The Complainant is Deutz AG of Cologne, Germany, represented by KLAKA Rechtsanwälte, Germany.
The Respondent is Liushuliang of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Beijing Innovative Linkage Technology Ltd. dba (the “Registrar I”). The disputed domain name is registered with GoD, LLC (the “Registrar II”). Both of the disputed domain names are referred to collectively as “the Disputed Domain Names”. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2013. On October 22, 2013, the Center transmitted by email to Registrar I a request for registrar verification in connection with the disputed domain name . On October 23, 2013, the Registrar I transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 31, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On October 31, 2013, the Complainant confirmed its request that English be the language of the proceeding. On November 1, 2013, the Respondent confirmed its request that Chinese be the language of the proceeding.
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 in both English and Chinese, and the proceedings commenced on November 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2013. On November 5, 2013, the Respondent requested again that Chinese be the language of the proceeding.
On November 15, 2013, the Complainant filed the Amendment of the Complaint with the Center. The Respondent did not submit any formal response. Accordingly, on November 26, 2013, the Center sent a proceeding update notifying the parties that the Center would appoint a panel to decide this case.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on December 6, 2013. 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.
The Panel noted that the Complainant requested in its Amendment of the Complaint to add the additional domain name to this proceeding on November 15, 2013. Accordingly, The Panel issued the Administrative Panel Procedural Order No.1 on December 16, 2013, accepting the additional domain name be added to the proceeding and requesting the Center to obtain registrar verification for the additional domain name, notify the Respondent of the additional domain name and allow the Respondent to provide a Response only in relation to the additional domain name . On December 17, 2013, the Registrar II transmitted by email to the Center its verification response for the additional domain name , confirming that the Respondent is listed as the registrant and providing the contact details. On December 23, 2013, the Center formally notified the Respondent of the Complaint and the Amendment of the Complaint in English. The due date for Response was January 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2013. 4. Factual Background
The Complainant, Deutz AG, is an engine manufacturer, based in Cologne, Germany. Complainant manufactures and distributes worldwide diesel engines and engine components for agricultural machinery, marine propulsion, automobiles and construction equipment. The Complainant is the owner of DEUTZ, International trademark, No. 158321, registered on December 17, 1951 and DEUTZ, International trademark, No. 452600, registered on May 6, 1980.
According to the WhoIs data, the Respondent is Liushuliang of Beijing, China. The disputed domain names and were registered on November 15, 2010 and April 8, 2012, respectively.
Registrar I confirms that the Registration Agreement for the disputed domain name is in Chinese. Registrar II confirms that the Registration Agreement for the disputed domain name is in English. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions could be summarized as follows:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Disputed Domain Names incorporate the Complainant’s DEUTZ trademark in its entirety. The additional features to the Disputed Domain Names are letters such as “cn”, “kh” and the generic Top Level Domain, “.com”. The letters “cn” will be perceived as a geographical indication to China, only. The Complainant and its products were also commonly known under “Kölnckner-Humboldt-Deutz” and the acronym “KHD”. “kh” element will not be perceived by the relevant public as a differentiating the disputed domain name from the Complainant’s trademarks. Therefore, these words cannot be considered sufficient to avoid confusion between the Disputed Domain Names and the Complainant’s trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
No license or authorization of any other kind has been given by the Complainant to the Respondent. The Respondent’s name and the name of the entity promoting the goods and services on the web sites under the Disputed Domain Names have nothing to do with the DEUTZ trademark or the Disputed Domain Names. The mere registration of the Disputed Domain Names does not give the Respondent rights or legitimate interests. The Respondent does not exclusively sell goods marked by the DEUTZ trademark. The Respondent does not use the Disputed Domain Names with a bona fide offering of goods or services. Therefore, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
According to the printouts of the web sites under the Disputed Domain Names, the Respondent was fully aware of the Complainant’s DEUTZ trademark at the time of registering the Disputed Domain Names. The Respondent is using the Disputed Domain Names to sell spare parts and engine parts which are meant to be used not only for the Complainant’s original products under the DEUTZ trademark, but also for goods of Complainant’s competitors. The Respondent exploits the reputation of the Complainant’s DEUTZ trademark in order to promote its own products. Thus, the Respondent registered and is using the Disputed Domain Names in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issues A. Language of Proceeding
Paragraph 11(a) of the Rules provides that “[u]nless 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 Rules allow the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement.” (See paragraph 4.3 of WIPO Overview 2.0).
The Complainant requested that the language of the proceeding be English. The Respondent requested it be Chinese. The Registration Agreement for the disputed domain name is in Chinese. The Registration Agreement for the disputed domain name is in English. The Panel also notes the following facts:
(i) The web sites to which the Disputed Domain Names resolve contains extensive content in English.
(ii) The Respondent’s business at the web sites is conducted in English.
(iii) The Respondent’s response to the Complainant dated on October 28, 2013, proposing a negotiation with the Complainant, indicates that the Respondent has sufficient English skill to proceed in the administrative proceeding.
