The Complainant is Dekra e.V of Stuttgart, Germany, represented by Uexküll & Stolberg, Germany.
The Respondent is Whoisguard Protected, Whoisguard Inc. of Panama, Panama / Juan Carlos Molinero of Madrid, Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 25, 2014. On July 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 30, 2014 providing the registrant and contact information disclosed by the Registrar and informing it that the Complaint was administratively deficient. The Complainant filed an amended Complaint on August 4, 2014.
The Center verified that the Complaint together with the amended 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 August 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 29, 2014.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on September 3, 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 has submitted evidence that it is the owner of the following trademark registrations:
- German trademark DEKRA with registration No. 307 54 168 and priority from August 17, 2007.
- German trademark DEKRA with registration No. 301 46 145 and priority from July 31, 2001.
- German trademark DEKRA with registration No. 301 46 146 and priority from July 31, 2001.
- German trademark DEKRA with registration No. 103 55 12 and priority from December 29, 1981.
- Community trademark DEKRA with CTM registration No. 2386597 and priority from September 25, 2001.
- Community trademark DEKRA CERTIFICATION (fig) with CTM registration No. 7079148 and priority from July 21, 2008.
- International trademark DEKRA with registration No. 782 309 and registration date January 31, 2002.
- International trademark DEKRA with registration No. 965 629 and registration date March 28, 2008.
- International trademark DEKRA (fig) with registration No. 617 352 and registration date March 19, 1994.
- International trademark DEKRA (fig) with registration No. 517 098 and registration date September 29, 1987.
The disputed domain name was registered on July 24, 2014. 5. Parties' Contentions A. Complainant
The Complainant is the world's largest vehicle testing provider. Its main tasks include the periodic inspection of motor vehicles, expert appraisals, safety inspections and the inspection of technical systems. The Complainant is present in 50 countries in Western Europe as well as in the United States, Brazil, Africa, Israel, Japan and China. In Germany, the Complainant maintains 480 own branches, employs around 30.000 people and conducts regular inspections of motor vehicles in more than 38.000 work stations.
The business identifier and trademark DEKRA enjoys high brand awareness in Europe, in particular Germany, which has been confirmed by a market survey carried out by an independent research institute.
The disputed domain name is confusingly similar to the Complainant's trademarks and business designations in which the Complainant has rights. The fact that the term "group" is added does not eliminate the similarity as "group" is a purely descriptive component. The term "group" is widely understood as "group of affiliated companies" which means that the public will pay most attention to the word "dekra".
The Respondent is neither a licensed or authorized dealer of the Complainant. The Complainant has never instructed or authorized the Respondent to register or use the disputed domain name. The Complainant sent a notice to the Respondent shortly after the disputed domain name was registered on July 24, 2014. Thus, the Respondent cannot have acquired any rights or legitimate interests within this short period between commencing use and receiving the notice from the Complainant.
There is no business relationship between the Complainant and the Respondent. The Respondent is using the disputed domain name to attract for commercial, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent's domain name.
The disputed domain name seems to be used as an instrument to obtain monetary advantages by fraudulent activities. On July 24, 2014, several employees of the Complainant received emails from what seemed to be the chairman of the board of management of DEKRA SE, a fully owned subsidiary of the Complainant, part of the DEKRA Group. The emails contained a fake non-disclosure agreement allegedly signed by the chairman in question and a request for immediate assistance. The employees were requested to reply to "[…]@".
After this, the employees received additional emails from apparently the same individual. These emails contained information that the chairman was working with a certain "Mrs. Bauer" on a transaction regarding a purchase of a company. The transaction would require special confidentiality and the requirements of the European Securities and Markets Authority ("ESMA") would have to be met. For this purpose, Mrs. Bauer should be contacted immediately. Her email address would be "esma@c[...]-". The emails were followed by telephone calls from "Mrs. Bauer" who pretended to be a lawyer of ESMA. She requested transfer of more than EUR 500.000 due to an alleged acquisition of a Hungarian subsidiary of the Complainant. The fact that the Respondent also is the holder of the domain name indicates that the whole story was invented in order to obtain money in a fraudulent manner.
The alleged transaction was completed on July 25, 2014 and the employee received a "signed" agreement of purchase and sale of shares according to which the purchase price amounted to EUR 5.500.000. The wire transfer of parts of that sum was to be done the same day. Thus, the disputed domain name is used for an attempt of fraud. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark DEKRA. The disputed domain name incorporates the DEKRA trademark in its entirety. Furthermore, the disputed domain name contains the addition of "group", which is a descriptive term commonly used to describe a collection of parent and subsidiary corporations that function as a single entity through a common source of control. The ability for a generic term, such as "group", to distinguish the disputed domain name from the trademark of the Complainant is very limited. In fact, since the Complainant's business consists of a group of companies, the addition of the term "group" to the Complainant's trademark may actually increase the risk of confusion.
Having the above in mind, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark DEKRA and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has made 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 prior to the dispute; or
(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark rights; or
(iii) that it intends to make 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.
The Complainant has not licensed or otherwise consented to the Respondent's use of the Complainant's registered trademark DEKRA in connection with the disputed domain name , which is confusingly similar to the Complainant's trademark.
There is no evidence in the case file indicating that the Respondent has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute. Furthermore, there is nothing in the case file suggesting that the Respondent is commonly known by the disputed domain name. Although given the opportunity, the Respondent has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that the Respondent is commonly known by the disputed domain name.
The disputed domain name resolves to a parked website containing sponsored ads. In addition, the Complainant has submitted evidence indicating that the Respondent is using the disputed domain name for sending fake email messages to various employees of the Complainant in an attempt to obtain money in a fraudulent manner. Such use cannot be considered a legitimate, noncommercial or fair use of the disputed domain name.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant's submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
The submitted evidence clearly indicates that the disputed domain name has not only been registered but also used with the Complainant's business and trademark in mind. The Respondent used the disputed domain name to create a fake email address in order to pass itself off as the chairman of the board of management of the Complainant in an attempt to obtain money from the Complainant in a fraudulent manner. In the Panel's view the Respondent has been engaged in a scam which was intended to generate revenue for the Respondent.
The Panel finds that there is sufficient evidence that the Respondent, by registering and using the disputed domain name for its fraudulent activities, attempted to create, for commercial gain, a likelihood of confusion with a trademark as to the source of the disputed domain name.
There is no evidence in the case file that refutes the Complainant's submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name has been registered and used in bad faith. 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.
Johan Sjöbeck
Sole Panelist
Date: September 17, 2014
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