The Complainant is teamtechnik Maschinen und Anlagen GmbH of Freiberg, Germany, represented by BPM Legal, Germany.
The Respondent is Edgar Bechtle, EBechtle LLC of Suwanee, Georgia, United States of America ("United States") / edgar Bechtle, Suwanee, Georgia, United States. 2. The Domain Names and Registrars
The disputed domain names and are registered with GoD, LLC, and the disputed domain name is registered with Melbourne IT Ltd ("the Registrars"). Collectively, these will be referred to in this decision as the "Disputed Domain Names". 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 15, 2015. On December 15, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On December 15, 2015 and December 16, 2015, the Registrars respectively transmitted by email to the Center their verification responses 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2016. The Response was filed with the Center on January 5, 2016. The Respondent filed an amended Response on January 6, 2016.
The Complainant filed a supplemental submission on January 8, 2016. The Respondent filed a supplemental submission in reply to the Complainant's supplemental submission on January 13, 2015. The Complainant filed a further supplemental submission in reply to the Respondent's supplemental submission on January 14, 2015. On January 22, 2016, the Respondent filed a further supplemental submission.
The Center appointed John Swinson as the sole panelist in this matter on January 13, 2016. 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 is teamtechnik Maschinen und Anlagen GmbH, a German company specializing in the production technology, pioneering assembly and functional testing systems in the automotive, medtech and solar sectors. The Complainant was established in 1976 and has production sites in Germany, Poland, the United States and China. The Complainant states that it has over 900 employees worldwide, a turnover of EUR 150 million, 6 subsidiaries and 15 service locations globally.
The Complainant owns the trade mark number 39971839 for "teamtechnik", which was registered on July 28, 2000 in Germany (the "Trade Mark"). The Complainant also owns the domain name , at which its primary business website is located.
The Respondents are Edgar Bechtle, an individual who resides in the United States, and his company EBechtle LLC. Given that Mr. Bechtle is the controlling mind of the company EBechtle LLC, these parties will be treated as a single Respondent by the Panel. The Respondent's company is a small engineering and technology company based in the United States. The Respondent also owns the company Team-Technik LLC. The Complainant states that the Respondent was employed by the Complainant from October 1, 1990 to January 10, 2001.
The Respondent registered the Disputed Domain Name on October 19, 2010, and the Disputed Domain Names and on September 22, 2015.
The website at "www." is currently a "placeholder" website which states that it is under construction, provides contact details for Team-Technik LLC, and refers Internet users to the websites of its partners, EBechtle LLC and BEST Engineering Group LLC (the website for which redirects to the EBechtle LLC website). Previously, the Disputed Domain Name redirected to the EBechtle LLC website at .
The websites at "www." and "www." are parking pages provided by the Registrar which contain pay-per-click ("PPC") links, which on occasions have linked to competitors of the Complainant. 5. Parties' Contentions A. Complainant
The Complainant's contentions are as follows. Identical or Confusingly Similar
The Disputed Domain Names are confusingly similar to the Trade Mark. Adding a hyphen to the Trade Mark does not diminish confusing similarity. Further, top level domains should not be taken into account in determining confusing similarity. Rights or Legitimate Interests
The Trade Mark is well-established and is not descriptive. The Complainant has not licensed or otherwise permitted the Respondent to use any domain name incorporating the Trade Mark. There is no evidence that the Respondent has made demonstrable preparations to use the Disputed Domain Names or a corresponding Trade Mark in connection with a bona fide offering of goods or services. Neither the use of the Disputed Domain Names to redirect Internet users to the Respondent's website offering competing services, nor the use in relation to parking websites with PPC links is bona fide under the Policy.
There is no evidence to suggest that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, is commonly known by the Disputed Domain Names, or trades under the Disputed Domain Names. Registration and Use in Bad Faith
The Respondent individual is a former employee of the Complainant who was aware of the Complainant and the Trade Mark at the time he registered the Disputed Domain Names. As such, the Disputed Domain Names were registered in bad faith.
The Respondent's use of the Disputed Domain Names attempts to attract, for commercial gain, Internet users to the Respondent's websites by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Respondent's websites or of a product or service on the Respondent's websites (paragraph 4(b)(iv) of the Policy).
The Respondent's registration of the Disputed Domain Names prevents the Complainant from reflecting the Trade Mark in corresponding domain names (paragraph 4(b)(ii) of the Policy). The Respondent registered four domain names,including one not subject to this dispute (), corresponding to the Trade Mark, and has therefore engaged in a pattern of conduct as required under the Policy.
