WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

GEA Group Aktiengesellschaft v. Jacek Bernad, Jack-Trans Jacek Bernad

Case No. DEU2020-0023

1. The Parties

The Complainant is GEA Group Aktiengesellschaft, Germany, represented by Bardehle Pagenberg, Germany.

The Respondent is Jacek Bernad, Jack-Trans Jacek Bernad, Poland.

2. The Domain Name, Registry and Registrar

The Registry of the disputed domain name <geacompany.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is home.pl S.A.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2020. On October 30, 2020, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On November 6, 2020, the Registry 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 .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 November 11, 2020. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was December 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2020.

The Center appointed Mihaela Maravela as the sole panelist in this matter on January 18, 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 ADR Rules, Paragraph B(5).

Pursuant to the panel’s decision of October 20, 2020, in GEA Group Aktiengesellschaft v. Jacek Bernad, JACK-TRANS Jacek Bernad, WIPO Case No. DEUL2020-0003, while the language of the registration agreement is Polish, the Complainant’s request for the language of these ADR proceedings to be in English was granted by the panel and accordingly the language of the ADR proceeding shall be English.

4. Factual Background

The Complainant is one of world’s largest suppliers for the food processing industry and a wide range of other process industries. As an international technology group, the Complainant focuses on world-leading process technology and components for sophisticated production processes. The group employed about 17,500 people worldwide as of December 31, 2015.

The Complainant is the exclusive owner of a number of registered trademarks consisting of the word GEA in various jurisdictions throughout the world, including the following:

- the international trademark for the word GEA with registration number 1341160 registered as of September 2, 2015; and
- the international trademark for the word GEA with registration number 1001917 registered as of
October 23, 2008.

The Complainnat is also the holder of domain names incorporating the GEA trademark, such as <gea.com>, <gea.app>, <gea.group> and <geagroup.us>.

The disputed domain name was registered on June 24, 2020, and at the date of the decision resolves to an inactive website. According to the Complainant, the disputed domain name redirected to the Complainant’s website (more precisely to the subdomain of the Complainant addressed at the Polish speaking public under “www.gea.com./pl/index.jsp”) at the date of the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical or at least clearly confusingly similar to the Complainant’s trademarks as it fully incorporates the Complainant’s trademarks and trade name “Gea” and merely combines it with the term “company”, and such combination would lead customers and users to the – false – impression that, under the disputed domain name, the Complainant is offering its goods and services.

In addition, the Complainant argues that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the GEA trademark in the disputed domain name. Also, the Complainant has not found that the Respondent has any registered trademarks or trade names or even personal names corresponding to the designation “Gea” or the disputed domain name. It can also not be found that the Respondent is making any bona fide use or preparations of use in relation to the disputed domain name.

With regards to the third element, the Complainant argues that the Respondent was aware of the prior rights of the Complainant in the GEA trademarks when registering the disputed domain name, as the Complainant is the registered owner of prior trademark rights GEA in the European Union and the United States of America which have been registered long before the registration of the disputed domain name. Further, given that the disputed domain name merely directs to the Complainant’s website it is obvious that the Respondent was aware of the Complainant, its business, as well as its prior rights in the designation “Gea”. The Complainant further contends that the Respondent is using the disputed domain name in bad faith as the disputed domain name redirected to the domain name of the Complainant, more precisely the subdomain of the Complainant addressed at the Polish speaking public. Also, the disputed domain name is apparently used for email communication which is another indication of bad faith use, even if the Complainant reckons it has no knowledge of any actual emails sent by the Respondent using the disputed domain name in an email address, but there is a risk of phishing.

B. Respondent

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

6. Discussion and Findings

Under Article 21(1) of Regulation (EC) No. 874/2004 and Paragraph B(11)(d)(1) of the ADR Rules, in order for the Complaint to succeed, it is for the Complainant to establish:

(i) that 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) that the disputed domain name has been registered by the Respondent without rights or legitimate interest in the name; or
(iii) that the disputed domain name has been registered or is being used in bad faith.

Furthermore Article 22(10) of Regulation (EC) No. 874/2004 provides that “[f]ailure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty”.

A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law

The Complainant has submitted evidence of its rights for GEA in the form of registered trademarks right in the European Union and in various other jurisdictions. For the purposes of the present proceedings the Panel holds that the trademark registrations indicated above satisfy the requirement of having a right recognized by the European Union law.

The disputed domain name incorporates the Complainant’s trademark GEA in its entirety and differs from the said trademark only by the addition of the term “company”. As stated at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity.¹ The assessment is not different under the ADR Rules. The Panel finds that the addition of the word “company” does not prevent a finding of confusing similar and that GEA is the distinctive element. The country code Top-Level Domain (“ccTLD”) “.eu” is disregarded, as ccTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (see Disney Enterprises, Inc. and The Walt Disney Company Limited v. James West, Travel West, WIPO Case No. DEU2020-0011).

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark GEA as provided under Paragraph B(11)(d)(1)(i) of the ADR Rules.

B. Rights or Legitimate Interests

Paragraph B(11)(e) of the ADR Rules provides that the following circumstances, without limitation, demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of Paragraph B(11)(d)(1)(ii):

(1) prior to any notice of the dispute, the respondent has used the domain name or a name corresponding to the 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 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 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.

Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element, See Gymworld Inc. and Magformers UK Limited v. Vanbelle Jo, Vanbelle Law, WIPO Case No. DEU2017-0001.

In the present case, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established that it holds rights over the trademark GEA and claims that the Complainant has not licensed, authorized or permitted the Respondent to register a domain name incorporating the Complainant’s trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “gea”.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name.

Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has satisfied the condition set out at Paragraph B(11)(d)(1)(ii) of the ADR Rules.

C. Registered or Used in Bad Faith

Under Article 21(1) of the Regulation (EC) No. 874/2004 and Paragraph B(11)(d)(1) of the ADR Rules, lack of rights or legitimate interests and registration or use in bad faith are considered alternative requirements for a successful complaint. As the Panel has found that the Respondent lacks rights or legitimate interests in the disputed domain name no further discussion on bad faith registration or use is necessary.

Nevertheless, the Panel finds it likely that the Respondent was aware of the Complainant at the registration of the disputed domain name. The Complainant argues in its submission that the disputed domain name redirected to the Complainant’s website (the subdomain of the Complainant addressed at the Polish speaking public) at the date of the Complaint. The Respondent has not rebutted this assertion and relevant evidence submitted by the Complainant. Based on the case file, is appears likely that the Respondent has registered the disputed domain name in an attempt to attract Internet users to its website by using the GEA trademark. As the Complainant’s trademark is well known and given that the Respondent has failed to respond to the Complaint, the Panel cannot see any plausible good faith use of the disputed domain name on the Respondent’s part. (see for a similar finding GEA Group Aktiengesellschaft v. Registration Private, Domains By Proxy, LLC / Haila Ata, GEA Group, WIPO Case No. D2020-1672).

The Panel therefore finds that the Respondent has both registered and used the disputed domain name in bad faith and that the condition set out at Paragraph B(11)(d)(1)(iii) of the ADR Rules has also been satisfied.

7. Decision

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name, <geacompany.eu> be transferred to the Complainant, which being located in Germany, satisfies the general eligibility criteria for registration of the disputed domain name set out in Paragraph 4(2)(b) of Regulation (EC) No. 733/2002 as amended by Regulation (EU) No 2019/517.

Mihaela Maravela
Sole Panelist
Date: January 26, 2021

¹ Given the similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution, the Panel will refer to the WIPO Overview 3.0 when relevant.