WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

thyssenkrupp AG v. Privacy service provided by Withheld for Privacy ehf / Web Solutions ApS

Case No. D2021-3846

1. The Parties

Complainant is thyssenkrupp AG, Germany, represented by Thyssenkrupp Intellectual Property GmbH, Germany.

Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Web Solutions ApS, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <thyssekrupp.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2021. On November 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 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 Complainant on November 29, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 1, 2021.

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 Respondent of the Complaint, and the proceedings commenced on December 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2021. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on January 19, 2022.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on January 27, 2022. 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

Complainant is a diversified German company operating in the steel, components technology, industrial solutions, and materials services sectors.

Complainant is the proprietor of numerous registrations for its THYSSENKRUPP mark, including:

- International registration No. 1342637 for THYSSENKRUPP (word mark), registered on January 29, 2016 for goods and services in classes 1, 4, 6, 7, 9, 12, 17, 19, 35, 36, 37, 38, 39, 40, 41 and 42;
- International registration No. 713857 for THYSSENKRUPP (word mark), registered on April 29, 1999 for goods and services in classes 1, 4, 6, 7, 9, 11, 12, 16, 17, 19, 37 and 39.

The disputed domain name was registered on May 27, 2021. It redirects to Complainant’s primary business website at “www.thyssenkrupp.com”.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

Under the first element, Complainant states that it is the owner of several international and national trademark registrations for its mark THYSSENKRUPP, which is an unusual term consisting of the names of the two undertakings which made up Complainant, which has intensively used this mark since 1999. The disputed domain name differs from Complainant’s mark only by a single letter, namely, the letter “n” that is missing from the disputed domain name.

Under the second element, Complainant states that Respondent has never sought nor obtained any trademark registrations that correspond with the disputed domain name, nor is Respondent commonly known by it. Respondent has no connection to Complainant and does not use the disputed domain name for commercial purposes. Respondent has never been authorized by Complainant to register or use any of its trademarks, nor to incorporate them into a domain name. Complainant has not authorized Respondent to redirect its disputed domain name to Complainant’s website.

Under the third element, Complainant states that Respondent had knowledge of Complainant’s well-known THYSSENKRUPP mark when registering the disputed domain name. Complainant is a diversified industrial group with more than 104,000 employees, annual revenues exceeding EUR 29 billion, and operations in 60 countries. It is one of the world’s largest steel producers. Complainant was created by the 1999 merger of Thyssen AG, founded in 1891, and Krupp, founded in 1811. The THYSSENKRUPP mark has a strong reputation in Germany and internationally. Both elements of the mark are without a specific meaning in any language.

Respondent is using the disputed domain name by passively holding it to benefit from Complainant’s reputation. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.

Complainant requests transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the THYSSENKRUPP mark through registrations in numerous jurisdictions. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.

In comparing Complainant’s THYSSENKRUPP mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to it. The disputed domain name consists of an obvious misspelling of Complainant’s mark. It is the consensus view of UDRP panels that, in such cases, Complainant has standing to bring a case because Complainant’s mark is sufficiently recognizable within the disputed domain name. See WIPO Overview 3.0, section 1.9. See also, for example, Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 (<wochovia.com>), Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2006-0071 (<fuijifilm.com>).

It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”), in this case, “.com”, to a disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the THYSSENKRUPP mark with the permission of Complainant.

The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. The circumstances of the case prevent the inference of rights nor legitimate interests on the part of Respondent. There is no evidence that Respondent is known by the disputed domain name. Rather, the disputed domain name redirects to Complainant’s own website at “www.thyssenkrupp.com”. Such use does not constitute a legitimate fair use and does not establish rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 2.5.3. See also ViacomCBS Inc., Viacom International Inc., CBS Broadcasting Inc v. Domains By Proxy, LLC / CBS Legal Online Enforcement Registrant, CBS Legal Online Enforcement, WIPO Case No. D2021-2562; CVS Pharmacy, Inc. v. Cue Balls, WIPO Case No. D2021-3178.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the Panel finds that Complainant has demonstrated Respondent’s bad faith registration of the disputed domain name. Complainant’s rights in its THYSSENKRUPP mark predate by decades the registration of the disputed domain name. Based on the evidence presented, it is apparent that Respondent knew or should have known that the disputed domain name was confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.2. Under the circumstances, Respondent’s registration of a disputed domain name reflecting Complainant’s well-known mark in its entirety, save for a missing letter “n”, suggests that Respondent had actual knowledge of Complainant’s rights in the THYSSENKRUPP mark when registering the disputed domain name and indeed registered the disputed domain name for the purpose of taking advantage of Complainant’s mark.

Turning to use of the disputed domain name, the Panel finds that Complainant has provided sufficient evidence demonstrating Respondent’s bad faith. The disputed domain name resolves to Complainant’s own website. Misleading Internet users by using the disputed domain name to redirect to Complainant’s website is evidence that Respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark. See WIPO Overview 3.0, section 3.1.4. In such circumstances, Respondent retains control of the redirection “thus creating a real or implied ongoing threat to the complainant”. Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625. See also Skyscanner Limited v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2019-2974.

The Panel therefore finds that Complainant has established the third element under 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 name <thyssekrupp.com> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: February 10, 2022