The Respondent offered to sell the Disputed Domain Names to the Complainant for over USD 20,000, which indicates that the Respondent registered the Disputed Domain Names primarily for the purpose of selling them to the Complainant for valuable consideration in excess of his out of pocket expenses in relation the Disputed Domain Names (paragraph 4(b)(i) of the Policy).
Given that the Respondent is a former employee of the Complainant, and currently a direct competitor, the Respondent registered the Disputed Domain Names primarily for the purpose of disrupting the business activities of the Complainant (paragraph 4(b)(iii) of the Policy). The use of the Disputed Domain Names is capable of reducing the number of visitors to the Complainant's website. B. Respondent
The Respondent's contentions are as follows. Identical or Confusingly Similar
The Complainant refers to a national German trade mark registration, which is exclusively effective in the Federal Republic of Germany. Further, the Complainant did not provide any evidence of the reputation of the Trade Mark in the United States, which is where the Respondent resides. As such, paragraph 4(a)(i) of the Policy does not apply and all grounds raised by the Complainant in relation to the Trade Mark should be disregarded by the Panel.
The Respondent has added a hyphen to the Disputed Domain Names to separate the words "Team" and "Technik" to show similarity to the Respondent's company Team-Technik LLC rather than any similarity to the Complainant. The Complainant uses the Trade Mark in the form "teamtechnik" (i.e. lower case letters and all one word). As such, the addition of the hyphen should be considered as an element to diminish confusing similarity. Rights or Legitimate Interests
The Respondent is using the Disputed Domain Names in conjunction with his legally formed company "Team-Technik LLC". The Disputed Domain Names are identical to this company name. The Respondent filed a name reservation with the State of Georgia, United States. This was part of the preparation to use the Disputed Domain Names in conjunction with the company name "Team-Technik LLC". The Respondent had also discussed the design of its intended webstore with web designers.
The services provided by the Respondent do not compete with the Complainant. The overall impression of the Complainant's website is completely different to that of the Respondent. Registration and Use in Bad Faith
The fact that the Respondent was employed by the Complainant and that the Respondent registered the Disputed Domain Names after the Complainant approached the Respondent does not automatically constitute bad faith. There is no evidence that the Respondent has acted in bad faith.
The Complainant initiated discussions regarding the sale of the Disputed Domain Names. The Respondent told the Complainant a number of times that he was not interested in selling. This shows that the Respondent did not register the Disputed Domain Names primarily for the purpose of selling them to the Complainant.
The Respondent registered two of the Disputed Domain Names, and , on October 15, 2015 (though the WhoIs shows a date of September 22, 2015), which is one month after the Complainant approached the Respondent regarding the sale of . There was enough time for the Complainant to register most of the domain names in the Complainant's name. The Complainant did not act in a timely manner and is now blaming the Respondent.
The Respondent is a smaller business than the Complainant and cannot be considered a direct competitor who is using the Disputed Domain Names to disrupt the business activities of the Complainant. The Complainant has not provided any evidence to show that its business has been redirected to the Respondent based on the registration of the Disputed Domain Names. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The onus of proving these elements is on the Complainant. A. Procedural Issues Supplemental filings
The Policy envisages prompt and efficient resolution of domain name disputes. Accordingly, the Rules and the Supplemental Rules only contemplate the filing of a complaint and a response, with strict time and word limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a panel. Paragraph 10 of the Rules provides that the panel is to conduct proceedings "with due expedition" and gives the Panel the power to "determine the admissibility, relevance, materiality and weight of the evidence". Generally, panels will only accept supplemental filings in "exceptional" circumstances.
Both the Complainant and the Respondent have provided supplemental filings in these proceedings.
The Center received the first supplemental submission from the Complainant on January 8, 2016. This filing was in reply to the Response, and purported to provide additional information which was not available to the Complainant at the time it filed the Complaint. On January 13, 2015, the Respondent then filed a supplemental submission in response to the Complainant's supplemental submission. Further, the Complainant filed a further supplemental submission in reply to the Respondent's supplemental submission on January 14, 2015. Finally, the Respondent filed a further supplemental submission on January 22, 2016.
The Panel considers that none of these four supplemental submissions contains sufficient new or previously unavailable information which would incline the Panel to accept those submissions as part of the record in this proceeding. They mostly offer rebuttal arguments to each other's previous filing. The Panel easily uncovered much of what was provided by the Complainant in its January 8, 2016 supplemental submission when making its own brief inquiries (as it is entitled to do under paragraph 10 of the Rules).
Accordingly, the Panel declines to accept the supplemental filings as part of the record in this proceeding.
In any event, even if the Panel accepted these submissions, it would not change the outcome of this case. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Mark.
The Panel considers that the Disputed Domain Names are confusingly similar to the Trade Mark.
The Complainant has established that it has rights in the Trade Mark which arise from its German word mark registration.
