Complainant is Verband der Automobilindustrie e.V. of Berlin, Germany, represented by Barker Brettell LLP, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
Respondent is Andrew Booth, ECUFLASH Ltd of Doncaster, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 14, 2016. On January 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 20, 2016, the Center transmitted by email to the Registrar a second request for registrar verification in connection with the Disputed Domain Name. On January 20, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent's 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 Respondent of the Complaint, and the proceedings commenced on January 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 16, 2016.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on February 24, 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
Complainant, Verband der Automobilindustrie e.V., is an interest group of the German automotive industry, including both automobile manufactures and automobile component suppliers. Complainant actively pursues the interests of the German automotive industry in sectors such as the aftermarket, electric mobility, logistics and customs and excise.
Complainant is the holder of numerous trademarks for ADBLUE, including the following:
- Community Trade Mark No. 3945938 for ADBLUE (word) in classes 1, 4, 12, 37 and 42 (filed on July 22, 2004 and registered on February 6, 2006).
The ADBLUE trademark is used for products required for the operation of an advanced pollution control technology installed in the exhaust system of certain diesel vehicles called Selective Catalytic Reduction or SCR.
Respondent registered the Disputed Domain Name on January 30, 2015. The Disputed Domain Name is used to host a website offering services for the "removal of the AdBlue system from light & heavy commercial vehicles". 5. Parties' Contentions A. Complainant
Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Finally, Complainant claims that the Disputed Domain Name was registered and is used in bad faith.
According to Complainant, the generic, non-trademark terms for the AdBlue product include "urea solution" and "Diesel Exhaust Fluid (DEF)". B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
3. The Disputed Domain Name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there are trademarks in which Complainant has rights. The mark has been registered and used by Complainant. It is used, inter alia, in the United Kingdom, the country where Respondent is based.
The Panel considers the Disputed Domain Name to be composed of a sign identical to the ADBLUE trademark and the non-distinctive term "problems". The Panel is of the opinion that the mere addition of non-distinctive text to a complainant's trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395, where the domain name was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783, where the domain name was held to be confusingly similar to the BELSTAFF trademark).
Accordingly, Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It has been established in prior decisions under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of rebuttal on Respondent. (See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that Respondent apparently has not been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired relevant trademark or service mark rights. Respondent's use and registration of the Disputed Domain Name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Disputed Domain Name is used to host a website offering services for the "removal of the AdBlue system from light & heavy commercial vehicles".
Respondent has not been authorized by Complainant to use the ADBLUE trademark for commercial purposes. Moreover, Respondent's registration of the Disputed Domain Name after being made aware of Complainant's trademark rights via at least one cease and desist letter suggests an opportunistic attempt to profit from the goodwill created by Complainant.
To the extent that it is conceivable that the use of Complainant's mark in the Disputed Domain Name and attached website to offer Respondent's services constitutes a bona fide offering of services as per Policy paragraph 4(c)(i) by analogy to principles of "nominative fair use", the Panel notes that Respondent's removal service can be readily identified without use of the ADBLUE trademark, such as with the non-trademark terms for this product (e.g., "DEF" or "urea solution").
Finally, the Panel notes that Respondent did not respond to the Complaint.
In view of the foregoing, the Panel considers that Complainant has also made out the second of the three elements that it must establish. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (See e.g., Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
In the instant case, the Panel finds that it is undisputed that Respondent had knowledge of Complainant's rights in the ADBLUE trademark at the moment it registered the Disputed Domain Name. As mentioned before, Complainant contacted Respondent several times before the registration of the Disputed Domain Name, including by sending a cease and desist letter mentioning Complainant's rights in the ADBLUE mark. Moreover, Respondent explicitly acknowledges Complainant's ADBLUE trademark by stating the following in a disclaimer at the bottom of the website linked to the Disputed Domain Name: "Adblue™ is a registered trademark of the German association of the automotive industry".
Respondent's awareness of Complainant's trademark rights at the time of registration suggests bad faith (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because of the widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix ("voip") suggested knowledge of the complainant's rights in the trademarks).
Respondent's bad faith is further supported by Respondent's use of the Disputed Domain Name. Through the website linked to the Disputed Domain Name, Respondent offers services disabling the SCR system built into certain vehicles. The Panel considers that there is no reason which could justify the use of Complainant's ADBLUE trademark in order to offer these services. By using Complainant's trademark in the Disputed Domain Name and on the linked website, Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website.
The Panel notes that the likelihood of such confusion is not removed by the disclaimer that is added at the bottom of the home page of Respondent's website. First, it comes after a full page of marketing materials where the ADBLUE trademark appears many times. Second, the disclaimer appears only towards the bottom of the home page, after the customer's ordering option (See Pliva, Inc. v. Eric Kaiser,WIPO Case No. D2003-0316; Dr. Ing. h.c. F. Porsche AG v. Sabatino Andreoni,WIPO Case No. D2003-0224 and cases cited therein for a relevant discussion of the disclaimer issue).
Moreover, Complainant states that it certainly does not advocate the services offered on Respondent's website, as disabling the SCR system means that the vehicle in question will no longer comply with the legal requirements for exhaust emissions in some countries. Consequently, the Panel considers that the use of Complainant's ADBLUE trademark in the Disputed Domain Name, and on the linked website offering such services, is detrimental to the reputation of Complainant as consumers may think these services are authorised or endorsed by Complainant.
Finally, by failing to respond to the Complaint, Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate. 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 cancelled.
Flip Jan Claude Petillion
Sole Panelist
Date: March 16, 2016
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