The Complainant is Voith GmbH of Heidenheim, Germany represented by Bardehle Pagenberg Partnerschaft mbB, Germany.
The Respondent is Domain Admin, Privacy Protection Service INC d/b/a PrivacyP of Queensland, Australia / Shamshad Shinwari, Shamshad Technologies of Kabul, Afghanistan. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") on May 25, 2016. On May 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 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. The Center sent an email communication to the Complainant on May 30, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 30, 2016.
The Center verified that the Complainant together with the amendment 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 Respondent of the Complaint, and the proceedings commenced on June 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 22, 2016.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on June 28, 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 following background facts and circumstances are to be found in the Complaint and its annexures and, in the absence of any challenges in a Response or otherwise dealing with the merits, can be accepted as background.
The Complainant began as a family business of the Voith family, manufacturing paper in the mid-nineteenth century. It then progressed in the latter half of that century into engineering and turbines. Up to the beginning of World War I, it expanded further, particularly in regard to printing machines. After World War I it proceeded to expand further and concentrated on drive technologies including the supply of engines for vehicles and ships. Following the end of World War II it pursued a policy of internationalization not only in Europe but in India and shortly thereafter Japan. It entered the paper market in the United States in about 1983 and in the 1990s continued to further expand its activities and became a leading company worldwide from about 2000.
It now employs more than 20, 000 people and generates some 4.3 billion Euros in sales operating in about 60 countries around the world in a large variety of industries of a diverse nature and to mention some, they are the fields of vehicles, chemicals and petrochemical, construction, food and beverages, marine technology, engineering, mining, textiles, oil and gas, paper, power plants, the steel industry and wind energy.
It is the owner of several trademark registrations for VOITH designating a great variety of goods and services in a large number of countries, including three international registrations, namely International Registration No. 405353, International Registration No. 178950 and International Registration No. 447007, as well as German and European Union trademarks. Apart from having a series of registrations of the trademark VOITH throughout the world, in particular, it holds Australian trademarks, namely, AUTM261612, AUTM277952 and AUTM1545340.
In addition thereto, it has domain names incorporating "Voith" with more than 50 country code Top-Level Domains and including, inter alia, , , , , , , , and .
All these registrations, both of the trademarks and the domain names, precede the disputed domain name which according to the WhoIs search reveals that it was created on April 24, 2016. 5. Parties' Contentions A. Complainant
The Complainant asserts that the disputed domain name incorporates VOITH and contends that such incorporation of the whole of the Complainant's trademark in the disputed domain name this causes, at very least, confusion, and is an infringement of its rights; even though the trademark includes "-inc", this addition does not dispel the confusing similarity when compared to the Complainant's international trademarks or those registered in Australia where the disputed domain name is registered. It relies particularly on the decision in Ruff GmbH v. Private Registrations Akting Geselischauft, WIPO Case No. D2010-0434 for this contention.
With regard to there being no rights or legitimate interests enjoyed by the Respondent entitling it to adopt the trademark, the Complainant draws attention to the fact that there is no affiliation between it and the Respondent. More particularly, that there is no license or authorization of any kind which has been given by the Complainant to the Respondent to permit such registration and use. It draws attention to the decision in Guerlang S.A. v. Peking,WIPO Case No. D2000-0055 in support of its contention.
In the course of dealing with this aspect, the Complainant draws attention to the fact that the Internet users who visit the disputed domain name are taken to the Respondent's website, which displays identical content to that of the Complainant's website. Such resolution results in the users not actually being aware that they are visiting a website not controlled by the Complainant. In so doing, the users are misled into thinking that there is a connection between the Complainant and the Respondent, particularly as Respondent is using the disputed domain name for a URL redirection to the Complainant's website. In this regard, the Complainant relies upon the decision in Altavista Company v. Brunosousa, aka Bruno Sousa, WIPO Case No. D2002-0109.
Turning to registration and use in bad faith, the Complainant contends that the registration was clearly effectuated by the Respondent being aware of the Complainant's rights and in order to divert customers for commercial gain. The Complainant further contends by using the term "inc", this might lead users to the false impression that it is an official site of the Complainant or its subsidiary, particularly in the United States where such designation is used for corporations. The Complainant relies, for this contention, on the decision in Deutsche Telekom AG v. Heihachi Ltd WHOIS-PROTECTION, WIPO Case No. D2010-1225.
In addition thereto and apart from the other circumstances already mentioned, it contends that, by invoking the privacy shield which the Respondent has, this would support the finding of both registration and use in bad faith. B. Respondent
The Respondent has not replied to the Complainant's contentions whether formally or informally, and has not reacted at all to the communications from the Center. 6. Discussion and Findings A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
"A Panel shall decide a 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."
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following to succeed under the Policy:
(i) that the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent's rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy. B. Effect of Default
Notwithstanding the fact that the Respondent is in default, the Complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the Complainant to a finding in its favour by reason thereof, as failure by the Complainant to discharge the burden of proof will still result in the Complainant being denied (M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA,WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383; San Lameer (Pty) Ltd and Sanlam Ltd v Atlantic Internet Services (Pty) Ltd,WIPO Case No. D2010-0551).
