WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dürr Aktiengesellschaft v. Wang Wen Zheng (王文政)

Case No. D2021-1784

1. The Parties

The Complainant is Dürr Aktiengesellschaft, Germany, represented by Baker & McKenzie, Germany.

The Respondent is Wang Wen Zheng (王文政), China, self-represented.

2. The Domain Names and Registrar

The disputed domain names <durr.group> and <durr.ltd> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 8, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of both disputed domain names and providing the contact details. On the same day, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. On June 11, 2021, the Respondent requested that Chinese be the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on June 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2021. The Response was filed in Chinese on July 1, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on July 13, 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 mechanical and plant engineering firm. Its products, systems and services enable efficient manufacturing in different industries, notably the automotive industry. The company is named after its founder, Mr. Paul Albert Dürr. The Complainant operates in various jurisdictions, including China, from where it received orders worth EUR 761 million in 2020. Its associated Chinese company is named Dürr Paintshop Systems Engineering (Shanghai) Co., Ltd. The Complainant owns multiple trademark registrations, including:

- German trademark registration number 811062 for a semi-figurative mark including the name DÜRR, registered on October 18, 1965, specifying goods in multiple classes;

- European Union Trademark registration number 005182654 for DÜRR, registered on August 2, 2007, specifying goods and services in multiple classes; and

- International trademark registration number 1204532 for DURR, registered on November 14, 2013, designating multiple jurisdictions, including China, and specifying goods and services in multiple classes.

Those trademark registrations remain current. The Complainant has also registered the domain name <durr.com> that it uses in connection with a website published in multiple languages, including Chinese, where it provides information about the Dürr brand and products. The homepage on that website displays the name “Dürr Group”. Moreover, the Complainant has registered the domain name <durr-group.com> that it uses in connection with a website in English and German where it provides information about the “Dürr Group” of companies and their products.

The Respondent is an individual resident in China. According to evidence provided by the Complainant, and confirmed by the Respondent, his contact email address is associated with 67 other domain names besides the disputed domain names.

The disputed domain names were registered on November 12, 2020. They each resolve to a broker’s landing page indicating in Chinese and English that they are for sale.

Prior to the dispute, the Complainant contacted the Respondent via the broker’s online contact form regarding possible transfers of the disputed domain names. The Complainant received a reply in English on May 6, 2021 from an email address associated with the alias “刘先生” (meaning “Mr. Liu” in Chinese), stating that the sender had no plan to sell the disputed domain names to the Complainant but that he could consider selling if the Complainant offered him a sincere price. The sender asked the Complainant to advise its specific purchase amount for his consideration. The Complainant asked for an idea of what the Respondent considered a sincere price and received a reply from Mr. Liu’s email address on May 7, 2021 indicating that the buyer should make an offer first.

5. Parties’ Contentions

A. Complainant

The disputed domain names are identical to the Complainant’s DURR trademark and trade name.

The Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or business name and has not permitted it to apply for or use any domain name incorporating the trademark. There is no evidence of the Respondent’s use of or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the disputed domain names. The Respondent is making no legitimate noncommercial or fair use of the disputed domain names.

The disputed domain names have been registered and are being used in bad faith. The Respondent registered the disputed domain names in order to prevent the Complainant from reflecting its trademark in corresponding domain names. The Respondent, an individual based in China, has specifically registered the disputed domain names for a word without any meaning in China other than the association with the Complainant. The Respondent does not have any intention of using the disputed domain names for purposes other than collecting them to resell for a large profit.

B. Respondent

The Respondent registered and has renewed the disputed domain names. They were originally intended to promote a social media-type application called “度日日” (which can be transliterated in Pinyin as “duriri”), the short form of which just happens to be “durr”. Due to the COVID-19 pandemic, the project has not yet begun and, in the meantime, the disputed domain names resolve to a landing page provided free of charge by the Registrar, without any commercial advertising. The disputed domain names have not been directly used for commercial gain nor in bad faith, nor to mislead consumers. The Respondent did not initiate contact with the Complainant regarding the sale of the disputed domain names. In any case, the correspondence with the Complainant was not sent via the Respondent’s email address; rather, it was sent via the email address of his broker, whose reply did not represent the wishes of the Respondent. The Complaint lists the Respondent’s other domain names but these were freely available for registration. If the Complainant is genuinely concerned about protection of the Dürr brand, it should register all the domain names starting with the term “durr” in the many other generic Top-Level Domains (“gTLDs”) where they remain available.

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreements for the disputed domain names are in Chinese.

The Complainant requests that the language of the proceeding be English but that, if necessary, the Respondent be permitted to submit documents in Chinese. The Complainant’s main arguments are that the Respondent had no difficulties in communicating in the English language in pre-Complaint correspondence; the Complainant is not able to communicate in Chinese and, therefore, if the Complainant were to submit all documents in Chinese, the proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation.

The Respondent requested that the language of the proceeding be Chinese because the Registration Agreements are in that language.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint in this proceeding was filed in English and the Response was filed in Chinese. It is clear from the contents of the Response that the Respondent has understood the Complaint because he has responded to specific arguments and evidence submitted in it. The Respondent has had a fair opportunity to present his case and used it to submit considerable evidence of his own. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay. At the same time, the Panel notes that both Parties have been able to present their respective views of the matter in dispute. Therefore, the Panel does not consider that accepting the original version of any document on file causes prejudice to either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English, but that it will accept all documents as filed in English or Chinese without a translation.

