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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Liebherr-International AG v. Maksim, Europe Tek Ukraine LLC

Case No. D2021-0460

1. The Parties

The Complainant is Liebherr-International AG, Switzerland, represented by Dentons Europe AARPI, Ukraine.

The Respondent is Maksim, Europe Tek Ukraine LLC, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <liebherr-ua.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2021. On February 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2021, 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 February 22, 2021, 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 amended Complaint on February 27, 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 the Respondent of the Complaint, and the proceedings commenced on March 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2021.

The Center appointed Clark W. Lackert as the sole panelist in this matter on April 16, 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 the parent company of Liebherr-Group, an entity founded in 1949. The Complainant’s company name originates from its founder, Mr. Hans Liebherr, and its identity and branding is based upon the “Liebherr” surname.

The Complainant has been designing and distributing domestic appliances since 1954, and promotes its products using its LIEBHERR trademark which has been registered in multiple jurisdictions around the world. The Complainant’s trademark rights include the following registrations:

- International Registration No. 860617 for LIEBHERR granted on April 26, 2005 for goods including “Cooling and freezing apparatus; air-conditioned wine cabinets; air_conditioning installations; radiators and ventilating installations; pressure aeration devices; defrosting devices; air humidifying devices; all the aforementioned products particularly for vehicles and aircraft” and “devices for regulating fresh air supply, air conditioning and pressure levels for railway vehicles and aircraft, namely installations for regulating air, air-conditioning, cabin pressure as well as air intake devices for propulsive units; components for air regulating installations, namely heat exchangers, water separators, dynamic pressure flap valve drives; water purification installations” in Class 7, 9, 11 and 12. ,

- United States of America Registration No. 2529147 for LIEBHERR granted on January 15, 2002 for goods including “walk-in coolers, refrigerators and freezers, air conditioning units; water heaters and ventilating fans for land vehicles” in Class 7, 9 and 11.

- Ukraine Registration No. 2163 for LIEBHERR granted on October 29, 1993 for goods including “Cooling and freezing machines and devices” in Class 7 and 11.

The Complainant’s International registration noted above includes designations of protection for Germany, Turkey, Egypt, Romania, the Russian Federation, and other countries.

The Complainant distributes its LIEBHERR branded products to multiple countries through designated distributors, detailers, and retailers. The Complainant promotes its LIEBHERR branded products on its <liebherr.com> domain name, and the Complainant also owns other domain names incorporating its LIEBHERR trademark such as <liebherr.ua> and <liebherr-cooling.com>.

The disputed domain name <liebherr-ua.com> was registered on September 8, 2008 and the record confirms that it has been used to promote the sale of refrigeration products that are identified using the Complainant’s LIEBHERR trademark. The site also lists a contact address and promotes acceptance of credit card payments.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to its LIEBHERR trademark because it incorporates the LIEBHERR trademark in its entirety. The Complainant emphasizes that its rights in its LIEBHERR trademark precede registration of the disputed domain name by many years, and that these rights include a registration in Ukraine that was granted approximately fifteen years before the disputed domain name was registered in September of 2008.

The Complainant also notes that the disputed domain name combines its LIEBHERR trademark with the letters “ua” and that these letters are a recognized abbreviation for the Ukraine. It is the Complainant’s belief that use of the letters “ua” in the disputed domain name is designed to create an impression that the disputed domain name is affiliated with the Complainant’s official activities in the Ukraine and/or an authorized distributor of the Complainant’s products that is based in the Ukraine.

The Complainant maintains that the most distinctive component of the disputed domain name is its use of the Complainant’s LIEBHERR mark because the “ua” and “.com” components are commonly used by other third parties to designate geographic location (“ua”) or domain name address (“.com”). In addition, the Complainant emphasizes that it only sells its LIEBHERR branded products through its official distributors and dealers, and maintains that it has never granted permission for the Respondent to use its LIEBHERR mark or adopt a domain name featuring its LIEBHERR mark. The Complainant alleges that the Respondent promotes itself as “an official dealer” of the Complainant’s LIEBHERR branded refrigeration appliances and promotes the disputed domain name as the Complainant’s “brand store” and the Complainant’s “certified online store”. The Complainant maintains that it has never extended such permissions to the Respondent, that the Respondent is not an official distributor or dealer for the Complainant’s LIEBHERR products, and as such the Respondent cannot demonstrate that it has any rights or legitimate interests in and to the domain name or that its adoption and use of the disputed domain name is bona fide or associated with fair use. The Complaint also notes that there is no evidence that the Respondent has ever been commonly known by the disputed domain name.

The Complaint alleges that the Respondent had knowledge of the Complainant’s rights in its LIEBHERR trademark when it registered the disputed domain name because (i) the disputed domain name was registered after the Complainant had established its trademark rights in LIEBHERR and (ii) the disputed domain name is “unambiguously designed” to resemble an official domain name of the Complainant (i.e., the official website of the Complainant for the Ukraine). The Complainant emphasizes that the disputed domain name has been used to display images of the Complainant’s products and displays the Complainant’s LIEBHERR trademark. The Complainant believes that this content is designed to “promise and/or sell” the Complainant’s products and that consumers are likely to be misdirected to the disputed domain name and mistakenly believe that the disputed domain name is an official website of the Complainant because it resembles the Complainant’s official <liebherr.com> domain name.