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the provisional requirement of the Rules (Allianz, Compañia de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942).
In the absence of any response or explanation, the Panel considers that it may accept that the Respondent does not deny the facts asserted and accordingly the contentions made by the Complainant based on such facts (Reuters Limited v. Global Net 2000 Inc.,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation,WIPO Case No. D2005-0084; Ross-Simons Inc. v. Domain.Contact,WIPO Case No. D2003-0994; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holding A/s v. A Domain Privacy/Host Master, Transure Enterprise Ltd.,WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters Limited v. Global Net 2000 Inc., supra; RX America, LLC. v. Matthew Smith,WIPO Case No. D2005-0540; Allianz, Compañia de Seguros y Reaseguros S.A. v. John Michael, supra; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holding A/s v. A Domain Privacy/Host Master, Transure Enterprise Ltd, supra; Groupe Auchan v. Anirban Mitra,WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers, Inc.,WIPO Case No. D2012-1213). C. Identical or Confusingly Similar
The Complainant provided a list of the countries in which its trademarks are registered (of which some are mentioned above). It also gave details of its trademarks and its domain names as well as their dates of registration, all of which have been registered prior to the disputed domain name. The Panel finds that the Complainant has registered rights under the Policy.
The fact that the trademark has been incorporated entirely into the disputed domain name is sufficient in this case to establish that it is identical or confusingly similar to the Complainant's registered marks (Quixtar Investments, Inc. v. Dennis Hoffmann,WIPO Case No. D2000-0253; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopking/Neo net Ltd.,WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin/Moniker Privacy Services,WIPO Case No. D2008-0016).
The Panel agrees with the Complainant's contention that the addition of "-inc" is not sufficient to exclude the confusing similarity (Ruff GmbH v. Private Registrations Akting Geselischauft, supra).
In these circumstances, the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy. D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production of evidence on this factor shifts to the Respondent to rebut or displace the Complainant's evidence in this regard. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been prima facie established.
The Complainant contends that it is the proprietor of the trademark VOITH and that the Respondent has not been given any permission to register or use any domain name adopting or similar to the trademark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark as part of the disputed domain name and that any unauthorized use for commercial purposes would violate the exclusive trademark rights enjoyed by the Complainant. (Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055; Caesars World, Inc. and Park Place Entertainment Corporation v. Japan Nippon,WIPO Case No. D2003-0615; AT&T Corp. v. Roman Abreu d/b/a Smartalk Wireless,WIPO Case No. D2002-0605; America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase, Inc. v. Analytical Systems, WIPO Case No. D2004-0360; San Lameer (Pty) Ltd and Sanlam Ltd v Atlantic Internet Services (Pty) Ltd, supra).
Apart from there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement to the disputed domain name which might fall within that purview (Sybase, Inc. v. Analytical Systems, supra).
The Complainant also contends that the Respondent is using the disputed domain name for the purpose of offering his services thus relying on the reputation of the Complainant and to divert custom to him.
In view of the above, the Panel is of the view that the Complainant has established its unrebutted prima facie case.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy. E. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have 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) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."
The Panel finds that the Respondent registered the disputed domain name in bad faith with the Complainant and its VOITH mark clearly in mind based on the use discussed below.
The Complainant, relying on Altavista Company v. Brunosousa, aka Bruno Sousa, supra, points out that the disputed domain name resolves to a website which clearly is a URL redirect to the Complainant's website, creating the impression that it is actually operated by or associated with the Complainant. This implies to the visitors that the disputed domain name is controlled by the Complainant even though it is not. The Respondent neither has a relationship with the Complainant nor any approval or endorsement from the Complainant. The Respondent is in control of the domain name and may alter its use at any point, disruptive to the Complainant. In the view of the Panel, this of itself clearly evidences use in bad faith.
The selection of a domain name that is the same as, or confusingly similar to, the Complainant's trademark and domain names and the redirection of the domain name to the Complainant's website, particularly in the absence of any explanation, leads to the conclusion that the Respondent must have known of the reputation of the Complainant in the market. Therefore the Respondent selected the disputed domain name in circumstances where he must have been well aware of the Complainant's reputation and intended to disrupt the Complainant's business in some way.
Moreover, with regard to the use of a privacy shield as indicative or supporting bad faith, the view of the Panel is that this can be legitimate in some cases, to protect a party against reprisal or avoid spam. It is very difficult, however, to see, particularly in the circumstances of this case, that the Respondent's use of the privacy shield would have been for a legitimate purpose. The probabilities, in the view of the Panel, would rather have been to make it difficult for the Complainant to easily identify the Respondent posing as the Complainant. In addition the fact that the privacy shield may also allow registrants to transfer a domain name registration amongst themselves without there being a public record would obviously make it more difficult to enforce rights by the trademark owners (Majority decision in Ustream.Tv, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598). This is further supported by the decision relied on by the Complainant, namely Deutsche Telekom AG v. Heihachi Ltd WHOIS-PROTECTION, supra.
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant.
Archibald Findlay SC
Sole Panelist
Date: July 4, 2016
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