Given these facts, the Panel is satisfied that the Respondent has sufficient familiarity with English that the Respondent should be able to understand the language of the Complaint and has chosen not to respond. It will not be prejudicial to the Respondent in its abilities to articulate its arguments in English in the administrative proceeding, whereas requiring the Complainant to translate the Complaint, the Amendment of the Complaint and all supporting materials into Chinese would cause unnecessary delay to the administrative proceeding. In order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English. B. Consolidation of Multiple Domain Names
Paragraph 3(c) of the Rules provides that “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” Paragraph 10(e) of the Rules provides that “[a] Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”
The Complainant’s request for the consolidation of the Disputed Domain Names was after the commencement of the administrative proceeding. In the proceeding at issue, the Complaint and the Amendment of the Complaint are both filed against the same Respondent and are based on the similar factual background in a way that it is expedient to hear and determine them together in order to avoid the risk of irreconcilable decisions resulting from separate proceedings (Société Air France v. Spiral Matrix,WIPO Case No. D2005-1337). Therefore, the Panel accepts the addition of the disputed domain name and finds that the Complaint and the Amendment of the Complaint are both properly filed against the Disputed Domain Names held by the Respondent in a consolidated proceeding. 7. Discussion and Findings
Paragraph 4(a) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that
(i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) [the domain-name holder has] no rights or legitimate interests in respect of the [disputed] domain name; and
(iii) [the disputed domain name] has been registered and is being used in bad faith.” A. Identical or Confusingly Similar
The Complainant established that it is the owner of DEUTZ trademark. The Disputed Domain Names incorporate the DEUTZ trademark in its entirety. The additional elements of the Disputed Domain Names are “cn”, “kh” and “.com”.
“cn” is the country code Top-Level Domain of China. “kh” in itself is a meaningless string to ordinary Internet users. These two additions do not distinguish the Disputed Domain Names from the Complainant’s DEUTZ trademark. In the Panel’s view, the addition of other descriptive terms or meaningless strings does not mitigate the likelihood of confusion between the Disputed Domain Names and the Complainant’s DEUTZ trademark. (J. Choo Limited v. Weng Huangteng,WIPO Case No. D2010-0126; J. Choo Limited v. Hui Wang aka Wang Hui,WIPO Case No. D2010-0534; Aktiebolaget Electrolux v. Li Yong,WIPO Case No. D2013-0193).
The top-level suffix “.com” in the Disputed Domain Names is inconsequential because the use of a generic Top-Level Domain is required of domain name registrants, and “.com” in the instant case does not serve to distinguish the Disputed Domain Names from the trademarks in which the Complainant has rights. (Gruner + Jahr Printing & Publishing Co. v. Global Media Consulting,WIPO Case No. D2000-1395).
Accordingly, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of WIPO Overview 2.0, whereby:
“[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interests, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The Complainant has established that it is the owner of the DEUTZ trademark and claims that the Respondent is not connected with nor affiliated to the Complainant nor is the Respondent authorized to use the DEUTZ trademark to register the Disputed Domain Names. The Respondent requested the Complainant to authorize it as the Complainant’s distributor in China in exchange of the Disputed Domain Name . The Respondent obviously has no contractual or authorized relationship with the Complainant.
No record in the WhoIs database indicates that the name of Respondent is “Deutz” or it is commonly known by that name. The Respondent uses the Disputed Domain Names to sell and promote engines and spare parts, and thus is not making a legitimate noncommercial or fair use of the Disputed Domain Names.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Names.
The Respondent did not provide any allegation or evidence indicating that it has rights or legitimate interests in the Disputed Domain Names. The Panel notes that the Respondent sells engine and spare parts on the web sites which are compatible to the Complainant’s products under the Disputed Domain Names. The Panel finds it necessary to decide whether the Respondent is making a bona fide offering of goods and services.
“It is a well-known principle of trademark law that the manufacturer of “unoriginal” spare parts is entitled to a certain limited use of the trademark of the manufacturer of the original products in connection with the bona fide offering of these goods, but this principle does not entitle the said manufacturer to incorporate the trademark in his business name or in any other type of business identifier such as a domain name.” (Volvo Trademark Holding AB v. Peter Lambe,WIPO Case No. D2001-1292)
The Respondent uses the Complainant’s DEUTZ trademark on the Disputed Domain Names and sells engines and spare parts that are alleged to be compatible to products of DEUTZ on the web sites to which the Disputed Domain Names resolve. Even if the Respondent were selling unoriginal spare parts compatible with the Complainant’s products, this would not entitle the Respondent to register the Disputed Domain Names containing the Complainant’s DEUTZ trademark with other non-distinctive elements. Therefore, the Panel finds that the Respondent is not making a bona fide offering of goods and services and has no rights or legitimate interests in the Disputed Domain Names.
Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
The Complainant’s trademark has been registered and protected in many countries in the world. The Respondent chose the DEUTZ trademark as the only distinctive part of the Disputed Domain Names. According to the screenshots of the web sites under the Disputed Domain Names in Annex 9 to the Complaint and Annex 14 to the Amendment of the Complaint, the Respondent uses the DEUTZ trademark to sell engines and spare parts. It is obvious that the Respondent registered the Disputed Domain Names with knowledge of the Complainant’s DEUTZ trademark. The Respondent has not submitted any allegation or evidence suggesting that the Respondent selected DEUTZ string with other non-distinctive elements to register the Disputed Domain Names for any reason other than the reputation of the Complainant’s trademark. The Panel finds that the Disputed Domain Names have been registered in bad faith.
The Respondent uses the DEUTZ trademark on the web sites to which the Disputed Domain Names resolve to sell and promote engines and spare parts. The Respondent confusingly employed the Complainant’s DEUTZ trademark in the Disputed Domain Names to attract Internet users to the Respondent’s commercial web sites, where the Respondent attempts to sell engines and spare parts, evidently for commercial gain. The Panel finds that the Respondent uses the Disputed Domain Names in bad faith and the fact that the web sites under the Disputed Domain Names currently are inactive does not change this fact.
Having considered the above, the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 8. 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 Names and be transferred to the Complainant.
Peter J. Dernbach
Sole Panelist
Date: January 22, 2014
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