WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thyssenkrupp AG v. Zhe Li, Li Zhe
Case No. D2017-1911
1. The Parties
The Complainant is Thyssenkrupp AG of Essen, Germany, internally represented.
The Respondent is Zhe Li, Li Zhe of Anyang, Henan, China.
2. The Domain Names and Registrar
The disputed domain names <thyssenkrupp-tata.info> and <thyssenkrupptatasteel.com> are registered with West263 International Limited (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2017 regarding the domain names <thyssenkrupp-tata.info>, <thyssenkrupptatasteel.com> and <thyssenkrupp-tata.com>. On October 2, 2017, the Center transmitted by email to the Registrar and Xin Net Technology Corp. a request for registrar verification in connection with these domain names. On October 9, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain names <thyssenkrupp-tata.info> and <thyssenkrupptatasteel.com>, and providing the contact details. On October 23, 2017, Xin Net Technology Corp. replied by email that the domain name <thyssenkrupp-tata.com> was no long registered with it.
On October 27, 2017, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with domain name <thyssenkrupp-tata.com>. On October 30, 2017, HiChina Zhicheng Technology Ltd. provided the new registrant of the domain name <thyssenkrupp‑tata.com>. The Center sent an email communication to the Complainant on November 1, 2017 providing the registrant and contact information of domain name <thyssenkrupp‑tata.com>, and inviting the Complainant to submit an amendment to the Complaint. On November 6, 2017, the Complainant filed an amendment to the Complaint, requesting to remove the domain name <thyssenkrupp-tata.com> from this proceeding.
On November 7, 2017, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on November 10, 2017. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on November 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2017.
The Center appointed Francine Tan as the sole panelist in this matter on December 7, 2017. 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 one of the world’s largest steel producers, with more than 155,000 employees worldwide and ranked the tenth largest worldwide by revenue in 2015. Its product portfolio includes steel, metals, stainless steel, amongst many others.
The Complainant is the result of a merger in 1999 between two German steel companies, both of which were founded in the 19th century. The Complainant states its trade mark THYSSENKRUPP is well known. The mark is registered in many jurisdictions across the world. The Complainant’s trade mark registrations include International Registration No. 1342637 (registered on January 29, 2016) designating 65 countries; and International Registration Nos. 713857 (registered on April 29, 1999) and 731636 (registered on July 7, 1999), both designating 41 countries, including China. The THYSSENKRUPP trade mark has been in use extensively since its first registration in April 1999.
The Complainant maintains a strong online presence and operates its main webpage at “www.thyssenkrupp.com”. The domain name <thyssenkrupp.com> was registered on January 28, 1998.
Many press reports were published regarding the signing of a memorandum of understanding for a 50/50 joint venture between the Complainant and Tata Steel, an Indian multinational steel-making company. The new name of the company was to be “Thyssenkrupp Tata Steel”.
On August 12, 2016, after a report was published in the press about a possible merger between the two said companies, the Respondent registered the disputed domain names. The disputed domain name <thyssenkrupp-tata.info> was registered on August 12, 2016 and <thyssenkrupptatasteel.com> was registered on September 20, 2017. The disputed domain names do not resolve to any active pages.
5. Parties’ Contentions
The disputed domain names are confusingly similar to the THYSSENKRUPP trade mark in which the Complainant has rights.
The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has never sought or obtained trade mark registrations which correspond to the disputed domain names. The Respondent has never been authorized by the Complainant to register or use any of its trade marks; neither has it been authorized to register or use any domain name incorporating the Complainant’s trade mark and trade name THYSSENKRUPP. The Respondent undoubtedly had knowledge of the Complainant’s well-known trade mark when choosing the disputed domain names. The Respondent could not have been using or preparing to use the disputed domain names in connection with a bona fide offering of services. The Respondent registered the disputed domain names to benefit from the Complainant’s reputation.