As submitted by the Complainant, the Disputed Domain Names differ from the Trade Mark only by the addition of a hyphen between the terms "team" and "technik". This addition is not sufficient to diminish any confusing similarity.
It is not relevant to the first element of the Policy that the Trade Mark has a reputation in the country in which the Respondent resides, or that the Disputed Domain Names correspond to a company name which is owned by the Respondent.
The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case.
The Panel considers that, before any notice of the dispute, the Respondent had not made demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services.
The websites at the "www." and "www." Disputed Domain Names are Registrar parking pages featuring PPC links. The Complainant has provided evidence that on previous occasions some of these links related to the Complainant's industry, and to some of the Complainant's competitors. This is not a bona fide use of these Disputed Domain Names under the Policy.
The website at the "www." Disputed Domain Name is a simple holding website which indicates that the page is under construction, provides contact details for the Respondent's company, Team-Technik LLC, and invites Internet users to visit the website for another of the Respondent's companies, EBechtle LLC. The Respondent has owned for over 5 years, but only recently created this holding page. On previous occasions, the Disputed Domain Name redirected Internet users to the Respondent's website at "www.". The Panel does not consider that, before notice of the dispute, there was any bona fide use (or demonstrable preparations of such) of the Disputed Domain Name .
The Complainant has not licensed or otherwise authorized the Respondent to register or use the Disputed Domain Names or the Trade Mark. Given that the Respondent only registered his company Team-Technik LLC on December 15, 2015 (following notice of the dispute), the Panel does not consider that the Respondent has been commonly known by the Disputed Domain Name for the purpose of paragraph 4(c)(ii) of the Policy.
The Respondent states that he is using the Disputed Domain Names in relation to his company, Team-Technik LLC. The Respondent reserved that company name on November 2, 2015, and obtained a quote for web design services on October 6, 2015. However, the Complainant first approached the Respondent in relation to purchasing the Disputed Domain Names on September 17, 2015. The Panel considers it likely that the Respondent's activities following that date were an attempt to make his registration and use of the Disputed Domain Names appear legitimate.
The Respondent has failed to rebut the prima facie case made out by the Complainant.
The Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
The Respondent was employed by the Complainant for more than 10 years, from 1990 until 2001. The Respondent seemingly is still working within the same industry as the Complainant, and has created one or more of his own companies which offer the same or similar goods and services to those of the Complainant (albeit on a smaller scale).
Given these facts, there is no doubt that the Respondent was fully aware of the Complainant, and of the Trade Mark, at the time he registered the Disputed Domain Names. It seems that the Respondent registered the Disputed Domain Names with the intention of trading off the reputation of the Complainant, and diverting Internet traffic from the Complainant to his own website. The Panel finds that the Respondent registered the Disputed Domain Names in bad faith.
This is a clear case of cybersquatting.
The Respondent's use of the Disputed Domain Names also shows bad faith for a number of reasons.
The Respondent claims that the Disputed Domain Names correspond to his company name, Team-Technik LLC. However, as stated in relation to the second element of the Policy above, the Respondent only registered that company on December 15, 2015, which is the day the Respondent received a copy of the Complaint (via the Registrar). The Respondent reserved that company name in November, but by that time the Complainant had already been corresponding with the Respondent in relation to the sale of the Disputed Domain Names. While not directly related to the dispute at hand, the Panel also considers that the Respondent's registration of Team-Technik LLC as a company was also done in bad faith.
Previously, the Disputed Domain Name redirected Internet users to the Respondent's website at "www.". This is blatant bad faith use under paragraph 4(b)(iv) of the Policy. The website currently hosted at that Disputed Domain Name still invites Internet users to visit "www.", along with another website related to the Respondent.
The Disputed Domain Names and host PPC parking pages. The Complainant has provided evidence that on previous occasions the links on those websites related to the Complainant's industry, and to the Complainant's competitors. The Respondent is presumably deriving click-through revenue from those websites. This is also an indicator of bad faith under paragraph 4(b)(iv) of the Policy.
Further, the Respondent states that he registered the and Disputed Domain Names on October 15, 2015 (which is not consistent with the information the Panel received from the Registrar), and that the Complainant had sufficient time to register these domain names itself before the Respondent did so. The Complainant should not be required to defensively register every conceivable variation of its Trade Mark as a domain name in order to prevent cybersquatters and other opportunistic third parties, such as the Respondent, from doing so.
The Respondent registered and is using the Disputed Domain Names in bad faith. The Complainant succeeds on the third element of the Policy. 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 Names , and be transferred to the Complainant.
John Swinson
Sole Panelist
Date: January 22, 2015
Full & Egal Universal Law Academy