The Complainant claims that it sent a cease and desist letter to the Respondent on September 1, 2020 requesting that the Respondent transfer ownership of the disputed domain name to the Complainant, and that the Complainant had not received a response to this letter as of the date the Complaint was filed with the Center.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark rights in LIEBHERR that precede the registration of the disputed domain name by many years. LIEBHERR is immediately recognizable in the disputed domain name and is the element that distinguishes the disputed domain name. The disputed domain name’s use of the abbreviation “ua” does not prevent confusing similarity. See Bridgetone Corporation v. Natalja Bezuglaja, WIPO Case No. D2019-1227 (finding that the abbreviation “ua” did not add distinction when combined with a trademark to form the <bridgetone-ua.com> domain name because this abbreviation is the geographic country code of the Ukraine). The domain name in this case has been composed by using a hyphen to combine the Complainant’s trademark and “ua”, the geographic code for the Ukraine. As noted in section 1.8 of the WIPO Overview, the addition of geographical terms typically do not prevent confusing similarity when a complainant’s trademark is recognizable in the disputed domain name.

The Complainant has satisfied the first element. The disputed domain name <liebherr-ua.com> is confusingly similar to the Complainant’s LIEBHERR trademark.

B. Rights or Legitimate Interests

The disputed domain name was registered many years after the Complainant had already established ownership of its LIEBHERR trademark. There is no evidence that the Respondent has any rights in the Complainant’s trademark or that the Respondent has any legitimate claims or interests in LIEBHERR and the disputed domain name.

The Complainant maintains that its original LIEBHERR branded products are only available through its authorized distributors and retailers, and that the disputed domain name is not authorized. Nevertheless, the disputed domain name is presented to visitors as having been “certified” by the Complainant and a source for “original certified products” of the Complainant. The Respondent has not provided any evidence to demonstrate that it has been appropriately authorized or certified by the Complainant, and therefore the Panelist finds that the Complainant’s prima facie case has been established. The disputed domain name does not accurately disclose a relationship with the Complainant as required under the “Oki Data test” as detailed in section 2.8.1 of the WIPO Overview (i.e., factors necessary to establish that use of a complainant’s trademark in a domain name is bona fide). In fact, the composition and content of the disputed domain name indicates that the Respondent is misrepresenting that it is an authorized distributor or retailer of the Complainant.

The Complaint has satisfied the second element.

C. Registered and Used in Bad Faith

The record confirms that the Complainant owns well-established rights in its LIEBHERR trademark, and that this trademark distinguishes the Complainant’s products from those of others. The Respondent’s use of the Complainant’s precise trademark in the disputed domain name is a strong indication that the Respondent had knowledge of the Complainant and its trademark rights when it acquired the disputed domain name. In addition, the disputed domain name is composed of the Complainant’s LIEBHERR trademark and the geographic abbreviation “ua” with these literal components separated by a hyphen. Section 3.2.1 of the WIPO Overview acknowledges that the nature of a domain name’s composition is a factor that can support a finding of bad faith registration in certain circumstances, and specifies that one such circumstance is the composition reflected by the disputed domain name in this case. The disputed domain name incorporates the Complainant’s trademark in its entirety and combines this mark with a geographic term, namely the international abbreviation “ua” that corresponds to the Ukraine. This supports a finding of bad faith registration. A domain name incorporating a complainant’s mark and a geographic term may be an appropriate basis for finding that a domain name was registered in bad faith. In addition, the Panelist notes that the Respondent has presented no evidence demonstrating that the disputed domain name was registered or acquired in good faith. See WIPO Overview 3.2.1(i),

The record supports a finding that the disputed domain name has been used in bad faith. Specifically, content at the disputed domain name has featured prominent images of the Complainant’s refrigeration appliance products and text that identifies these products using the Complainant’s LIEBHERR trademark. The disputed domain name in this case is dominated by the Complainant’s LIEBHERR trademark, and it is likely that the “ua” component could encourage confusion by misleading visitors to believe that the disputed domain name is dedicated to promotion and sale of the Complainant’s products in the Ukraine. The record also shows that content at the disputed domain name is presented as having been “certified” by the Complainant (i.e., сертифицирова Liebherr) and that the products promoted for sale at the disputed domain name are “original certified products” (i.e., оригинальные сертифицированные товары) of the Complainant. The Complainant maintains that its original LIEBHERR branded products are provided only through its authorized distributors and retailers and that it has not certified the disputed domain name or its content. The Respondent has not provided any defenses or evidence to refute the Complainant’s allegations of bad faith use. The record supports a finding of bad faith registration and use based upon paragraph 4(b)(iv) of the Policy which states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use.

The Panelist also notes that the LIEBHERR branded refrigeration and freezer products promoted for sale at the disputed domain name are presented as new products akin to those that are only available through the Complainant’s authorized distribution and retail channels. The products are not promoted by the disputed domain name as second hand appliances that are being provided by a reseller. In any event, the content includes misrepresentations that the Respondent has been “certified” and therefore is one of the Complainant’s authorized retailers. The Complainant maintains that the Respondent is not one of its authorized retailers and that the Respondent has not been certified by the Complainant, and the Respondent has not provided any arguments or evidence demonstrating that the content at the disputed domain name is legitimate.

The Panelist also notes that the WhoIs information for the disputed domain name contains inaccuracies and false contact details. The copy of the Complaint could not be delivered to the Respondent because the physical address listed by the Respondent does not appear to exist. In addition, the fax number provided could not be reached. It is well-established that provision of such false information is an indication of bad faith. See, e.g., Ticketmaster Corporation v. Dmitri Prem, WIPO Case No. D2000-1550.

The Complaint has satisfied the third element.

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 disputed domain name <liebherr-ua.com> be transferred to the Complainant.

Clark W. Lackert
Sole Panelist
Date: May 6, 2021

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