WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Demag IP Holdings GmbH v. 邵增力 (shaozengli) / 邵增力 (shaozengli), 德马格起重机（惠州）有限公司 (Demag Crane (Huizhou) Co., Ltd)

Case No. D2021-1978

1. The Parties

The Complainant is Demag IP Holdings GmbH, Switzerland, represented by Moser Götze & Partner Patentanwälte mbB, Germany.

The Respondents are 邵增力 (shaozengli) / 邵增力 (shaozengli), 德马格起重机（惠州）有限公司 (Demag Crane (Huizhou) Co., Ltd), China.

2. The Domain Names and Registrar

The disputed domain names <cndemageqzj.com>, <demageddhl.com>, <demageqzj.com>, <demageqzsb.com> and <zgdemage.com> are registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 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 25, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names that differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on June 28, 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 in English on June 29, 2021 and requested consolidation of its disputes against the different identified disputed domain name registrants.

On June 28, 2021, the Center also sent an email in English and Chinese to the Parties regarding the language of the proceeding. On the following day, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding.

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 Respondents of the Complaint in English and Chinese, and the proceedings commenced on July 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2021. Delivery of the written notice of the Complaint was refused and no response was submitted. Accordingly, the Center notified the Respondent’s default on July 26, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on August 5, 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 part of a corporate group that designs and develops cranes. The Complainant owns multiple trademark registrations for DEMAG in multiple jurisdictions, including:

- International trademark registration number 485602, registered on May 31, 1983, designating multiple jurisdictions including China;
- International trademark registration number 873164, registered on August 18, 2004, designating multiple jurisdictions including China; and
- Chinese trademark number 1187255, registered on June 28, 1998, specifying lifting devices and other goods in class 7.

The disputed domain names were registered on the following dates:

The disputed domain name <demageqzj.com> is registered in the names of an individual resident in China, identified as “邵增力” (shaozengli), and a Chinese company, identified as “德马格起重机（惠州）有限公司” (Demag Crane (Huizhou) Co., Ltd). The other four disputed domain names are registered in the name of “邵增力” (shaozengli) only.

The disputed domain names all resolve to websites for Demag Crane (Huizhou) Co., Ltd and offer for sale cranes, crane components and drive technologies. The sites have identical or similar layouts; in some cases, they display identical images. The sites are in the languages set out in the above table. The contact telephone number is a 400-prefix number on the Chinese website and the same Chinese mobile number on the other websites. The contact email address contains a username that evidently refers to shaozengli.

On December 11, 2017, the Complainant sent Demag Crane (Huizhou) Co., Ltd a cease-and-desist letter in Chinese regarding inter alia the registration and use of the disputed domain name <demageqzj.com>. In 2018, Demag Crane (Huizhou) Co., Ltd filed Chinese trademark application number 29592488 for a semi‑figurative mark featuring the textual element DGDEMAG and also including the textual element QZJHZYXGSSZLYJQWEEBB. The Complainant opposed that application based on its prior trademark registrations for DEMAG. On July 2, 2020, the China State Intellectual Property Office partially upheld and partially rejected the Complainant’s opposition to that mark.¹

5. Parties’ Contentions

A. Complainant

The disputed domain names are confusingly similar to the Complainant’s DEMAG mark. The products shown on the associated websites are identical or similar to those specified in the Complainant’s trademark registrations, especially cranes and hoists.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is neither an official partner nor a licensee of the DEMAG trademarks.

The disputed domain names were registered and are being used in bad faith. The registration of the disputed domain names will easily mislead the related public and damage the Complainant’s interests. The Respondent intentionally attempted to attract, for commercial gain, Internet users to his website or online location by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. The Respondent is in the same industry as the Complainant and is therefore capable of knowing the cited trademarks. The Respondent knows the infringing character of his behaviour as the Complainant sent him a warning letter in 2017 requesting a change of name but no response was received.

The Complainant requests that the disputed domain names be cancelled.

B. Respondents

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

6. Discussion and Findings

6.1. Preliminary Issues

A. Consolidation: Multiple Domain Name Registrants

The amended Complaint initiates disputes in relation to nominally different domain name registrants. The Complainant alleges that all the registrants are, in fact, the same entity or that all disputed domain names are under common control and requests consolidation of the disputes against the disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on the Complainant’s consolidation request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. However, the Panel does not consider that paragraph 3(c) was intended to enable a single person or entity to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes that shaozengli is listed in the WhoIs as registrant for every disputed domain name. It is only in the case of the disputed domain name <demageqzj.com> that another entity, i.e., Demag Crane (Huizhou) Co., Ltd, is named as the registrant organization. Yet all five disputed domain names resolve to websites for that same company and all display the same contact email address, which is in the <demageqzj.com> domain. In these circumstances, the Panel is persuaded that all five disputed domain names are under common control.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.

