WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Komatsu Deutschland GmbH v. Ali Osman / ANS Case No. D2009-0107 1. The Parties
The Complainant is Komatsu Deutschland GmbH, Hannover, Germany, represented by Brinkmann.Weinkauf, Germany.
The Respondent is Ali Osman / ANS, Kartal, Istanbul, Turkey. 2. The Domain Names and Registrar
The disputed domain names and are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2009. On January 28, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR.
Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain names. On February 4, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 27, 2009.
On March 5, 2009, the Center received an informal email communication from the Respondent which will be discussed further below. Even though the Respondent has failed to submit a response in compliance with paragraph 5 of the Rules and in hard-copy, the Panel has decided to consider all pieces of evidence put forth by the Respondent. The Panel believes that the powers enumerated under paragraph 10 and paragraph 15 of the Rules permits them to consider the arguments of the Respondent despite the fact that it has not met a technical requirement of the Rules.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on March 4, 2009. 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 the national Komatsu distributor for the German market, as well as a wholly owned subsidiary of Komatsu Europe International NV. The Complainant and Komatsu Europe International NV are part of the Komatsu Group, which was founded in 1921 and is engaged in the manufacturing and sale of construction and mining equipment, as well as utility and industrial machinery.
In accordance with Annex 2, the trademark KOMATSU has been held by the Complainant's parent company since 2003. The Complainant is one of a number of subsidiaries of the parent company, which are located all around the world.
As evidenced by an email from the Registrar Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR and from a Whois search, the record for the disputed domain names of and were created on September 25, 2008 by the Respondent. 5. Parties' Contentions A. Complainant
The Complainant in this case is a subsidiary of the Komatsu Group operating in Germany. The Complainant has evidenced through the complaint and the accompanying Annexes that the Complainant has the right to use the trademark KOMATSU in connection with its manufacturing and sale of construction, mining, utility and industrial equipment. The Complainant notes that the Komatsu Group itself has 208 subsidiaries all around the world and has around 40,000 employees.
The Complainant begins its case by evidencing through Annex 2 and Annex 3 that the parent company, Komatsu Limited, is the owner of the trademark KOMATSU and has provided Komatsu Europe International NV the right to use the trademark KOMATSU and the right to assign it to its subsidiaries. The Complainant, as a subsidiary of Komatsu Europe International NV, contends that as a result they have the right to use the KOMATSU trademark as the Komatsu entity in charge of the distribution of the products for the German market.
The Complainant further argues that as the disputed domain names and wholly incorporate the Complainant's KOMATSU trademark, they are identical and confusingly similar to a trademark in which the Complainant has rights under paragraph 4 of the Policy. The Complainant further notes that the use of the term “Germany” in the disputed domain names adds to the confusion, as the translation of “Germany” is “Deutschland” which is part of the Complainant's company name. As a result the Complainant contends that Internet users will mistakenly associate the disputed domain names with being associated with the Complainant.
The Complainant thereafter argues that the Respondent has no rights or legitimate interest in the disputed domain names under paragraph 4(a)(ii) of the Policy. The Complainant contends that the Respondent has not been commonly known by the disputed domain names and that there is no evidence that the Respondent's use of and are being used in connection with a bona fide offering of goods or services.
Additionally the Complainant contends that there is no connection between the Respondent and the Complainant as well as with any other member of the Komatsu Group. The Respondent has also not been licensed or otherwise authorized to use the Komatsu trademark or to apply for any domain name incorporating the Komatsu trademark.
Finally, under paragraph 4(a)(iii) of the Policy, the Complainant avers that the domain names are both being used in bad faith. The Complainant notes that the graphic representation of the Komatsu trademark is being used on both and . Furthermore, the Complainant contends that the content of both disputed domain names refer to the Komatsu Group and to Komatsu products. The Complainant states that the website content under “products” is largely identical to the contents of “”, a member of the Komatsu Group. The Complainant has produced evidence of this through the accompany Annexes.
The Complainant alleges that as a result of the above, the disputed domain names are trying to capitalize off the Complainant's market presence and the goodwill associated with the KOMATSU trademark. The Complainant notes that it can be assumed that the Respondent's objective is to redirect potential Komatsu customers to their domain names and use the KOMATSU trademark's reputation for their own purposes and without any legitimate interests. The similarities cannot simply be construed as coincidences and as a result, the Respondent is using the disputed domain names in bad faith. B. Respondent
The Respondent did not formally respond to Complainant's contentions in accordance with paragraph 5 of the Rules. Instead, the Respondent has submitted a short communication via email.