6.2. Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the DURR mark.

The disputed domain names wholly incorporate the DURR mark as their respective operative elements. The only additional element in each disputed domain name is a gTLD suffix (either “.group” or “.ltd”), which is a technical requirement of domain name registration. As such, a gTLD suffix is normally disregarded in the comparison between disputed domain names and a trademark for the purposes of the first element of the Policy.

Therefore, the Panel finds that the disputed domain names are identical to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or

(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first and third circumstances above, the disputed domain names resolve to a landing page where they are offered for sale. They are identical to the Complainant’s DURR trademark. The Complainant submits that it has not licensed or otherwise permitted the Respondent to use its trademark or business name and has not permitted it to apply for or use any domain name incorporating the trademark. In view of these circumstances, the Complainant has made a prima facie case that the disputed domain names are not used in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy. Given that they are offered for sale, this is not a legitimate noncommercial or fair use of the disputed domain names either within the terms of paragraph 4(c)(iii) of the Policy.

As regards the second circumstance set out above, the Respondent’s name is Wang Wen Zheng (王文政), not “Durr”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Turning to the Respondent’s arguments, he submits that the disputed domain names were originally intended for a project which has not yet begun. However, there is no evidence on the record that would demonstrate any preparations to make use of the disputed domain names in this way. The Respondent also points out that the landing pages to which the disputed domain names resolve are provided free of charge, without any commercial advertising. However, the Panel considers this irrelevant as the offering of the disputed domain names for sale is itself a commercial use. Accordingly, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case that he has no rights or legitimate interests with respect to the disputed domain names.

Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.

With respect to registration, the disputed domain names were registered in 2020, years after the registration of the Complainant’s DURR trademark, including in China, where the Respondent is resident. The disputed domain names wholly incorporate the DURR trademark, combining it with nothing but a gTLD suffix, which is a technical requirement of registration. “Durr” is not a dictionary word and has no meaning of which the Panel is aware, other than as the Complainant’s trademark. The Complainant conducts business in China, where the Respondent is resident, and its global website is available in Chinese. The Complainant also has a website for the “Dürr Group”, to which name the disputed domain name <durr.group> is virtually identical (omitting only the umlaut). The Respondent’s explanation for his choice of the disputed domain names is implausible: even if he did plan to use them for a project named “度日日”, that does not explain why he chose to register “durr”, rather than the Pinyin transliteration “duriri”, in the disputed domain names. In any case, he provides no evidence whatsoever to substantiate the assertion that he planned such a project. Therefore, the Panel has reason to find that the Respondent had the Complainant’s DURR trademark in mind when he registered the disputed domain names.

With respect to use, the disputed domain names, which wholly incorporate the DURR trademark, resolve to a broker’s landing page where they are merely offered for sale. The Panel is not aware of any meaning of “Durr” other than as the Complainant’s trademark, and one of the disputed domain names (including the gTLD suffix) is virtually identical to the name of the Complainant’s Dürr Group. The Complainant submits evidence showing that, prior to the filing of the Complaint, it corresponded with a person whom it believed to be the Respondent regarding possible transfers of the disputed domain names. That person indicated that he could consider selling the disputed domain names for a “sincere” price but he declined to state an asking price, instead indicating that the Complainant had to make an offer first. This indicates that the seller’s minimum price was not based on its costs directly related to the disputed domain names and, in the circumstances, was presumably higher and sought to take advantage of the Complainant.

The Respondent denies that he corresponded with the Complainant prior to this dispute, claiming that the emails were sent by his broker and did not reflect his wishes. He points out that the person who corresponded with the Complainant used an email address associated with the alias “刘先生” (meaning “Mr. Liu” in Chinese), which is not the Respondent’s contact email address in the Registrar’s WhoIs database. However, nothing indicates that the email address belongs to his broker either, as it is not within the broker’s domain. The Respondent argues that he did not initiate contact with the Complainant. However, he parked the disputed domain names at the broker’s website with a notice offering them for sale, thereby inviting contact from an interested party, such as the Complainant. The Complainant completed the contact form on the broker’s website, which states that messages are forwarded to the domain name registrant/administrative/techical contact via an automatic forwarding service without filtering information contained in emails. The person who corresponded with the Complainant did not deny that he was the Respondent when the Complainant addressed him by name, and he also held himself out as the owner of the disputed domain names, not as the representative of the owner. The Respondent took no positive steps to distance himself from the emails prior to the filing of the Complaint. In these circumstances, the Panel does not consider that the Respondent can disclaim responsibility for the emails seeking to sell the disputed domain names for an amount presumably above cost.

Taking into consideration all the above circumstances, and the implausibility of the Respondent’s explanation regarding his proposed use of the disputed domain names, the Panel has reason to find that the Respondent is using the disputed domain names in bad faith.

The Respondent points out that the Complainant has not registered its DURR trademark in every gTLD. However, the Panel notes that this in no way constitutes an authorization from the Complainant to other parties to register and use domain names that are identical or confusingly similar to its DURR trademark in any gTLD.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

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 names, <durr.group> and <durr.ltd>, be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: July 26, 2021