WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Terex MHPS GmbH v. Alireza Zomorrod
Case No. DCO2016-0018
1. The Parties
The Complainant is Terex MHPS GmbH of Dusseldorf, Germany, represented by Bryan Cave, LLP, United States of America.
The Respondent is Alireza Zomorrod of Tehran, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <demagcranes.co> (the "Disputed Domain Name") is registered with Realtime Register B.V. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 3, 2016. On May 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 4, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 of the Complaint, and the proceedings commenced on May 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 2, 2016.
The Center appointed Nick J. Gardner as the sole panelist in this matter on June 10, 2016. 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, Terex MHPS GmbH was formerly called Demag Cranes AG. It is a supplier of industrial cranes, crane components and services under the DEMAG brand, which has been used by the Complainant or its predecessors in title for over 100 years. It owns an International trademark registration for DEMAG, registration number 873,164, and registered on August 18, 2004. The Complainant maintains an active presence on the Internet, including through its domain names <demag.com> and <demagcranes.com> which were both registered in 1998. The Complainant carries out business on a worldwide basis and is clearly a substantial enterprise.
On October 8, 2014 the Respondent registered the Disputed Domain Name. The Disputed Domain Name is used to redirect anyone trying to access a website at its address to the Complainant's website at "www.demagcranes.com".
5. Parties' Contentions
The Complainant's case can be summarized as follows.
a) The Disputed Domain Name is confusingly similar to the DEMAG trademark.
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondent has registered and used the Disputed Domain Name in bad faith as the Disputed Domain Name must have been registered with knowledge of the Complainant's trademark rights. The use by the Respondent to redirect visitors to the Complainant's own website clearly shows the Respondent to be targeting the Complainant. This amounts to bad faith.
The Complainant asks that the Disputed Domain Name be cancelled.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Preliminary Matters
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel again adopts the approach set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.9, namely, "once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice".
In these circumstances the Panel is satisfied that the Center has complied with its obligation to employ "reasonably available means calculated to achieve actual notice to Respondent". Under the Rules (paragraph 5(e)) "If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint". The Panel concludes that there are no exceptional circumstances which prevent the Panel deciding the dispute. While the Respondent's failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent's default (see for example Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
6.2. Substantive Matters
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(i) the Respondent's domain name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain name; and
(iii) the Respondent's domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of a trademark registration consisting of DEMAG. It is well established that the country code Top-Level Domain ("ccTLD") ".co", does not generally affect the domain name for the purpose of determining whether it is identical or confusingly similar (see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, "when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name" (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The only difference in the present case is the addition of an entirely descriptive term ("crane") which directly relates to the business area the Complainant operates in. This difference does not suffice to negate the similarity between the Disputed Domain Name and the Complainant's DEMAG trademark. In this regard it is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694). It is also established that the addition of a generic term to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the confusing similarity (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
The Panel holds that the Disputed Domain Name is confusingly similar to the DEMAG trademark. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii). you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii). you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
None of these apply in the present circumstances. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the DEMAG trademark. The Complainant has prior rights in the DEMAG trademark which precede the Respondent's registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the DEMAG trademark, and the evidence as to the extent of the reputation the Complainant enjoys in the DEMAG trademark, and the confusingly similar nature of the Disputed Domain Name to the DEMAG trademark, and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Name leads the Panel to conclude the registration and use was in bad faith. In the present case, the Panel concludes that it is inconceivable that the Respondent selected the Disputed Domain Name independently and without knowledge of the Complainant or its products. The Respondent's motives are unclear as it is simply using the Disputed Domain Name to redirect visitors to the Complainant's own website, but it presumably sees some actual or potential advantage in so doing either now or in the future. Paragraph 4(b) of the policy provides a non-exhaustive list of examples of registration and use in bad faith as follows:
"(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location"
In the present circumstances, while the above factors may not directly apply, previous panels have found bad faith in similar circumstances when the Disputed Domain Name redirected the Complainant's website (see Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107). However the Panel notes that in any event this list is non-exhaustive and accepts the Complainants' submission that the registration of the Disputed Domain Name with knowledge of the Complainants' well-known trademark is disruptive of the Complainant's business and itself evidence of bad faith (see The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038).
Accordingly the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <demagcranes.co>, be cancelled.
Nick J. Gardner
Date: June 17, 2016