The Complainant is TÜV NORD AG of Hannover, 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 April 1, 2015. On April 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 9, 2015, 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 April 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 4, 2015.
The Center appointed William R. Towns as the sole panelist in this matter on May 11, 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.
The Panel on June 4, 2015, issued Administrative Panel Procedural Order No. 1, requesting that the Complainant clarify its relationship with its authorized representative TÜV Markenverbund e. V. The Complainant submitted an Answer on June 9, 2015. The Respondent, although in default, was provided an opportunity to reply but did not do so. 4. Factual Background
The Complainant, headquartered in Hannover, Germany, is a global provider of safety, certification and testing services. The Complainant offers such services under the TUV and TÜV marks. The Complainant owns a German trademark registration for TÜV and a United Kingdom of Great Britain and Northern Ireland trademark registration for TUV, issued on July 28, 1980 and March 15, 1991, respectively. According to information on the Complainant's website, the Complainant has been in existence for 140 years.
"TÜV" is an abbreviation for "Technischer Überwachungs-Verein", which in English means "Technical Inspection Association". The Complainant avers that its authorized representative TÜV Markenverbund e. V. ("TÜV Markenverbund") is an association founded to exercise on behalf of the "TÜV Companies" their shared trademark rights in the sign "TÜV". The Complainant's website reflects that the TÜV Companies are separate legal entities that historically operated in non-overlapping regions in Germany, but today compete with each other in offering their services in different regions and throughout the world. The TUV Companies' use of "TÜV" goes back for more than century, and a consumer survey submitted by the Complainant indicates that the TÜV sign is widely known to the general German population.
The Respondent, headquartered in Milan, Italy, registered the disputed domain names and on November 25, 2014. The disputed domain names resolve to the Respondent's website. On its home page, the Respondent represents that it was established in 1995 and is a well-known and respected independent certification body, but the Respondent chose not to reply to the Complainant's contentions, and there is no evidence in the record to support these assertions. The Respondent's company profile page also seems to be at odds with the assertion that it is a certification body, indicating that the Respondent does not perform certification, but rather accredits certification bodies and training organizations. 5. Parties' Contentions A. Complainant
The Complainant submits that the disputed domain names are confusingly similar to the Complainant's registered TUV and TÜV marks. The Complainant asserts that the disputed domain names are visually, phonetically, and conceptually similar to the Complainant's marks, which are highly distinctive, and that the services offered on the Respondent's website are identical to those offered by the Complainant under its TUV and TÜV marks. The Complainant maintains that the inclusion of the descriptive term "intl" – the abbreviation for "international" – does not serve to distinguish the disputed domain names from the Complainant's marks.
The Complainant avers that the Respondent has no rights or legitimate interests in the disputed domain names. According to the Complainant, the Respondent has not been authorized to use the Complainant's marks and is not affiliated with one of the other TÜV companies. The Complainant explains that its marks were registered long before the Respondent registered the disputed domain names, and that even assuming the Respondent was established in 1995, the Complainant's marks already were registered and were well-known.
The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. The Complainant asserts that the TÜV Companies are world famous leading technical and verification service providers and that the TÜV sign is well-known and protected by German, international, and European marks with regard to testing and certification services. The Complainant submits survey evidence from 2012 in support of its claim that the TÜV sign is extremely well-known among the general population of Germany.
The Complainant submits that the TÜV Companies have developed a tremendous amount of goodwill in their relevant trademarks and other IP rights and enjoy an extensive reputation throughout Europe, such that the obvious intention of the Respondent in registering and using the disputed domain names was to attract Internet visitors to the Respondent's website for commercial gain, by creating a likelihood of confusion with the Complainant's TUV and TÜV marks as to the affiliation of the Respondent's website and the services offered thereon.
The Complainant requests that the disputed domain names be cancelled. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Preliminary Issue: Refiled Complaint
A "refiled complaint" for purposes of the Policy is a complaint concerning a domain name that was the subject of a previous UDRP complaint also involving the same complainant and respondent in a subsequently filed complaint. See The Trustees of the University of Pennsylvania v. Moniker Privacy Services, M,WIPO Case No. D2007-0757 (and cases cited therein). See also AB Svenska Spel v. Andrey Zacharov,WIPO Case No. D2003-0527). There is general agreement among UDRP panelists that a refiled complaint may be allowed under the Policy only in exceptional circumstances. See, e.g., Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited,WIPO Case No. D2000-0703;Creo Products Inc. v. Website In Development,WIPO Case No. D2000-1490 "Creo Products Inc.". Such decisions necessarily must be resolved on a case-by-case basis, employing logic and common sense with a view to general principles of law relating to re-litigation of cases.
