The Complainant is TÜV Marknverbund e.V. of Berlin, Germany, represented internally.
The Respondent is TUV International of Milan, Italy. 2. The Domain Names and Registrar
The disputed domain names and are registered with Realtime Register B.V. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 12, 2014. On December 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 15, 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.
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 December 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 8, 2015.
The Center appointed Petter Rindforth as the sole panelist in this matter on January 19, 2015. 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.
On February 2, 2015, the Panel issued Administrative Panel Procedural Order No. 1 (the "Order") requesting the Complainant to clarify the Complainant's requested remedy, as the disputed domain names were not correctly cited in the original version of the Complaint. The Complainant duly replied to the Order on February 2, 2015.
The Panel shall issue its Decision based on the Complaint, the Complainant's reply to the Order, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in English, which is the language of the Registration Agreement for the disputed domain names as confirmed by the Registrar. 4. Factual Background
The Complainant states that the Complainant is an association founded to exercise on behalf of the TÜV Companies the rights of their trademarks containing TÜV.
The Complainant refers to the following trademark rights:
Community Trademark Registration No. 009990111 TÜV (word), registered on July 12, 2012, in respect of goods and services in classes 1-45, and in the name of the following owners: TÜV NORD AG; TÜV Österreich (Technischer Überwachungs-Verein Österreich); TÜV Rheinland AG; TÜV Thüringen e.V.; Verband der TÜV e.V.; TÜV Markenverbund e.V.; TÜV Saarland e.V.; TÜV SÜD Aktiengesellschaft.
Community Trademark Registration No. 000546689 TUV (word), registered on February 19, 1999, in respect of services in classes 35, 41 and 42, in the name of the following owner: Technischer Überwachungs-Verein Rheinland Berlin Brandenburg Pfalz e.V.
The disputed domain names and were registered on November 25, 2014. No detailed information is provided about the Respondent's activities, apart from what is mentioned below by the Complainant. 5. Parties' Contentions A. Complainant
According to the Complainant, the disputed domain names are both confusingly similar to the registered Community Trademarks TÜV and TUV, both especially used for testing and certification services.
The use of the disputed domain names and causes a danger of confusion on the part of the relevant public with respect to both trademarks, considering the distinctive and dominant components, as well as the services covered by the trademarks as well as by the disputed domain names. According to the content of the website related to the disputed domain names, the Respondent offers verification and certification services, which are absolutely identical to the services covered by the trademarks TÜV and TUV.
The dominant element of the disputed domain names and is the distinctive element TUV, as the word "intl" is only an abbreviation of the pure descriptive word "international".
The Complainant further states that the Respondent has no rights or legitimate interests of the disputed domain names, as the owners of the TÜV and TUV trademarks have never granted to the Respondent a right of utilization of the trademarks, and there is no affiliation between the Complainant and the Respondent.
Finally, the Complainant states that the disputed domain names were registered and are being used in bad faith. The predominating element "tuv" in the disputed domain names and is not coincidentally highly similar to the trademark TÜV, which is an abbreviation for "Technischer Überwachungs- Verein" ("Technical Inspection Association"). The TÜV companies are world famous leading technical and verification service providers, and the trademark is well known worldwide. The Respondent describes itself on its corresponding website as "the best independent Certification body in the world", offering a "number of verification and certification services", thereby identifying its business as identical with the main field of the Complainant's business. To promote the verification and certification services, the Respondent has intentionally attempted to attract Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's trademarks.
The Complainant requests that the Panel issue a decision that the disputed domain names and be cancelled. 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 names are 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 respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant states that the Complainant is an association founded to exercise on behalf of the "TÜV Companies" the rights of their trademarks containing "TÜV", and refer to the two Community Trademark Registrations No. 009990111 TÜV (word), and No. 000546689 TUV (word).
However, the Panel notes that the Complainant has not provided any documents to prove the claimed position.
The Community Trademark No. 000546689 TUV (word) is registered in the name of Technischer Überwachungs-Verein Rheinland Berlin Brandenburg Pfalz e.V. As there is no documentation showing the references between the Complainant and the registered owner of this trademark registration, the Panel will not take this trademark registration into consideration.
The Complainant also refers to the Community Trademark Registration No. 009990111 TÜV (word), of which the Complainant is duly and officially registered as one of the eight owners, all with "TÜV" as part of their company names. Accordingly, the Panel will decide on this case based on the Complainant's reference to this registered trademark.
The Panel concludes that the disputed domain names consist of the Complainant's trademark TÜV, without the diaeresis (two dots) over the letter U, and a hyphen followed by the addition of "intl", being the generic short form of "international". The deletion of the dots over the letter U is more of a technical change, to make the disputed domain names internationally registrable, and the hyphen and the generic addition does not distinguish the disputed domain names enough from the trademark. See Audi AG and Volkswagen AG v. Glenn Karlsson-Springare,WIPO Case No. D2011-2121. ("The additional word "environment" following the trademarks AUDI, VW and VOLKSWAGEN in the disputed domain names is merely generic and does not avoid a finding of confusing similarity of the disputed domain names with Complainants' trademarks.")
The Panel therefore concludes that the disputed domain names and are confusingly similar to the Complainant's trademark TÜV. B. Rights or Legitimate Interests
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
However, when applying this provision, previous UDRP panelists have generally concluded that the respondent's default does not automatically result in a decision in favor of the complainant. See Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413.
The Panel will decide on this case based on the information provided by the Complainant.
By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names, or to rebut the prima facie case that the Complainant has established under this paragraph of the Policy.
The Respondent is not an authorized agent or licensee of the Complainant's products or services and has no other permission to apply for any domain names incorporating the trademark TÜV. See Compagnie de Saint Gobain v. Com-Union Corp,WIPO Case No. D2000-0020 (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
However, the Panel notes that, according both to the Registrar's confirmation of December 15, 2014, as well as of the WhoIs printout provided by the Complainant (Annex 1 of the Complaint), the Respondent's name is identified as "TUV International".
Further, at the Respondent's web page connected to the disputed domain name (printout provided by the Complainant as Annex 6 of the Complaint), the Respondent states that:
"TÜV-International is an independent accreditation authority established in 1995. It accredits certification bodies and training organizations and also administers an auditor registration scheme. TÜV-International does not perform certification."
The Complainant's Community Trademark No. 009990111 TÜV was filed on May 24, 2011. The Community Trademark No. 000546689 TUV that the Complainant has referred to was filed on June 6, 1997.
Accordingly, if the information on the Respondent's website is correct, the Respondent was established as TÜV-International prior to the trademark rights of the Complainant.
As the Complainant has provided this information without any specific remarks, other than the general note that the Respondent has no rights or legitimate interests of the disputed domain names, the Panel cannot draw any other conclusion than that the Complainant does not question the information that the Respondent was established in 1995 as TÜV-International (or TUV-International as identified in Annex 1 to the Complaint).
Although concluded above that and are confusingly similar to the Complainant's trademark TÜV, when it comes to the question if the Respondent has rights or legitimate interests to the disputed domain names, the Panel notes that both disputed domain names indicate a short version of the Respondent's name "TÜV-International" as "tuv-intl".
For the above reasons, the Panel finds that the Complainant has failed to establish that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
In light of the Panel's finding under section B above, it is unnecessary for the Panel to address this issue. 7. Decision
For the foregoing reasons, the Complaint is denied.
Petter Rindforth
Sole Panelist
Date: February 2, 2015
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