complainant has been part of the SIEMENS GAMESA Renewable Energy Group and operates as a service provider within the Siemens Gamesa service unit, to which Complainant’s websites accessible under the <senvion.com> domain name have temporarily been linked.
Complainant has secured ownership of a number of trademark registrations for the SENVION Mark across various jurisdictions including but not limited to, the following:
Canadian Trademark Registration No. TMA1001998, SENVION, filed July 18, 2012, registered on August 1, 2018 for a range of goods and services covering classes 7, 35, 37, 40, and 42, including wind-powered machines for energy generation, wind turbines as well as installation, maintenance and repair services for wind power plants.
International Registration No. 1 168 542, SENVION, registered July 16, 2012, covering a range of goods and services in international classes 7, 9, 35, 37, 40, and 42 including wind-powered machines for energy generation, wind turbines as well as installation, maintenance and repair services for wind power plants, and covering a multitude of countries.
European Union Trademark Registration No. 011039708, SENVION, registered on December 10, 2012, covering a range of goods and services in international classes 7, 9, 35, 37, 40, and 42, including wind-powered machines for energy generation, wind turbines as well as installation, maintenance and repair services for wind power plants.
Since February 1, 2012, Complainant’s official domain name <senvion.com> has been in use from which Complainant operated its official SENVION website at “www.senvion.com” (“SENVION Website”) until February 2021 when they were temporarily linked to Siemens Gamesa’s websites as Complainant its European subsidiaries were acquired by Siemens Gamesa and Complainant will now operate as a pure service provider within Siemens Gamesa.
The disputed domain name was registered on June 5, 2020. As of the date of filing of the Complaint, the disputed domain name is inactive, resolving to a web page displays in German the announcement “Die Website ist nicht erreichbar” (“The website is not available”) and “Prüfen Sie, ob www.senvions.com einen Tippfehler enthält” (“Please check if www.senvions.com contains a typing error”).
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 SENVION Mark all over the world, including Canada, where Respondent is located. 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 <senvions> incorporates Complainant’s SENVION Mark and adds a trailing letter “s” to the end of the Mark. This added letter does not significantly affect the appearance or pronunciation of the disputed domain name. The disputed domain name, therefor, is confusingly similar to Complainant’s SENVION Mark, as it encompasses its registered SENVION Mark appending a single letter “s” which could be easily overlooked or considered as a “typo”.
Prior UDRP panels have found registering a domain name that adds a single letter to a complainant’s trademark to be within the conduct commonly referred to as “typosquatting”, prohibited under the Policy, “the practice of misspelling an element of the mark, has consistently been regarded as creating domain names confusingly similar to the relevant mark.” See, Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 (<edmundss.com>, transferred).
Prior UDRP panels have also found a difference of only one letter between a disputed domain name and a complainant’s mark to be insufficient to prevent a finding of confusing similarity and may in fact serve to establish it. See, Electronic Arts Inc. v. John Zuccarini, WIPO Case No. D2003-0141 (<simscity.com> “the domain name differs from [SIMCITY] trademark in only one letter; this small difference establishes the confusingly similarity with [the complainant’s trademark]”). Finally, the addition of the Top-Level domain (“TLD”) “.com” is irrelevant in determining whether the disputed domain name is confusingly similar. See, Research in Motion Limited v. thamer Ahmed Alfarshooti, WIPO Case No. D2012-1146; WIPO Overview 3.0, section 1.11.
Complainant’s SENVION Mark is readily recognizable as incorporated in its entirety into the disputed domain name and for that reason the Panel finds the disputed domain name confusingly similar to the SENVION Mark in which Complainant has rights.
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. Respondent is in default and thus has not attempted to come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c).
Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, Complainant asserts it has no connection with Respondent, who is not now, nor has it ever been a representative, licensee, or employee of Complainant, nor has Complainant consented to or granted any authorization for Respondent to make use of Complainant’s SENVION Mark in a domain name or otherwise. Complainant also shows Respondent is not commonly known by the disputed domain name because Respondent is listed in the WhoIs record submitted with the Complaint as WhoisGuard Protected, WhoisGuard, Inc., and the Registrar disclosed the registrant’s name Ross Hogg, neither of which bears any resemblance to the disputed domain name whatsoever. Complainant also states that to the best of its knowledge, Respondent has no genuine actual or legitimate business which uses the name or mark SENVIONS, SENVION, or any similar name and has not used the SENVION/SENVIONS name or mark (or any similar name) in connection with the bona fide offering of goods or services such that it benefits from any goodwill in that as such terms are reflected in the disputed domain name.
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.
Furthermore, prior UDRP panels have held that domain names that are identical to a complainant’s trademark carry a high risk of implied affiliation, and that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1. The disputed domain name is almost identical to Complainant’s SENVION Mark, and the Panel finds, therefore, that it carries a risk of implied affiliation.
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 contends that because Respondent has created a domain name that is confusingly similar to Complainant’s SENVION Mark, as well as its <senvion.com> domain name, it is implausible to believe that Respondent did not have actual knowledge of Complainant’s mark when it registered its confusingly similar disputed domain name. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See, WIPO Overview 3.0, section 3.1.4.
The Panel also notes here additional factors under section 3.1.4 and its cases from which the Panel may infer bad faith registration: (i) Respondent’s addition of the letter “s” in the disputed domain as a “typo” inserted into both Complainant’s SENVION Mark and official <senvion.com> domain name to confuse consumers, (ii) Complainant’s official website for Complainant’s wind turbine products and services has for many years prior to filing the Complaint been accessed at “www.senvion.com”, a strikingly similar string, which suggests Respondent targeted Complainant’s mark when it picked the disputed domain name and inserted only a single trailing letter’s difference in the disputed domain name <senvions.com>, (iii) Complainant’s long and extensive use of the SENVION Mark worldwide, including Canada where Respondent is located, decades prior to the registration of the disputed domain name in June 2020, and (iv) the lack of Respondent’s rights to or legitimate interests in the disputed domain name without any active use. Given the circumstances of this case, such a showing is sufficient to establish bad faith registration. See, WIPO Overview 3.0, section 3.2.1.
Even though the disputed domain name is currently inactive, resolving to a parked site, prior UDRP panels have found the passive holding of a domain name still amounts to use in bad faith See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; see also, Siemens AG v. yinsi baohu yi kai qi (Hidden by Whois Privacy Protection Service) / li zhe, zhe li, WIPO Case No. D2017-0375. The Panel finds that Respondent’s registration and passive holding of the disputed domain name in the present proceeding amounts to registration and use of the disputed domain name in bad faith.
For the foregoing reasons, 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 <senvions.com> be transferred to Complainant.
Scott R. Austin
Date: April 15, 2021