The Complainant is Keba AG of Linz, Austria, represented by Prof. Hintermayr & Partner, Austria.
The Respondents are Privacidad Whois SL of Valencia, Spain, self-represented and Gestión Integral de Tecnología y Logística S.L. of Paterna, Spain, represented by Jordi Ibiza Gimeno, Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with Dinahosting s.l. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2016. On April 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2016, 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 and informing that the registration agreement for the disputed domain name was in Spanish. The Center sent an email communication to the Complainant on April 22, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center also sent an email to the parties on April 22, 2016 inviting the parties to comment on the language of proceedings. The Complainant filed an amendment to the Complaint on April 26, 2016. On the same date, the Complainant requested that English be the language of proceedings. The Respondents did not submit any comments regarding the language of the proceedings. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 3, 2016.
The Center verified that the Complaint together with the amendments to 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 Respondents of the Complaint in English and Spanish, and the proceedings commenced on May 4, 2016. In accordance with the Rules, paragraph 5, the due date for filing a Response was May 24, 2016. The Respondent Privacidad Whois SL filed a Response with the Center on May 10, 2016. On May 18, 2016 the Respondent Gestión Integral de Tecnología y Logística S.L. filed a request for an extension. According to paragraph 5(b) of the Rules, the Center notified the parties that the due date for filing a Response was extended until May 28, 2016. The Respondent Gestión Integral de Tecnología y Logística S.L. filed a Response with the Center on May 27, 2016.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on June 9, 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.
In the present case, the Complainant has requested English to be the language of the proceedings. Even though they were formally invited by the Center to comment on the language of the proceedings, the Respondents did not submit any comments in this respect.
Pursuant to the Rules, Paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Administrative Panel. In this case the language of the registration agreement is Spanish.
The Panel notes that the Respondent Privacidad Whois SL (herein referred to as “Respondent Privacidad”) submitted its communications and Response in Spanish, and that the Respondent Gestión Integral de Tecnología y Logística S.L. (herein referred to as “Respondent Gestión”) submitted its communications and Response in English.
In light of Paragraph 11 of the Rules, and considering that the Respondent Gestión has filed its Response in English, thus showing that its representative is able to communicate in English, and that it has implicitly accepted English as the language of the proceedings, and that the Respondent Privacidad has not opposed to it, the Panel has decided to continue this proceeding in English. 4. Factual Background
The Complainant is Keba AG, an Austrian company founded in 1968 with its main headquarters in Linz, Austria.
According to the Complainant, its business activities focus on industrial, banking, service and energy automation. The Complainant claims that it continuously works on new developments and industry solutions with the objective of creating competitive benefits for its clients.
The Complainant is the owner, among others, of the following trademark registrations in Austria and abroad:
Trademark
Registration Number
Registration Date
Country
Class
KEBA
000130948
November 25, 1999
Austria, Germany, Belgium, Netherlands, Luxembourg, Spain, France, Italy, Portugal, Finland, Sweden, United Kingdom of Great Britain and Northern Ireland
9, 35, 37 and 42
KEBA
0512574
April 16, 1987
Germany, Belgium, Netherlands, Luxembourg, Spain, France, Italy and Portugal
07, 09, 10, 35, 37 and 42
KEBA
0565545
September 28, 1990
Spain
07, 09 and 42
The Complainant is also the owner of the domain name , registered on May 7, 1996.
The disputed domain name was registered on March 10, 2015. 5. Parties’ Contentions A. Complainant
In its Complaint and amendments to the Complaint, the Complainant argued the following:
i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant asserts that it presents its business online through the website under the domain name .
That it distinguishes itself and its products and services under the trademark KEBA, which is registered in several countries in Europe and the United States of America.
That it is a well-known company in Europe, in connection to industrial, banking, service and energy automation.
That the disputed domain name is identical to the Complainant’s trademark KEBA, since it incorporates said trademark in its entirety.
That the generic Top-Level Domain (“gTLD”) “.repair” reinforces an overall impression of association between the disputed domain name and the trademark KEBA.
ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name
That it has not authorized the Respondent to use the trademark KEBA and that there is no relationship between the Complainant and the Respondent.
That the trademark KEBA is not a common word in which the Respondent could have rights or legitimate interests.
That, since the disputed domain name resolves to a website where competing goods and services are being offered for profit, there is a clear lack of legitimate interests by the Respondent. That all of these facts constitute evidence that the Respondent has used the disputed domain name to lure Internet users into the Respondent’s own website.
That a cease and desist letter sent by the Complainant to the Respondent was not replied by the latter.
That the Respondent’s use of the disputed domain name does not meet the Oki Data standard, because the website to which the disputed domain name resolves is not being used in the present case to sell only KEBA trademarked goods.
