The Complainant is PALFINGER AG of Salzburg, Austria, represented by DLA Piper Weiss-Tessbach Rechtsanwalte GmbH, Austria.
The Respondent is Cheng Li of Jinan, Shandong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2012. On May 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 2012, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2012.
The Center appointed Jonathan Agmon as the sole panelist in this matter on June 21, 2012. 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 an Austrian founded company. The Complainant has for many years been among the leading international manufacturers of hydraulic lifting, loading and handling systems in the line of commercial vehicles and ships. The Complainant uses the mark PALFINGER, among others, for a truck mounted knuckle-boom crane.
The Complainant has a market share of more than 30 percent in its field of business.
The Complainant is the owner of numerous worldwide trademark registrations for the mark PALFINGER. For example: United States of America trademark registration No. 1321474 – PALFINGER, with the registration date of February 19, 1985; International trademark registration No. 721163 - PALFINGER, with the registration date of September 8, 1999, designated, among others to China, Russian Federation and Poland; Community trademark registration No. 32995 – PALFINGER, with the registration date of December 2, 1997; Israeli trademark registration No. 127883 – PALFINGER, with the registration date of March 5, 2000, and many others.
The Complainant engaged in a joint venture with Sany Heavy Industry (“Sany”), which is a leading company in the field of cranes and other construction machines. Sany owns multiple trademark registration for the mark SANY.
The disputed domain name was registered on March 8, 2012.
The disputed domain name resolves to a web page displaying advertisements by the Registrar. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name infringes both the trademark of the Complainant PALFINGER and the trademark of a third party SANY and confuses customers to believe that the website under the disputed domain name is the official website of the Complainant's and Sany's joint venture.
The Complainant further argues that the Respondent is not known by the disputed domain name and has not acquired any rights in it.
The Complainant further argues that the Respondent has not used and there is no evidence of preparation to use the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant further argues that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, since it does not make any use of the disputed domain name.
The Complainant further argues that the Complainant and Sany have published their joint venture by countless of press releases.
The Complainant further argues that the Respondent registered the disputed domain name for the purpose of selling, renting, or otherwise transferring it to the Complainant or to Sany or to a competitor of the Complainant.
The Complainant further argues that the Respondent registered the disputed domain name in order to prevent the Complainant or Sany from reflecting their marks in a corresponding domain name with respect to their joint venture.
For all the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceedings
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 language of the Registration Agreement for the disputed domain name is English.
Accordingly, and in the absence of a contrary agreement between the parties, the language of proceedings is English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant owns multiple worldwide trademarks registrations for the mark PALFINGER. For example: United States trademark registration No. 1321474 – PALFINGER, with the registration date of February 19, 1985; International trademark registration No. 721163 - PALFINGER, with the registration date of September 8, 1999, designated, among others to China, Russian Federation and Poland; Community trademark registration No. 32995 – PALFINGER, with the registration date of December 2, 1997; Israeli trademark registration No. 127883 – PALFINGER, with the registration date of March 5, 2000, and many others.
The disputed domain name integrates the Complainant PALFINGER trademark in its entirety, as a dominant element.
The disputed domain name differs from the PALFINGER trademark by the additional mark SANY, a hyphen and the generic top-level domain (gTLD) suffix “.com”.
The mark SANY is a registered trademark, owned by a third party.
UDRP panels have consistently found that the addition of third party’s trademark to a disputed domain name does not eliminate the visual impression that the disputed domain name is associated with the Complainant’s trademark (see F. Hoffmann-La Roche AG v. Bob,WIPO Case No. D2006-0751; Pfizer, Inc. v. Martin Marketing,WIPO Case No. D2002-0793 and Hofmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,WIPO Case No. D2003-0793).
This is especially true since the Complainant has engaged in a joint venture with the third party and they publicly use the combination of their marks to promote the venture. Under such circumstances, it is clear that a domain name consisting of both marks is associated with the venture itself, and thus with the Complainant.
Also, the use of a hyphen between the two marks in the disputed domain name cannot avoid confusing similarity (see Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281).
The addition of the gTLD suffix “.com” to the disputed domain name does not avoid confusing similarity (see, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Thus, the gTLD suffix “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the PALFINGER trademark, or a variation thereof.
The Respondent had not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the PALFINGER trademark at least since the year 1985. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Respondent’s use of a highly distinctive trademark of the Complainant and of a third party also suggests the Respondent’s bad faith. It was held in UDRP decisions that it is presumptive that using a highly distinctive trademark with longstanding reputation is intended to make an impression of an association with the Complainant (See Danfoss A/S v. d7r9e1a1m/淄博丹佛斯测控仪表有限公司,WIPO Case No. D2007-0934, stating that “the Panel finds that the DANFOSS trade mark, being a highly distinctive trade mark of a longstanding reputation, is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefrom”).
Also, the disputed domain name does not resolve to an active website (as stated above, the disputed domain name resolves to a web page displaying advertisements by the Registrar). It is concluded from the evidence of the Complainant, that the Respondent registered the disputed domain name, but has not put it to any use. It has been held in UDRP decisions that passive holding of domain names can, under certain circumstances, be considered bad faith use of the domain name (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393).
In the present case, taking into consideration the goodwill the Complainant has achieved in the trademark, which is neither a common noun, nor a common name, and the fact that the disputed domain name incorporates the Complainant’s trademark as a whole, as well as a distinctive trademark of a third party, it is determined by the Panel that the passive holding by the Respondent is considered bad faith.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name and the distinctiveness of the Complainant’s trademark and the passive holding by the Respondent, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 7. Decision
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 name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: July 3, 2012
Full & Egal Universal Law Academy