WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deltona Transformer Corporation v. Unknown, Producto AG / Reiner Bayer, PROFI PRODUCTS
Case No. DEU2019-0021
1. The Parties
The Complainant is Deltona Transformer Corporation, United States of America (“United States”), represented by Fox Rothschild LLP, United States.
The Respondent is Unknown, Producto AG, Germany / Reiner Bayer, PROFI PRODUCTS, Germany.
2. The Domain Name, Registry and Registrar
The domain name at issue is <batterytender.eu> (the “Disputed Domain Name”). The Registry of the Disputed Domain Name is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the Disputed Domain Name is 1&1 IONOS SE (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2019. On December 27, 2019, the Center transmitted by email to the Registry a request for registrar verification in connection with the Disputed Domain Name. On December 30, 2019, the Registry 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 January 7, 2020, providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 12, 2020.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 22, 2020. On January 27, 2020, and March 10 2020 the Center received informal email communication from the owners of the website linked (by redirection) to the Disputed Domain Name (see below). In accordance with the ADR Rules, Paragraph B(3), the due date for Response was March 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 2020.
The Center appointed Nick J. Gardner as the sole panelist in this matter on March 22, 2020. 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 ADR Rules, Paragraph B(5).
4. Factual Background
The Complaint manufactures and distributes a range of battery chargers, battery jump starters, battery charger accessories and other battery-related products. It has been in business for over twenty years. Its products have been successful in the automotive, motorcycle, and related industries. Its website is linked to the domain name <batterytender.com> which was registered in 1998. The Complainant is the owner of European Union Registration No. 1940568 for the words “Battery Tender”, which was filed on November 6, 2000 and registered on May 14, 2003 (the “Battery Tender” trademark). It also owns similar trademarks in other jurisdictions including the United States.
The Disputed Domain Name was registered on April 7, 2006. It links by redirection to a third party website selling battery chargers and related products. An email communication from the owner of that website on March 10, 2020 to the Center stated that it had no knowledge of why the Disputed Domain Name had been redirected to its site
5. Parties’ Contentions
The Complainant says that “Battery Tender” is a term which exclusively relates to its products. It says the Disputed Domain Name is identical to this term, the “.eu” suffix being disregarded for the purpose of assessing confusing similarity.
The Complainant says the Respondent has no rights or legitimate interests in the term “Battery Tender”.
The Complainant says the Disputed Domain Name has been registered and is being used in bad faith. It says the Disputed Domain Name is being operated to divert customers to a third party site selling competing products. This is clearly in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to Article 21(1) of Regulation (EC) No. 874/2004 (“the Regulation”) and in connection with Paragraph B(11)(d)(1) of the ADR Rules, the Panel shall issue a decision granting the remedy requested by the Complainant if the latter proves in the ADR proceeding that:
(i) The Disputed Domain Name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or European Union law and; either
(ii) The Disputed Domain Name has been registered by the Respondent without rights or legitimate interest in the name; or
(iii) The Disputed Domain Name has been registered or is being used in bad faith.
In the present ADR proceeding, the Complainant has pleaded the cumulative existence of the circumstances provided by the Regulation and ADR Rules (points (i), (ii) and (iii) above). The Panel notes that the Regulation and ADR Rules list the issues under points (ii) and (iii) in the alternative, but nevertheless the Panel will examine both of these issues in order to reach its decision in the present ADR proceeding.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trademark Battery Tender for the purpose of this proceeding.
As such that the Disputed Domain Name is identical to a name in respect of which a right is recognized or established by the national law of a Member State and/or European Union law. The country-code Top-Level suffix (“.eu”) is to be ignored in making this comparison.
Accordingly the Panel finds that the first condition of Paragraph B11(d)(i) of the ADR Rules has been fulfilled.
B. Rights or Legitimate Interests
“Battery Tender” is a term which has no other meaning so far as the Panel is aware save in relation to the Complainant and its products.
Paragraph B11(e) of the ADR Rules provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(1) prior to any notice of the dispute, the Respondent has used the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with the offering of goods or services or has made demonstrable preparation to do so;
(2) the Respondent, being an undertaking, organization or natural person, has been commonly known by the Disputed Domain Name, even in the absence of a right recognized or established by national and/or European Union law;
(3) the Respondent is making a legitimate and noncommercial or fair use of the Disputed Domain Name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or European Union law.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the Battery Tender trademark. The Complainant has prior rights in the Battery Tender 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. In those circumstances, the Panel considers that the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name.
The Panel finds that the Respondent has failed to produce any evidence to establish his 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 second condition of Paragraph B11(d)(1) of the ADR Rules has been fulfilled.
C. Registered or Used in Bad Faith
Although the Panel has determined that the Complainant has sufficiently met the criteria for the second condition under section Paragraph B11(d)(1) of the ADR Rules, and it is therefore unnecessary for the Complainant to also satisfy the third condition, the Panel will nevertheless render findings on the arguments and evidence presented. Further, the third ADR condition is posed alternatively, meaning that it is sufficient for the Complainant to prove that the Disputed Domain Name is either registered or used in bad faith. As the Complainants have provided arguments in support of both registration and use in bad faith, the Panel will examine both grounds for the sake of completeness.
The evidence filed by the Complainant clearly shows that the Respondent has linked the Disputed Domain Name by redirection to a third party web site selling products which compete with those of the Complainant. The owner of that website says it had nothing to do with this and does not know why it happened. The Panel does not consider it matters – whoever effected the redirection in question is clearly intending to divert customers seeking the Complainant or its products to a competing supplier. It seems to the Panel likely that the redirection also involves generating click through revenue which benefits the registrant of the Disputed Domain Name.
Under the ADR Rules evidence of registration and use in bad faith is established by, amongst other factors, circumstances which indicate that: “the domain name was intentionally used to attract Internet users, for commercial gain to the Respondent’s website or other online location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and/or European Union law, or it is a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent” (ADR Rules paragraph B11(f)(iv)).
The Respondent’s conduct falls squarely within the type of circumstances to which the ADR Rules refer.
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 B11(d)(1) of the ADR Rules has been fulfilled.
For the foregoing reasons, in accordance with Paragraph B11 of the ADR Rules, the Panel orders that the Disputed Domain Name, <batterytender.eu>, be revoked.1
Nick J. Gardner
Date: April 12, 2020
1 To be granted the remedy of transfer in accordance with Paragraph 11(b) of the ADR Rules, a complainant must provide evidence that it satisfies the eligibility criteria for registration set out in Paragraph 4(2)(b) of Regulation (EC) No. 733/2002 as amended by Regulation (EU) 2019/517. The Complainant submits that “by virtue of its offering of goods in the European Union market continuously for at least the past 2 decades, [the] Complainant consists of “an undertaking that is established in the Union” as required by the General Eligibility Criteria for registering a .EU domain name”. However, the Panel considers that the Complainant, being a United States corporation, does not satisfy the Eligibility Criteria.