That the Respondent’s use of the disputed domain name is not connected to a bona fide offering of goods or services.
iii) The disputed domain name has been registered and is being used in bad faith
The Complainant claims that the disputed domain name is being used to re-direct users to the Respondent’s website, in which there is an offering of KEBA’s products along with products of several of the Complainant’s competitors.
That the Respondent, through its use of the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users presumably looking for KEBA products. That it has done so by creating a likelihood of confusion with the Complainant’s trademark.
That by registering the disputed domain name under the gTLD “.repair” it is evident that the Respondent was aware of the trademark KEBA.
That it is unlikely that the Respondent would have chosen to register the disputed domain name incorporating the trademark KEBA in connection with the gTLD “.repair” with an intention other than to create an impression of association with the Complainant’s reputation and its brand. B. Respondents
The Respondent Privacidad filed its response indicating the following:
That it is not the actual Respondent in the present case.
That it appeared as the registrant of the disputed domain name as a consequence of the privacy service which said company was providing to the Respondent Gestión.
That the Registrar, in its verification response to the Center, provided the data of the Respondent Gestión, showing that the Respondent Gestión was the actual registrant of the disputed domain name.
That the Respondent Privacidad should not be considered to be a Respondent in the present case, and that the Complaint should be deemed as having been filed against the Respondent Gestión solely.
The Respondent Privacidad did not make any contentions regarding the merits of the dispute.
The Respondent Gestión argues the following:
i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
That there is no confusion between the Complainant’s trademarks and the disputed domain name because the disputed domain name incorporates the word “repair”.
That the content of the website to which the disputed domain name resolves clearly communicates that the Respondent Gestión is not the owner of the trademark KEBA. That it has disclaimed that it is a specialist in fixing electronic equipment, among which KEBA products can be found.
ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name
That a contractual relationship with the Complainant is not required. That the vast majority of UDRP Panels has concluded that, even without a contractual relationship, the seller may be treated as if such relationship exists.
That the Complainant does not take into account that the real goal of the Policy is to prevent the abusive registration of domain names.
That the Complainant failed to establish a prima facie case, since it supported its Complaint on the lack of an authorization to use the Complainant’s trademark, while ignoring other circumstances.
That the website to which the disputed domain name resolves displays a disclaimer, which acknowledges that the Complainant is the owner of the trademark KEBA, and which communicates that the Respondent Gestión is a supplier of repair services.
That the Respondent Gestión does not sell goods or offer services to individuals, but to industrial consumers who are completely aware that the KEBA trademark is owned by the Complainant.
That it has not registered just one domain name, not a great deal of them with the purpose of depriving the Complainant of the possibility of using its mark in a domain name. There is no attempt to “corner the market”.
That the Respondent Gestión provides repair services for KEBA products, and resells said products. The Respondent Gestión argues that such activity does not place it in direct competition with the Complainant.
That according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), an evident manifestation of a bona fide offering of goods and services is seen when the disputed domain name is used only to sell the relevant trademarked goods, and when the site accurately discloses the relationship existing between the respondent and the complainant.
The Respondent Gestión cites the Oki Data test, stating that all of its factors are present in this case.
That it is not true that the website to which the disputed domain name resolves comprises an offering for goods and services that are in direct competition with those of the Complainant.
iii) The disputed domain name has been registered and is being used in bad faith
That there are no circumstances indicating that the disputed domain name has been registered for the purpose of selling it to the Complainant.
That it has not attempted to register the disputed domain name to prevent the owner of the trademark from using it in a corresponding domain name, and that it has not engaged in such a pattern of conduct.
That the issue at hand does not correspond to cases where UDRP Panels have determined the presence of a pattern of conduct.
That the Respondent did not take any action to hide its identity. That the contact details of the Respondent have never been concealed and that a disclaimer is being used so as to avoid confusion once an Internet user has reached the website to which the disputed domain name resolves.
That the disputed domain name is primarily and legitimately connected to the Respondent’s own business.
That the Respondent has not disrupted the Complainant’s business, since they are not direct competitors. 6. Discussion and Findings A. Preliminary issue: the Respondent Privacidad’s legitimacy issue
The Panel finds that the Respondent Privacidad is not the actual holder of the disputed domain name registration. The Respondent Gestión has recognized that it is the registrant of the disputed domain name. Therefore, this procedure will be centered on the Respondent Gestión, its conduct, as well as the arguments and documents it has submitted in this procedure. The Panel will address the merits of the case below.
According to the Policy, a complainant must prove each of the elements listed below:
(i) The disputed domain name 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 in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Complainant is the owner of several trademark registrations for KEBA. Some of these registrations were granted in Spain, where the Respondent Gestión has declared to have its domicile.
The disputed domain name is confusingly similar to the Complainant’s trademark KEBA, as it replicates said trademark in its entirety.