In considering the circumstances in which refiled complaints should be entertained under the Policy, prior UDRP panel decisions reflect a tendency to draw a distinction between (i) refiled complaints concerning acts that formed the basis of the original complaint, and (ii) refiled complaints that concern acts occurring subsequent to the decision on the original complaint. In either situation, there appears to be consensus regarding application of the following general principles:
(i) the burden of establishing that the refiled complaint should be entertained under the Policy rests on the refiling complainant;
(ii) the refiling complainant's burden is high; and
(iii) the grounds which allegedly justify entertaining the refiled complaint should be clearly identified by the refiling complainant.
See Creo Products Inc. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.4 (summarizing consensus view on refiled complaints). The grounds that allegedly justify entertaining the refiled complaint should be identified by the refiling complainant. See Creo Products Inc. v. Website In Development, supra.
In TÜV Markenverbund e.V. v. TUV International,WIPO Case No. D2014-2172, TÜV Markenverbund filed a complaint against the Respondent concerning the same domain names at issue here. The panel in that case concluded that TÜV Markenverbund failed to demonstrate that the Respondent lacked rights or legitimate interests in the disputed domain names, and denied the complaint. The panel in TÜV Markenverbund e.V. v. TUV International noted that the respondent's website stated the respondent was established in 1995. As this information had been provided by the complainant without any specific remarks, the panel assumed that the complainant was not questioning that the respondent was established in 1995. The Panel concluded, if this statement on the respondent's website were true, that the respondent had begun trading as TUV International prior to the complainant's establishment of rights inTÜV, as the TÜV Community Trade Marks relied upon in the complaint were not registered until 1997 and 2012, respectively.
The Complainant submits the present case is not a refiling because it was not the complainant inWIPO Case No. D2014-2172. In the event the Panel finds this matter to involve a refiled case, the Complainant submits that it could not reasonably have anticipated that the TÜV Markenverbund e.V. v. TUV International panel would accept as true an otherwise unsupported assertion on the Respondent's website that it was created in 1995. Further, the Complainant submits that prior to 1995 there were numerous German, international and European trademark registrations consisting of the TÜV sign, and that the TÜV mark was well known in connection with testing and certification services.
As noted above, TÜV Markenverbund was formed to exercise on behalf of the TÜV Companies their shared rights in the TÜV mark. The Complainant is a separate legal entity from TÜV Markenverbund, as are the other TÜV Companies. So it would be correct in this sense to say that the Complainant was not the complainant inWIPO Case No. D2014-2172. However, the Complainant was one of the TÜV companies on whose behalf TÜV Markenverbund acted inWIPO Case No. D2014-2172, and the Complainant was a co-owner with TÜV Markenverbund and other TÜV companies of one of the asserted TÜV registrations.
The issue as presented above appears to be one of first impression. While the Complainant is a separate legal entity and the TÜV marks relied upon in this proceeding are solely owned by the Complainant, the Complainant's interests would seem to have been represented by TÜV Markenverbund inWIPO Case No. D2014-2172. While this is a close decision, the Panel would be inclined to find that this case involves a refiled complaint, given the relationship between the Complainant and TÜV Markenverbund. In any event, however, the Panel for the reasons set out below has concluded that the Complainant has pleaded grounds sufficient to justify entertaining the complaint.