The disputed domain names were registered and are being used in bad faith. Considering the Complainant’s reputation and market presence, it is clear that the Respondent was fully aware of the Complainant, its THYSSENKRUPP trade mark, and the intended merger between the Complainant and Tata Steel when it registered the disputed domain names. It is not possible for someone to invent domain names which coincidentally include the fanciful company names and well-known trade marks of two companies which are in merger talks. The only purpose of registering the disputed domain names must have been to prevent the Complainant from reflecting its trade marks in a corresponding domain name. The Respondent has engaged in a pattern of conduct by registering domain names such as <gamesa-siemens.com> (Siemens AG v. yinsi baohu yi kai qi (Hidden by Whois Privacy Protection Service) / li zhe, zhe li, WIPO Case No. D2017-0375) and <bayermonsanto.net> (Bayer AG v. Lizhe, WIPO Case No. D2017-0126), which incorporate two names of well-known companies. There is no reason for the Respondent to have chosen the disputed domain names comprising the Complainant’s well-known THYSSENKRUPP trade mark except for the fact that the Respondent intended to profit from the Complainant’s reputation and economic success.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
The language of the Registration Agreement is Chinese but the Complainant requested that English be adopted as the language of the proceeding, it being a “neutral language”. The Complainant submitted the results of a Reverse WhoIs search which shows that the Respondent has registered at least 49 domain names, which are all in English and/or comprise letters of the Latin alphabet. It is evident, too, that the Respondent closely monitors economic news in the English language media, involving entities outside of China. The Complainant has no knowledge of Chinese and it would be cause significant delay in having to translate the Complaint and annexes in to Chinese.
The Respondent did not respond on the issue of the language of the proceeding.
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Panel determines, having considered the circumstances, that it would be appropriate for English to be the language of the proceeding. The Respondent did not object to the Complainant’s request in this regard. Furthermore, when one considers the other domain names the Respondent has registered and the disputed domain name <thyssenkrupptatasteel.com> which contains the English word “steel”, the Panel is satisfied that the Respondent is familiar and comfortable with the English language.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The disputed domain names are made up of the THYSSENKRUPP registered mark of the Complainant and the well-known name of “Tata Steel” or “Tata”. The disputed domain name <thyssenkrupp-tata.info> contains also the hyphen and the generic Top-Level Domain (“gTLD”) “.info”. The second disputed domain name <thyssenkrupptatasteel.com> comprises the word “steel” and the gTLD “.com”. The THYSSENKRUPP trade mark of the Complainant is easily recognizable in both disputed domain names. Therefore the disputed domain names are confusingly similar to the Complainant’s registered THYSSENKRUPP trade mark. The addition of the hyphen/the word “steel”, and the gTLDs do nothing to remove the confusing similarity.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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.”
The Respondent did not respond to the Complaint nor present any evidence to demonstrate it has rights or legitimate interests in the disputed domain names. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can demonstrate its rights or legitimate interests, are present in this case.
The Complainant, on the other hand, established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain names were registered and are used in bad faith. Given (i) the fame of the Tata Steel Company and the Complainant, (ii) the publicity in the press relating to the merger of the two companies, (iii) the number of and nature of other domain names the Respondent has registered (e.g., <tmobile-sprint.com>, <vodafone-idea.com>, <oracle-accenture.com>, <bayermonsanto.net> and <snapdealflipkart.com>), and (iv) the Respondent’s silence in this proceeding, the Panel finds no reason to conclude otherwise. The term “thyssenkrupp” is not a word which one can believe the Respondent devised on its own, without reference to the Complainant. The combination of the Complainant’s trade mark with the Tata brand name and the reference to “steel” are obvious tell-tale signs of opportunistic bad faith. Although the disputed domain names are not being used, this does not prevent a finding of bad faith. (See Section 3.3 of the WIPO Overview 3.0)
The third element of paragraph 4(a) of the Policy is therefore satisfied.
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 names <thyssenkrupp-tata.info> and <thyssenkrupptatasteel.com> be transferred to the Complainant1 .
Date: December 28, 2017
1 The transfer of the disputed domain names shall be ordered without prejudice to any rights of third party Tata in the disputed domain names.