It is a well-established rule that the gTLD may be disregarded in determining whether a trademark is identical or confusingly similar to a domain name (see Diageo p.l.c. v. John Zuccarini,WIPO Case No. D2000-0541; The Royal Bank of Scotland Group plc, National Westminster Bank plc, and Coutts & Co. v. Domain Manager / / Giovanni Laporta,WIPO Case No. D2014-0825; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206). Often, the addition of a generic or descriptive word can enhance the confusing similarity among Internet users (see The Football Association Premier League Limited v. c/o W Limited / Domain Administrator, Beyond the Dot,WIPO Case No. D2014-1222; Hultafors Group AB v. my domain limited,WIPO Case No. D2014-0597; and Slide Mountain Acquisition Company LLC v. Simon Nissim, lipstick boutique,WIPO Case No. D2014-0393).
The addition of the gTLD “.repair” increases the risk of confusion. It is likely that users will relate the descriptive word “repair” to a service closely related to the Complainant’s products and services.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The first requirement of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent 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 Complainant owns several trademark registrations for KEBA. The existence of the Complainant’s rights over said trademarks was not disputed by the Respondent Gestión and this fact has been indeed acknowledged by the Respondent Gestión.
Previous decisions issued under the Policy establish that once a complainant has made a prima facie case that the respondent does not have rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to demonstrate that it has rights or legitimate interests regarding the disputed domain name (see Sony Kabushiki Kaisha v. ,WIPO Case No. D2000-1074; Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; and Auto-C, LLC v. MustN,WIPO Case No. D2004-0025).
In this case, the Complainant has submitted evidence showing that it has exclusive rights over the trademark KEBA. The Respondent Gestión has not shown that it has been known by the disputed domain name. The Complainant has argued that it did not grant any license or authorization to the Respondent Gestión. The Respondent Gestión did not file any document evidencing to have any license or authorization granted by the Complainant to use the trademark KEBA.
According to the evidence contained in the case file, the disputed domain name resolves to a website of the Respondent Gestión. In said website the Respondent Gestión is offering repair services of KEBA’s products as well as goods of the Complainant’s competitors. The Respondent Gestión has not been able to rebut the evidence filed by the Complainant showing that some of these goods compete with those of the Complainant.
The Respondent Gestión claims that, since the website to which the disputed domain name resolves displays a disclaimer, the use of the disputed domain name constitutes a bona fide offering of goods.
To address the Respondent Gestión’s allegation of bona fide use, the Panel needs to analyze the Oki Data factors (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903). According to Oki Data, in order to be considered as a bona fide use, the offering must meet several requirements, including, at least, the following:
- The respondent must actually be offering the relevant goods or services;
- The respondent must use the site to sell only the trademarked goods (emphasis added);
- The site must accurately disclose the respondent’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site;
- The respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
The disputed domain name is redirected to a website associated to the domain name . Said website contains offers to render reparation services, and offers to sell spare parts related to the Complainant’s products, as well as products of the Complainant’s competitors.
The mere existence of the disclaimer displayed on the website to which the disputed domain name resolves does not automatically render the Respondent Gestión’s use of the disputed domain name a bona fide use.
An integral analysis of the Oki Data factors leads this Panel to decide that the fact that the website to which the disputed domain name resolves offers products of some of the competitors of the Complainant, poses a risk of confusion among Internet users, and the Panel finds that the Respondent does not meet the Oki Data criteria.
The second element of the Policy has been fulfilled. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
ii) the respondent has 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark 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.
It is clear that the Respondent Gestión was fully aware of the existence of the Complainant’s trademarks when it registered the disputed domain name.
The website to which the disputed domain name resolves offers reparation services and spare parts for the Complainant’s products alongside with those of the Complainant’s competitors. This conduct falls under the scope of Paragraph 4(b)(iv) of the Policy, because the Respondent Gestión has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark KEBA as to a possible sponsorship or endorsement of the Respondent Gestión’s website.
The Respondent Gestión offers services related to the reparation of KEBA equipment. It also renders services aimed at repairing other brands of equipment, including brands of competitors of the Complainant. The Respondent Gestión uses its own brands: GIT and GLOBAL GIT. The Respondent Gestión can render its services using its own brands. It does not necessarily require a domain name that incorporates the trademark KEBA to run its business. Considering that the website to which the disputed domain name resolves offers products and services related not only to the Complainant and its products, but also to competing products, there is a risk of confusion among Internet users. Since the Respondent Gestión had knowledge of the Complainant’s trademarks and products at the time of registering the disputed domain name, it is reasonable to infer that the Respondent Gestión knew of this possibility of confusion, and that it created said likelihood of confusion intentionally. This conduct is considered to amount to bad faith registration and use under the Policy.
The third requirement of the Policy has been met. 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.
Kiyoshi Tsuru
Sole Panelist
Date: June 23, 2016
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