The email communication was less of a rebuttal to the Complainant's contentions, but more of a request to review the documentation in Turkish. However as the Center noted, the language of the proceedings has properly been determined to be in English. In its communication, the Respondent notes that it is a company selling domain names and offering hosting services for its clients. The Respondent notes that the disputed domain names were purchased around five years ago at the request of a few of the Respondent's clients. However after the domain names were purchased, the Respondent did not hear back from the clients and accordingly after some time halted the operations of the respective domain names. 6. Discussion and Findings
In accordance with the Rules, a panel is required to render its decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. (Rules, paragraph 15(a)).
Additionally, in each case a complainant must establish each element of paragraph 4(a) of the Policy, which are as follows:
(i) the disputed domain name is identical 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 respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The complainant must establish these elements regardless of whether the respondent replies to the complaint. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. A Identical or Confusingly Similar
In meeting its obligation under paragraph 4(a)(i), the Complainant has first evidenced that since 2003 the Complainant's parent company, Komatsu Limited has had a registered right to the KOMATSU trademark and has been in business since 1921. It is clear that the trademark has been used not only in Germany but also in a number of other countries as well. The Complainant has further evidenced vis-à-vis Article 19 of the Distribution Agreement, provided as Annex 3, that the Complainant has obtained certain rights with respect to the KOMATSU trademark. In this respect, the Complainant is a beneficiary of the KOMATSU trademark. The Complainant is also a wholly owned subsidiary of Komatsu Europe International NV, which is wholly owned by Komatsu Limited, the owner of the KOMATSU Trademark. In considering the right of the Complainant to bring forward its current complaint, the Panel has taken into account a number of issues. The Panel acknowledges and agrees with the Complainant that in previous instances, past panels have permitted parties with beneficial rights to a trademark to assert their claims. Additionally, the fact that the Complainant operates under the “Komatsu” name, as a subsidiary of Komatsu Limited, is persuasive to the Panel as well. As a result of these facts, the Panel finds that the Complainant has a sufficient basis to rely on rights in the Komatsu mark for the purposes of this Complaint.
Presently the disputed domain names and wholly incorporate the KOMATSU trademark. Due to the fact that the Complainant has shown that they have rights to the trademark as well as the inclusion of Komatsu name in the disputed domain names, the Panel finds that the domain names of and are identical to a trademark in which the Complainant has rights.
The Panel also agrees with the Complainant's contention that the use of the geographically descriptive term “Germany” does not reduce the likelihood of confusion. Previous decisions have held that the combination of a geographical name is common practice for many domain names, and does not eliminate any resulting confusing similarity. Inter-IKEA v. Polanski,WIPO Case No. D2000-1614; See also Wal-Mart Stores Inc. v. Walmarket Canada,WIPO Case No. D2000-0150. In many cases the end result when a geographical term is combined with a well-known trademark is that potential consumers and Internet users are misled and confused as to a false association between the actual trademark holder and an entity merely using the mark in their domain name. Red Bull HmbH v. Tony Marinelli,WIPO Case No. D2001-0522.
In this particular case the Panel also finds that there is an increased likelihood of confusion since the Complainant operates under the name “Komatsu Deutschland” and the term “Germany” means “Deutschland” in English. Therefore the Panel finds that there is a real likelihood of confusion in this instance. Additionally, the Panel disregards the use of the suffixes “.com” and “.net” as irrelevant distinctions that do not alter the likelihood of confusion. Id.; VAT Holding AG v. V,WIPO Case No. D2000-0607; Rolls-Royce PLC v. Hallofpain,WIPO Case No. D2000-1709.
Accordingly, the Panel finds that the disputed domain names are identical and confusingly similar to a trademark in which the Complainant has rights. As a result the Complainant has met the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is now required to make a prima facie case showing that the Respondent lacks rights or a legitimate interest in and . Once the Complainant has presented its case in this regard, the Respondent thereafter has the burden of evidencing to the Panel that they have rights to or a legitimate interest in the disputed domain names. See Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121; Belupo d.d. v. WACHEM d.o.o, WIPO Case D2004-0110.
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that the respondent can use to demonstrate that they possess rights or a legitimate interest in the disputed domain names. Additionally, the absence of rights or legitimate interests can also be established if a complainant makes out a prima facie case and the respondent enters no response. De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005.
Throughout the complaint and the accompanying Annexes, the Complainant has presented sufficient evidence that they possess a certain degree of rights to the KOMATSU trademark. The Panel also finds that an entity with a non-exclusive right to use a trademark can enforce their rights to that mark in such a domain name proceeding. Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions,WIPO Case No. D2003-0624. As shown under Annex 2, the KOMATSU trademark was registered in 2003. Additionally, the Panel finds sufficient evidence that the Complainant, as one of many entities utilizing the KOMATSU trademark worldwide, has earned a certain degree of goodwill and reputation with the trademark.
