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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Knorr-Bremse AG v. Aykut Yilmaz, AY-SAT Otomotiv Nakliyat Gida ith. ihr. Ltd. Sti.

Case No. D2021-2089

1. The Parties

The Complainant is Knorr-Bremse AG, Germany, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.

The Respondent is Aykut Yilmaz, AY-SAT Otomotiv Nakliyat Gida ith. ihr. Ltd. Sti., Turkey.

2. The Domain Name and Registrar

The disputed domain name <knorrbrakecaliper.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2021. On July 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 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 2, 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 5, 2021.

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, and the proceedings commenced on July 13, 2021. In accordance with the Rules, paragraph 5, the due date for response was August 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2021.

The Center appointed Alistair Payne as the sole panelist in this matter on August 6, 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 developer and manufacturer of braking systems for rail and commercial vehicles and was founded in Berlin in 1905 by Mr. Georg Knorr. The company name “Knorr-Bremse” emphasises the Complainant’s activity, as the German word “bremse” means brake. The Complainant, based in Munich, Germany, is one of the world’s leading developers and manufacturers of braking systems, with over 19,000 employees and businesses in over 90 locations in 27 countries throughout the world. The Complainant owns several international trade mark registrations for KNORR-BREMSE, including International Registration No. 726778 which was registered on October 10, 1999, and is designated in numerous countries worldwide and more than 80 domain names incorporating the Complainant’s mark including <knorr-bremse.com> and <knorrbrake.com>.

The disputed domain name was registered on February 3, 2015, and resolves to a website that offers for sale not only products under the KNORR trade mark but also various goods of the Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s KNORR-BREMSE trade mark registration which it says is fully incorporated into the disputed domain name. The Complainant asserts that the disputed domain combines the KNORR mark with the generic element “brake caliper” which includes an English translation of the German word “bremse” (meaning “brake”) together with the descriptive word “caliper”. It says that the inclusion of “brake caliper” after KNORR in the disputed domain will not differentiate the disputed domain name from its mark for the relevant public. Therefore, says the Complainant, the disputed domain name is confusingly similar to its KNORR-BREMSE trade mark registration.

The Complainant asserts that the Respondent does not have any registered trade marks or trade names or even personal names that correspond to the designation “KNORR”, or to the disputed domain name. It says that neither the name of the Respondent, nor the name of the entity promoting goods and services under the disputed domain name is in any way related to the term “KNORR”. In addition, the Complainant confirms that the Respondent has given no license or authorization of any kind to the Respondent (or to the company promoting goods and services under the disputed domain name) to use the designation “KNORR” or <knorrbrakecaliper.com>. It further says that while the Respondent is offering parts for brakes labelled “KNORR” at its website at the disputed domain name, it cannot determine whether these are genuine or counterfeit parts. However, says the Complainant, as the Respondent also offers from the website at the disputed domain name its competitors’ goods, in particular under the MERITOR, WABCO, and HALDEX marks amongst others, then this is not a genuine re-seller or bona fide offering of goods case. It is rather, says the Complainant, a case of the Respondent using the disputed domain name to “bait and switch” Internet users to goods that directly compete with those of the Complainant.

As far as bad faith is concerned, the Complainant says that considering the long establishment of its business and its scale of operation in around 30 countries around the world, the Respondent must have been aware of the Complainant and its KNORR-BREMSE trade marks when it registered the disputed domain name. In terms of use in bad faith, it asserts that the Respondent’s attempt to “bait and switch” Internet users, as described above, amounts to conduct under paragraph 4(b)(iv) of the Policy which is evidence of registration and of use in bad faith. Finally, it notes that both the use of the KNORR mark in relation to “brake caliper” in the disputed domain name is clear evidence that the Respondent is attempting to exploit the reputation and prestige of the Complainant’s mark in order to promote a range of competing products through its website.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns several international trade mark registrations for its

KNORR-BREMSE mark, including International registration 726778 which is designated in numerous countries worldwide. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s KNORR-BREMSE trade mark registration.

The first and distinctive element of the Complainant’s trade mark is the company founder’s surname “Knorr” which is fully incorporated into the disputed domain name. The second element “bremse” in English means “brake” and is descriptive of the Complainant’s products. The term “brake” is also incorporated into the disputed domain name together with the term “caliper”.

The Panel finds that, as the disputed domain name incorporates the key distinctive element “knorr” of the Complainant’s trade mark, the inclusion of the descriptive expression in English “brake caliper” after “knorr” in the disputed domain does not prevent a finding of the confusing similarity of the disputed domain name. In fact, the inclusion of the descriptive element is relevant for purposes of discussion under the second and third element.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s KNORR-BREMSE trade mark registration and the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has asserted that the Respondent does not have any registered trade marks, trade names or even personal names that correspond to the designation “knorr”, or to the disputed domain name. It has asserted that neither the name of the Respondent, nor the name of the entity promoting goods and services under the disputed domain name is in any way related to the term “knorr”. In addition, the Complainant has confirmed that the Respondent has given no license or authorization of any kind to the Respondent (or to the company promoting goods and services under the disputed domain name) to use the designation “knorr” or <knorrbrakecaliper.com>.

The Complainant has further alleged that while the Respondent is offering parts for brakes labelled “knorr” at its website at the disputed domain name, it cannot determine whether these are genuine or counterfeit parts. The Panel notes in any event that the website at the disputed domain name offers directly competing goods to those of the Complainant, in particular under the MERITOR, WABCO, and HALDEX trade marks. Further, there is nothing on the website to indicate to Internet users that the Respondent has any relationship with the Complainant or the basis on which it is selling the Complainant’s KNORR-BREMSE products. None of this is consistent with the Respondent having rights or legitimate interests as a genuine re-seller using the disputed domain name in terms of the “Okidata factors” set out in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903. The Panel finds that the Respondent is rather using the disputed domain name to “bait and switch” Internet users to competing goods to those of the Complainant. This is further supported by the construction of the disputed domain name, which carries a risk of implied affiliation when considering the terms “brake” and “caliper” are descriptive of the Complainant’s products and the disputed domain name also incorporates the entirety of the Complainant’s <knorrbrake.com> domain name.

Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which has not been rebutted by the Respondent and the Complaint also succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered in February 2015 long after the 1999 date on which the Complainant registered International mark 726778 for KNORR-BREMSE. Considering also the long establishment of the Complainant’s business and its scale of operation in around 30 countries around the world, the construction of the disputed domain name, and the offering for sale from the website at the disputed domain name of either genuine or counterfeit KNORR-BREMSE products, the Panel finds it more likely than not that the Respondent was well aware of the Complainant and of its KNORR-BREMSE trade marks when it registered the disputed domain name.

As described under Part B above, the Respondent’s attempt to confuse Internet users by using the disputed domain name incorporating the KNORR mark to attract Internet users to the website at the disputed domain name, which offers for sale the Complainant’s competitor’s products, is effectively a “bait and switch” tactic which, as described under Part B above, amounts to conduct under paragraph 4(b)(iv) of the Policy and is evidence of registration and of use in bad faith.

As a result, the Panel finds that the Complaint also succeeds under this element 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 name <knorrbrakecaliper.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: August 20, 2021

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