B. 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. Its main arguments are that the Respondent is familiar with the English language as all websites to which the disputed domain names resolve include an English version; and the Respondent did not answer a cease-and-desist letter sent in Chinese.

The Respondent did not comment on the language of the proceeding.

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 in this proceeding the Complaint was filed in English. The website to which the disputed domain names resolve all have an English version, from which it is reasonable to infer that the Respondent is able to communicate in that language. Further, despite the Center having sent an email regarding the language of the proceeding and a written notification of the Complaint in both Chinese and English, the Respondent did not comment on the issue of language and refused delivery of the written notification. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas accepting it in English does not create unfairness 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. The Panel would have accepted a Response filed in Chinese, but none was filed.

6.2. Substantive Issues

Paragraph 4(a) of the Policy provides that a 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 DEMAG mark.

All the disputed domain names wholly incorporate the DEMAG mark, in three cases as their initial element.

The disputed domain names contain additional letters. Two disputed domain names add letters before the mark (“cn” or “zg”, presumably abbreviations for “China”, and “Zhongguo” meaning “China”, respectively). All five disputed domain names add a letter “e” after the mark to create a transliteration of the first three characters of the Respondent’s company name (德马格), i.e., “Demage”, which is not a word. Two disputed domain names add the letters “qzj”, which are the initials of a transliteration of the next three characters in the Respondent’s company name (起重机), i.e. “qizhongji”. Two other disputed domain names instead add the letters “ddhl” and “qzsb”, respectively. Despite these additional letters, the DEMAG mark remains clearly recognizable within each disputed domain name. Accordingly, the Panel does not consider that the addition of these letters prevents a finding of confusing similarity. See WIPO Overview 3.0, section 1.7.

The disputed domain names include a generic Top-Level Domain (“gTLD”) suffix (“.com”), which is a technical requirement of domain name registration. A gTLD suffix is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy. See WIPO Overview 3.0, section 1.11.

Therefore, the Panel finds that the disputed domain names are confusingly similar 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, which all incorporate the Complainant’s DEMAG mark, resolve to commercial websites for Demag Crane (Huizhou) Co., Ltd. The Complainant submits that that company is neither an official partner nor a licensee of the DEMAG trademark. The Panel takes note that although the Respondent has Chinese trademark rights in a semi-figurative mark that includes the textual elements DGDEMAG and QZJHZYXGSSZLYJQWEEBB, none of the disputed domain names corresponds to that mark or those textual elements. Accordingly, the Panel considers that the Complainant has made a prima facie case that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Nor is it making a legitimate noncommercial or fair use of the disputed domain names.

As regards the second circumstance, the Respondent individual’s name “邵增力” (Shao Zengli) does not correspond to any of the disputed domain names. The Respondent organization name for the disputed domain name <demageqzj.com> is”德马格起重机（惠州）有限公司” (Demag Crane (Huizhou) Co., Ltd), the first six characters of which may be transliterated as “Demage qizhongji” and abbreviated as “demageqzj”. However, there is no evidence on the record that the Respondent has been known as “demageqzj”, nor is there evidence that it is commonly known by its company name either, besides its own websites and its name as stated in its trademark application. Accordingly, the Panel cannot conclude from the evidence on record that the Respondent, whether as an individual, a business or other organization, has been commonly known by any of the disputed domain names.

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. The Respondent failed to rebut that prima facie case because it did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. 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, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.

The disputed domain names were registered in 2016 and 2021, many years after the Complainant obtained its trademark registrations for DEMAG, including in China, where the Respondent is located. The disputed domain names all wholly incorporate the DEMAG mark, with additional letters. The evidence shows that the Respondent had actual knowledge of the Complainant and its DEMAG marks at the time that he registered the later four disputed domain names in 2021, due to the Complainant’s partially successful opposition to his company’s trademark application. Moreover, DEMAG is an arbitrary mark with no inherent connection to the Complainant’s cranes, yet the Respondent uses the disputed domain names with respect to an identical class of goods. The Panel does not consider this to be coincidental. In view of these circumstances, the Panel finds that the Respondent knew of the Complainant and its DEMAG trademark at the time of registration of all the disputed domain names.

The Respondent uses the disputed domain names, which wholly incorporate the Complainant’s DEMAG mark, in connection with websites for Demag Crane (Huizhou) Co., Ltd, on which the Respondent offers for sale cranes, hoists and other products. The Respondent offers no justification for use of the disputed domain names. Given these circumstances and the findings in Section 6.2B above, the Panel finds that the disputed domain names were intended to attract Internet users by creating a likelihood of confusion with the Complainant’s DEMAG trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of products on those websites within the terms of paragraph 4(b)(iv) of the Policy.

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 <cndemageqzj.com>, <demageddhl.com>, <demageqzj.com>, <demageqzsb.com> and <zgdemage.com> be cancelled.

Matthew Kennedy
Sole Panelist
Date: August 10, 2021

¹ 国家知识产权局 (2020) 商标异字第0000066556号.