The Complainant is Continental Reifen Deutschland GmbH of Hannover, Germany, represented by Rouse Consultancy (Shanghai) Ltd., China.
The Respondent is Goldman David, AUTO-SCANER Ltd. of New York, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with R (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 18, 2016. On July 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 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's contact information in the Complaint. The Center sent an email communication to the Complainant on July 20, 2016, providing the contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 21, 2016.
The Center verified that the Complaint together with the amended 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 July 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 12, 2016.
The Center appointed James A. Barker as the sole panelist in this matter on August 22, 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 belongs to Continental AG (for convenience, referenced as 'the Complainant'), a group that was founded in Hannover in 1871. The Complainant is a supplier of brake systems and components for powertrains and chassis, instrumentation, infotainment solutions, vehicle electronics, tires and technical elastomers. In 2015, the Complainant generated sales of approximately Euro 39.2 billion globally and currently employs 208,000 people in 55 countries.
The Complainant entered the Chinese market as early as 1994, and now owns a total of 26 production bases, 16 research and development centers, and has more than 24,000 employees in China.
The Complainant is the sponsor of a number of prominent international sporting events. For example, it was a sponsor of the FIFA World Cup in 2006, 2010 and 2014 and sponsor of UEFA EURO in 2008, 2012 and 2016 and also has collaborated with the Chinese Football Association since 2014.
The Complainant's trademark has been in use since 1871. The Complainant has registered rights for its mark in a number of jurisdictions for marks that include the term CONTINENTAL. In China, the Complainant registered a number of such marks in 1997, 1998, 2013 and 2015.
The Complainant also owns a number of domain names that incorporate its mark, including and .
The disputed domain name was registered by the Respondent in March 2015.
In the absence of a Response, there is little information on the Respondent's business. The Complainant provides evidence of the website at the disputed domain name (as at July 2016). That website prominently includes the Complainant's mark in the heading, with the statements: "Continental Auto Scanners" and "Scanners for trucks and cars". In this heading the word "Continental" is a copy of the Complainant's mark. The website is in Chinese and English. The website provides various contact details and statements such as "AUTO-SCANNERS Emphasis on after Sales, Service and Importance to Customers Satisfaction. Our own Service Engineers visit the workshop for installation and providing onsite training." 5. Parties' Contentions A. Complainant
The Complainant says that its mark is one of the most recognized brands in the world. Thought it is not a coined word, it has become highly distinctive through the Complainant's long-term and extensive use and has established fame in the automobile industry throughout the world.
The disputed domain name incorporates the Complainant's registered mark, which is sufficient to support a claim that the disputed domain name is confusingly similar to the Complainant's mark, with the addition of the common term "scan". The Complainant points to past cases under the Policy which found that the entire incorporation of a complainant's trademark, together with a descriptive term, does not dispel confusing similarity. The Respondent's website also relates to the Complainant's business. The format of the disputed domain name is also similar to domain names registered by the Complainant including terms such as "continental-corporation" and "continental-tires".
Secondly, the Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant says that the Respondent does not hold any trademark for "Continental" and is not affiliated or otherwise authorized by the Complainant.
Thirdly, the Complainant says that the Respondent registered and has used the disputed domain name in bad faith. The Complainant's marks were registered as early as the 1990's in China. Due to the Complainant's long-standing use of its marks and its reputation, the Respondent knew or should have known of the Complainant when it registered the disputed domain name. Further, the Respondent's website provides services that are similar to those of the Complainant and uses the Complainant's mark. The Respondent has therefore acted in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy.
In a further communication to the Center on July 21, 2016, in response to the Center's notification of the Registrar's confirmation of the registrant's details as including an address in the United States, the Complainant notes that, although the Respondent's address is shown as "New York" and "US", the exact address is located in Wan Chai, Hong Kong, China, and not in the United States of America. The Complainant provides a number of search results as evidence for that contention. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 was registered and is being used in bad faith.
These elements are discussed as follows. A. Identical or Confusingly Similar
There is no dispute that the Complainant has long-standing and well-known rights in its registered mark for CONTINENTAL.
The Panel has no hesitation in finding that the disputed domain name is confusingly similar to the Complainant's mark. This is, essentially for three cumulative reasons.
Firstly, in numerous previous cases under the Policy, it has been held that a domain name that wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for purposes of the Policy. See e.g. BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson,WIPO Case No. D2008-1338.
The disputed domain name adds the descriptive term "scan" as a prefix, together with a hyphen to join it to the term "continental". Being a descriptive term, the addition of "scan" it is not capable of distinguishing the Complainant's mark. The Complainant's mark remains easily recognizable in the disputed domain name.
Secondly, paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") makes it clear that "The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name."
Thirdly, the Complainant's marks have been recognized in past cases under the Policy, which found the addition of a hyphenated generic term to the Complainant's mark was not sufficient to avoid confusing similarity: Continental AG v. Sven Richter,WIPO Case No. D2007-1327. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case against the Respondent on this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with the Complainant. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant has made a prima facie case against the Respondent. The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name, and has registered it to misleadingly divert Internet users.
Paragraph 4(c) of the Policy sets out a nonexclusive list of circumstances upon which a respondent may rely in order to demonstrate its rights or legitimate interests in a domain name. The Respondent has submitted no reply and so not demonstrated any such circumstances to rebut the prima facie case against it.
There is no other evidence before the Panel to suggest that the Respondent has any rights or legitimate interests in the disputed domain name. On the contrary, as discussed below, the Respondent registered and has used the disputed domain name because of its obvious association with the Complainant. Such a registration cannot form a basis for rights or legitimate interests for the Respondent.
For these reasons, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Bad faith may be demonstrated where the evidence indicates that the Respondent registered and used the disputed domain name primarily with a view to taking unfair advantage of the Complainant's trademark rights and reputation. See e.g. SingTel Optus Pty v. Xnet,WIPO Case No. D2004-0734.
The Panel is in little doubt that the Respondent was aware of the Complainant's mark when it registered the disputed domain name. The Complainant has a substantial world-wide reputation. The Respondent's own website appropriates the Complainant's well-known mark and purports to offer services similar to those of the Complainant. The disputed domain name appears in a similar pattern to domain names registered by the Complainant itself (which combine a descriptive term, hyphenated with the Complainant's CONTINENTAL mark). The Panel is also concerned that the Respondent has provided what appear to be misleading contact details, as evidenced in the Complainant's further communications with the Center when submitting an amended Complaint in response to the Registrar's nominal correction of those details.
All of this evidence mounts up to a compelling case that the Respondent has registered and used the disputed domain name in bad faith, for the purpose of paragraph 4(a)(iii) 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 name, , be transferred to the Complainant.
James A. Barker
Sole Panelist
Date: September 5, 2016
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