The Complainant is GEA Group Aktiengesellschaft of Düsseldorf, Germany, represented by Schneiders & Behrendt Rechtsanwälte * Patentanwälte, Germany.
The Respondent is Eric Kratz of Sunnyvale, California, United States of America (USA). 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2014. On March 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2014, the Registrar transmitted by email to the Center its verification response:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of Eric Kratz and providing the correct contact details for him;
(c) the language of the registration agreement is English;
(d) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 26, 2014.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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 March 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2014.
The Center appointed Warwick A. Rothnie 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
The Complainant (or its predecessor) was established in Germany in the early 1930s. It now operates worldwide in the food processing and other process industries. In 2013, it employed some 18,000 people around the world and generated consolidated revenues of EUR 4.3 billion. One of its subsidiaries in the USA is GEA Heat Exchangers Inc.
The Complainant has provided a list of numerous trademarks registered around the world including particulars of its initial German registration and a number of trademarks registered in the USA. According to the details annexed to the Complaint:
- the German trademark is registered trademark No. 448964 for GEA enclosed in a device of three concentric circles, which was first registered on October 4, 1932 in respect of (it would appear) goods in International classes 6 and 19;
- the earliest trademark registered in the USA is trademark No. 0772104 for GEA, which was first registered on June 30, 1964 (claiming first use in the USA from August 12, 1963) in respect of tubes and pipes in International class 6;
- US Trademark No 2,028,058 is also for GEA was registered on January 7, 1997 (claiming first use in the USA on December 31, 1958) for a range of services in International classes 37, 40 and 42;
- US Trademark No 2,778,811 for GEA was registered on November 4, 2003 in respect of a range of goods and services in International classes 7, 9, 11, 37, 40 and 42.
The Complainant has also provided details of eight other trademarks registered in the USA based on GEA such as GEA GROUP and figurative marks.
The disputed domain name was registered on February 11, 2014. The Respondent had earlier registered the domain name which had become the subject of a UDRP complaint filed by the Complainant on March 7, 2014 and which is the subject of a separate proceeding, GEA Group Aktiengesellschaft v. J. D., WIPO Case D2014-0357. Subsequently, he has registered the domain name on March 12, 2014.
It does not appear that the disputed domain name has resolved to an active website. 5. Discussion and Findings
No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar). Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to above in Section 4.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Apart from the inclusion of the generic Top Level Domain, “.com”, the disputed domain name differs from the registered trademarks identified in Section 4 above only by the addition of “-usa” and, in the case of the German registration, the absence of the three concentric circles surrounding GEA.
It is permissible in the present circumstances to disregard the “.com” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046 and Ticketmaster Corporation v. DiscoverNet Inc.,WIPO Case No. D2001-0252. As the Complainant submits, “usa” is likely to be taken as a mere geographic descriptor. Many people would be likely to assume that the disputed domain name reflects the Complainant’s US business or someone authorized by or associated with the Complainant. Accordingly, the hyphen and the “usa” element do not detract from confusing similarity.
Therefore, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a domain name:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In the present case, the Complainant points out that the disputed domain name is not derived from the Respondent’s own name. The Complainant also states that there is no business relationship whatsoever between it (and its corporate group) and the Respondent. It states that it has not authorized him to use its trademark in the disputed domain name or otherwise.
According to the Complainant, a person identifying himself as Eric Kratz sent emails from “[…]@” to several of the Complainant’s suppliers in the USA placing purchase orders or requesting quotations for the supply of product. The Annexes to the Complaint include a request for quotation dated February 21, 2014, an amendment to that request dated March 5, 2014 and a purchase order dated March 6, 2014. Each of these is signed by “Eric Kratz, GEA Heat Exchangers Inc.” but gives an address for delivery which is not an address used by the Complainant, its subsidiary GEA Heat Exchangers or any other members of its group.
On March 12, 2014, the supplier of the goods referred to above received an email, this time from the account “[…]@” but still signed by “Eric Kratz GEA Heat Exchangers Inc.” confirming receipt of the goods ordered.
The Complainant points out that the name of the signatory to the correspondence with its supplier referred to above is the same as the name of the Respondent in this dispute. The address for the Respondent in the WhoIs details provided by the Registrar are the same as the address of the registrant of . The same Registrar has been used to register the domain name as well. In these circumstances, the Panel finds on the record in this case that the Respondent sent the emails to the Complainant’s supplier referred to above from the other two domain names, representing that he was an officer or employee of the Complainant’s subsidiary, GEA Heat Exchangers.
While there has apparently been no use of the disputed domain name in this case, the Panel finds that there is a strong prima facie case that the Respondent does not have any rights or legitimate interest in the disputed domain name. The Complainant’s trademarks long predate the Respondent’s registration of the disputed domain name, the disputed domain name is not derived from the Respondent’s own name and he is not using the disputed domain name in connection with any good faith offering of goods or services.
The Respondent has not filed a response and has not sought to rebut the Complainant’s allegations or otherwise justify his position.
In these circumstances, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondent.
The Respondent’s prior registration of and the use he has apparently made of that domain name and make it plain that the Respondent registered the disputed domain name with full knowledge of the Complainant or its corporate group and did so with the intention of taking advantage of the Complainant’s trademark to misrepresent an association with the Complainant.
The fact that the disputed domain name does not appear to have been used does not assist the Respondent as it has long been established that so-called “passive holding” can satisfy this requirement: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Panel more readily infers use in bad faith in this case given the use the Respondent has in fact made of two other very similar domain names.
In those uncontradicted circumstances, the Panel finds that the Respondent registered the disputed domain name in bad faith and has been using it in bad faith. 6. 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.
Warwick A. Rothnie
Sole Panelist
Date: May 19, 2014
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