One the other side, the disputed domain names of and were not registered until September 25, 2008. The Complainant further notes that they have not provided the Respondent with any type of license or authorization to use the KOMATSU trademark. Presently the Respondent has not submitted a meaningful response to the Complainant's allegations. As a result the Respondent has failed to demonstrate that they were commonly known or associated with the disputed domain names or the KOMATSU trademark. Additionally, in contradiction to the Respondent's contentions, the disputed domain names were not initially registered five years ago, but were registered in 2008.
Presently the Panel is unable to access the landing pages of the disputed domain names. The Complainant has however provided screen shots of both and which are for the most part identical. The screenshots of the disputed domain names evidence that fact that representations are made that the Respondent is associated with the Komatsu Group and the business of the Complainant. Additionally, the Panel agrees with the Complainant that the use of the KOMATSU trademark is virtually identical to the graphic representation of the KOMATSU mark in Annex 2 which evidences Komatsu Limited's right to the trademark. The Panel also finds that the disputed domain names contain not only references to similar products sold by the Complainant, but to actual pictures of Komatsu products as well.
In light of the above facts, the Panel finds that there is sufficient evidence to support a finding that the content of the Complainant's website and those of the Respondent are confusingly similar and have the effect of misdirecting and misleading potential customers of the Complainant to the Respondent's domain names. Likewise, the Panel finds that as the Respondent appears to be attempting to sell the actual products of the Complainant and falsely representing itself as being associated with the Komatsu Group, that there is no bona fide offering of goods or services in this case.
Due to the fact that the actual domain name landing pages are unavailable, the Panel is unable to determine whether the links on the landing pages actually lead to Komatsu products. That being said however, the description of the Komatsu business and the Complainant's products on the landing pages is strong evidence that the products were likely those of the Komatsu Group. Previous cases have held that where the links were targeted to the trademark name and the products sold by the Complainant under that trademark, that such use would not constitute a fair or legitimate use. See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; See also Microsoft Corporation v. M aka Tarek Ahmed,WIPO Case No. D2000-0548.
In order to have a legitimate use of the domain names in this instance, the Complainant must not infringe upon the Complainant's rights to the KOMATSU trademark. See CHANEL, INC. V. ESTCO TECHNOLOGY GROUP,WIPO Case No. D2000-0413. In this case the Respondent's domain names represent itself as an entity within the Komatsu Group and operating in the same territory as that of the Complainant. Additionally, the products being sold on and appear to not only be similar products, but the actual products sold by the Complainant.
In this case there is a clear element of infringement and as the Respondent's use of the disputed domain names is commercial in nature, no legitimate or bona fide use of the disputed domain names exists under the circumstances. As a result the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The final element under paragraph 4(a)(iii) of the Policy requires the Complainant to show that the disputed domain names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy provides a number of instances that constitute bad faith registration, but in the same manner as paragraph 4(c), this list is not exhaustive. In addition to the instances under paragraph 4(b), a panel is also able to draw inferences about bad faith registration in light of the facts and circumstances of the case in determining whether the complainant has met its burden. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In this particular case the Complainant's primary argument appears to be in line with paragraph 4(b)(iv) of the Policy that the Respondent registered the disputed domain names in an attempt to intentionally attract, for commercial gain, Internet users to the domain names by creating a likelihood of confusion with the Complainant's mark. In accordance with the Policy, such a finding shall be evidence of both bad faith registration and use of the domain names.
Both and wholly incorporate a trademark that the Complainant has evidenced they have rights to. The Respondent's domain names were not registered until late 2008. Additionally, as evidenced by the Complainant's Annexes, the disputed domain pages contain an identical graphic representation of the KOMATSU trademark and provide numerous background information and facts giving the impression that they are a member of the Komatsu Group and have rights to the KOMATSU trademark. Furthermore, the products being sold are not only similar, but also appear to be Komatsu products as evidenced by images on the disputed domain names as well as the categories of products being sold.
The Panel finds in light of the extensive evidence above that the Respondent had intentionally attempted to attract Internet users to the domain names for commercial gain. The numerous similarities between the Complainant's website and the disputed domain names have the potential to create significant confusion with consumers. Additionally, the Respondent is misleadingly representing itself as being associated with the Komatsu Group and is attempting to sell the same products as the Complainant in the same territory as the Complainant.
As a result, the Panel is able to conclude based on the preponderance of the evidence, that the disputed domain names were both registered and being used in bad faith by the Respondent. Accordingly the Panel finds that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, and be transferred to the Complainant.
Nasser A. Khasawneh
Sole Panelist
Dated: March 20, 2009
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