WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GEA Group Aktiengesellschaft v. eXCELLENCES SRL
Case No. D2021-1986
1. The Parties
The Complainant is GEA Group Aktiengesellschaft, Germany, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.
The Respondent is eXCELLENCES SRL, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <geaeurope.com> is registered with One.com A/S (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 June 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 25, 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 July 7, 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 amendment to the Complaint on July 9, 2021.
The Center sent an email communication in English and Italian to the parties on July 7, 2021 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Italian. The Complainant submitted a request for English to be the language of the proceeding on July 9, 2021. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amendment to 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 in both English and Italian, and the proceedings commenced on July 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2021.
The Center appointed Edoardo Fano as the sole panelist in this matter on August 17, 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to the Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
4. Factual Background
The Complainant is GEA Group AG, a German company operating in the field of process technology and components for sophisticated production processes, and owning several trademark registrations for GEA, among which the following ones:
- European Union Trademark Registration No. 000224782 for GEA, registered on December 7, 1998;
- International Trademark Registration No. 179842 for GEA, registered on September 30, 1954.
The Complainant also operates on the Internet, owning several domain names, among which <gea.com>, <geacompany.eu> and <geagroups.com>.
The Complainant provided evidence in support of the above.
The disputed domain name <geaeurope.com> was registered on May 10, 2021, according to the WhoIs records, and the website at the disputed domain name is inactive.
5. Parties’ Contentions
The Complainant states that the disputed domain name <geaeurope.com> is confusingly similar to its trademark GEA, as it fully incorporates its trademark combined with the geographical term “europe”.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, nor is the Respondent commonly known by the disputed domain name. The Complainant asserts the Respondent is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark GEA is distinctive and internationally known and the disputed domain name redirects to the Complainant’s website. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that the Respondent intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites. Furthermore, the Complainant suspects that the Respondent is intentionally attempting to generate profits by using the disputed domain name for phishing activities, since the MX records attached to the disputed domain name have been activated.
The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
6. Discussion and Findings
6.1 Language of Proceedings
According to paragraph 11(a) of the Rules, the Panel has decided that the language of the proceeding will be English. The language of the Registration Agreement is Italian, however, the Panel considers appropriate to conduct the proceeding in a language other than that of the Registration Agreement, since the Respondent is based in United Kingdom and did not object to proceed in English: therefore, the request to translate the Complaint into Italian would be an unfair burden as well as an unnecessary delay for the Complainant. Furthermore, the Respondent received the case-related communications from the Center both in Italian and English but did not comment to the Complainant’s request to use English and did not submit any reply. The Panel would have accepted a response in Italian, but the Respondent did not file a response. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.
6.2 Substantive Issues
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark GEA both by registration and acquired reputation and that the disputed domain name <geaeurope.com> is confusingly similar to the trademark GEA.
Regarding the addition of the geographic term “europe”, the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent a finding of confusing similarity between the disputed domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,
WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub,
WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart,
WIPO Case No. D2000-0713). The addition of the term “europe” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark (see WIPO Overview 3.0, section 1.8).
It is also well accepted that a generic Top-Level Domain, in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see WIPO Overview 3.0, section 1.11).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.
Moreover, the Panel finds that the disputed domain name carries a risk of implied affiliation as it effectively impersonates or suggests sponsorship or endorsement by the Complainant in relation to the European market. See WIPO Overview 3.0., section 2.5.1.
Based on the facts of this case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark 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”.
Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark GEA in the field of process technology and components for sophisticated production processes is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name.
As regards the use in bad faith of the disputed domain name, presently pointing to an inactive website, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith. The Panel notes that the Complainant claims that at the time of the filing of the complaint, the disputed domain name was redirecting to the Complainant’s website, this also amounts to bad faith use. Moreover, since the MX records attached to the disputed domain name have been activated, the Panel deems that there is a high risk that the disputed domain name is likely to be used for phishing activities.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <geaeurope.com> be transferred to the Complainant.
Date: August 27, 2021