As noted earlier, the panel in Creo Products Inc. suggested distinguishing between refilings which, on the one hand, seek to re-examine acts which formed the basis of the original complaint, and refilings which, on the other hand, concern acts occurring subsequent to the initial decision. The instant case appears to fall into the former category. In this context, the panel in Creo Products Inc. considered the situation in which the original complaint does not satisfy all the requirements of the Policy, but it is highly likely that the complainant could do so upon the submission of further evidence or arguments. The panel in Creo Products Inc. suggested that the better approach in such circumstances would be for the panel to use Rule 12 and request further statements or documents from the either or both of the parties.1
The TÜV Markenverbund e.V. v. TUV International complaint failed for want of evidence – namely, proof of the complainant's trademark rights prior to 1995, the year claimed in the Respondent's website to be the year of the Respondent's creation. It is highly likely that the requirements of the Policy could have been satisfied by TÜV Markenverbund inWIPO Case No. D2014-2172 through the submission of further evidence; the panel did not invite TÜV Markenverbund to rectify this omission. While the TÜV Markenverbund e.V. v. TUV International panel did not signal a "green light" for a refiled complaint, see Creo Products Inc., the complaint was singularly denied for an absence of proof that might have been rectified through a supplemental submission; notably as per Creo Products Inc. this was not expressly with prejudice. The Respondent has failed twice to respond to claims of cybersquatting involving the disputed domain names – first in the TÜV Markenverbund e.V. v. TUV International case and now in this case. In the rather specific circumstances at hand, the Panel concludes that the acceptance of the complaint is supported by logic, common sense, and the principles recognized and applied in relevant panel decisions under the Policy. 7. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". See Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain names are confusingly similar to the Complainant's marks, in which the Complainant has demonstrated rights through registration and use. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
Applying this standard, the disputed domain names are confusingly similar to the Complainant's marks for purposes of the Policy. The disputed domain names in this case incorporate the Complainant's TUV mark in their entirety. The addition of the descriptive term "intl" – an abbreviation for "international" – does not serve to distinguish the disputed domain names from the Complainant's marks. Although the generic Top-Level Domain ("gTLD") may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant's mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. The Respondent, without the Complainant's authorization or consent, has registered two domain names that are confusingly similar to the Complainant's marks. The Respondent is using the disputed domain names to divert Internet traffic to the Respondent's website, where the Respondent appears to offer services that are competing or related to the services offered by the Complainant under its marks.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the domain name, even if it 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.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain names within any of the "safe harbors" of paragraph 4(c) of the Policy.
Based on the record in this proceeding, the Panel considers it highly likely that the Respondent was aware of the Complainant and the Complainant's marks when registering the disputed domain names in late 2014. In the Panel's view, the fact that the disputed domain names were only recently registered raises considerable doubt that the Respondent has been providing certification and inspection services for some 20 years. Regardless, even entertaining the Respondent's dubious and unsupported contention on its website that it was formed in 1995, the Complainant's TÜV marks by that time were already well known in relation to the services the Respondent purports to be providing, and thus in all likelihood would have been known to the Respondent.
In light of the foregoing, and in the absence of any reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain names to trade on the goodwill and reputation of the Complainant's marks through the creation of Internet user confusion, in an attempt to divert Internet users to the Respondent's website. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774. This does not constitute use of the disputed domain names in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380.
Further, in the circumstances of this case, the Panel does not consider that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers. Nor does the Panel find that the Respondent has been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy, given the strong appearance in the record that the Respondent intentionally registered and is using the disputed domain names to exploit and profit from the Complainant's rights.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. In the absence of any reply by the Respondent, the Panel concludes that the Respondent's primary motive in relation to the registration and use of the disputed domain names was to capitalize on, or otherwise take advantage of, the Complainant's trademark rights, by creating a likelihood of confusion with the Complainant's marks as to source, sponsorship or affiliation with the Respondent's website or services. In view of all of the foregoing, the Panel concludes that the Respondent registered and is using the disputed domain names in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 cancelled.
William R. Towns
Sole Panelist
Date: June 28, 2015
1 The panel in Creo Products Inc. noted as follows: "There may be situations in which an administrative panel considers that the complainant has not proved that the complaint satisfies all the requirements of the [Policy], but that it is highly likely the complainant could do so upon the submission of further arguments and/or evidence. In this situation, it appears to this Administrative Panel that, rather than dismissing the complaint without prejudice, the better approach is to utilize the provisions of Rule 12 of the [Rules], and request further statements and/or documents from either or both of the parties. If, after being given this opportunity, the complainant still is unable to satisfy the panel that the complaint meets all the requirements of the [Policy], then the complaint must be dismissed. Such a dismissal must be seen as being with prejudice."
2 See WIPO Overview 2.0, paragraph 1.2.
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