WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Putzmeister Holding GmbH v. Burj Man
Case No. D2021-1003
1. The Parties
The Complainant is Putzmeister Holding GmbH, Germany, represented by LUTZ | ABEL Rechtsanwalts PartG mbB, Germany.
The Respondent is Burj Man, Cambodia.
2. The Domain Name and Registrar
The disputed domain name <putzimester.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2021. On April 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 April 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2021.
The Center appointed Adam Samuel as the sole panelist in this matter on May 25, 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’s group of companies manufactures and sells concrete pumps. Putzmeister Engineering GmbH, a wholly-owned subsidiary of the Complainant, owns the European Union trademark PUTZMEISTER with a filing number 003646031, registered on July 8, 2005. The Complainant registered the domain name <putzmeister.com> on September 28, 1996.
The disputed domain name was registered on March 10, 2021. It currently resolves, using a Chrome Google search to a page which reads:
“Deceptive site ahead
Attackers on putzimester.com may trick you into doing something dangerous like installing software or revealing your personal information (for example, passwords, phone numbers, or credit cards). Learn more…”
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s group’s trademarks. The only difference between the disputed domain name and the Complainant’s wholly-owned subsidiary’s PUTZMEISTER trademark is that the letter “I” has been moved two positions to the left, a change that is hardly noticeable at a quick glance because the defining element “putz” at the beginning is still present. This is an example of “typosquatting”.
There is no registered trademark or company called “Putzimester”. The Respondent makes no use of the disputed domain name. The disputed domain name does not resolve to a website only an index of a server folder structure and links to an Asian website with pirated films. The Respondent has never been commonly known by the disputed domain name.
Shortly after the Complainant completed a sale to one of its customers, the Respondent registered the disputed domain name and then emailed instructions to the purchaser to wire to the Respondent a payment corresponding to the price.
Typosquatting infers an intention on the part of the Respondent to confuse Internet users seeking or expecting to find the Complainant’s website which is a demonstration of bad faith registration. The Respondent knew that the registration would be confusingly similar to the Complainant’s trademark given that “putzimester” is not a generic word.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of 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 the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The Complainant’s wholly owned subsidiary owns a number of trademark registrations for PUTZMEISTER which means “plaster craftsman” in English, translated from German. One can assume from this that the Complainant owns rights in that trademark as a licensee. The disputed domain name consists of PUTZMEISTER with the letter “i” moved two spaces to the left and the generic Top-Level Domain (“gTLD”) “.com”. The gTLD is irrelevant here because it does not affect the meaning of the disputed domain name and is a standard registration requirement. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
This is an example of typo-squatting. The movement of a vowel two spaces within a trademark name does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s subsidiary’s trademark. See section 1.9 of the WIPO Overview 3.0. The misspelt version of the Complainant’s subsidiary’s trademark, used in the disputed domain name, has no impact under the analysis of the first element, as the Complainant’s subsidiary’s trademark remains recognizable.
“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark.”
For all these reasons, the Panel concludes that the disputed domain name is confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not called “putzimester” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. The Respondent does not appear to have used the disputed domain name for any purpose other than sending an email to the Complainant’s customer seeking to divert to the Respondent a payment due to the Complainant. Based on the available record, where the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests, and in the absence of any response on this point, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name, see section 2.1 of the WIPO Overview 3.0.
C. Registered and Used in Bad Faith
On the same day that the Respondent registered the disputed domain name, it sent an email using an address derived from the disputed domain name seeking to deceive the Complainant’s customer into paying the Respondent what was due to the Complainant. This shows that the Respondent registered the disputed domain name and used it in bad faith in order to defraud the Complainant’s customer, see section 3.1.4 and 3.4 of the WIPO Overview 3.0.
“Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos …) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”
“Particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: […] the nature of the domain name (e.g., a typo of a widely-known mark.”
For all these reasons, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith.
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, <putzimester.com> be transferred to the Complainant.
Date: June 8, 2021