The Complainant is Deutz AG of Cologne, Germany, represented by KLAKA Rechtsanwälte, Germany.
The Respondent is tianyulong of Changchun, Jilin, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2014. On March 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2014, 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. On March 25, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 26, 2014, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 26, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on April 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2014. Email communications were received from the Respondent on April 2 and 3, 2014 respectively. However, no formal Response was filed by the specified Response due date. On April 22, 2014, the Center informed the parties that it would proceed with the panel appointment process.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on April 28, 2014. 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 A. Complainant
The Complainant is a company incorporated in Germany and the owner of several international registrations and several national registrations in China for the trade mark DEUTZ (the “Trade Mark”). B. Respondents
The Respondent is an individual, apparently with an address in China. C. The Disputed Domain Name
The disputed domain name was registered on July 25, 2012. D. The Website at the Disputed Domain Name
The website at the disputed domain name (the “Website”) offers for sale, inter alia, engines and spare parts branded with the Complainant’s Trade Mark. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is a well-known engine manufacturer, founded in 1864, and based in Cologne, Germany. The Complainant manufactures and distributes diesel engines and engine components for agricultural machinery, marine propulsion, automobiles and construction equipment, worldwide.
The Complainant has a large sales and service network with subsidiaries and/or contractual partners and distributors all over the world. In China, a subsidiary of the Complainant, namely the Deutz (Beijing) Engine Ltd., is doing business. In addition, there are about fifteen official distributors acting for the Complainant in China.
The disputed domain name is confusingly similar to the Trade Mark. It contains the Trade Mark in its entirety, together with the non-distinctive, generic word “service”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with or authorised by the Complainant in any way and is not commonly known by the disputed domain name. The Respondent is using the disputed domain name in respect of the Website in order to intentionally attract Internet users, for commercial gain. The Website features the Trade Mark and the Complainant’s logo, and offers for sale not only the Complainant’s goods under the Trade Mark, but also what are described as “unoriginal” spare parts that are said to be compatible with the Complainant’s goods, as well as goods of over 40 competitors of the Complainant.
For all of these reasons, the disputed domain name has been registered and used in bad faith. B. Respondent
The Respondent did not respond to the Complainant’s contentions, and simply sent two informal emails to the Center asking what the reasons were for the Complaint. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) allows 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. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding, for the following reasons:
1. The Complainant is a German company;
2. Requiring the Complainant to translate the Complaint into Chinese would lead to delay and cause the Complainant to incur additional translation expenses;
3. The content of the Website is entirely in English, which demonstrates the Respondent’s ability to communicate in English.
The Respondent did not file a Response and did not make any submissions regarding the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be unduly prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2. Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by 150 years.
UDRP panels have consistently held that a domain name is identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
The disputed domain name comprises the Trade Mark in its entirety together with the non-distinctive, generic word “service” which does not, in the Panel’s view, serve to distinguish the disputed domain name from the Trade Mark in any significant way.
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark and holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in disputed domain name:
(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 names 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 trade mark 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 trade mark or service mark at issue.
There is no evidence that the Complainant has authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over 150 years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (see Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the evidence suggests the disputed domain name has been used in respect of the Website, which makes unauthorised use of the Trade Mark, including the logo of the Complainant, and which offers for sale engines and other related goods under the Trade Mark without authorisation from the Complainant (including “unoriginal” spare parts), all without any disclaimer. Furthermore, the Website offers for sale goods of more than 40 competitors of the Complainant.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of a respondent:
By using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website 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 website or location or of a product or service on the respondent’s website or location.
The Respondent has been using the disputed domain name in respect of the Website, which has not been authorised by the Complainant, and which features prominently the Trade Mark and the logo of the Complainant, and contains no disclaimer and does not otherwise make it clear that the Respondent has no direct relationship with the Complainant. In addition to offering for sale the Complainant’s engines and spare parts, the Website offers “unoriginal” spare parts, as well as goods of the Complainant’s competitors. The Panel therefore finds, in all the circumstances, that the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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.
Sebastian M.W. Hughes
Sole Panelist
Date: May 12, 2014
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