The 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”).
The Respondent is Andrew Booth, ECUFLASH Ltd. of Doncaster, South Yorkshire, United Kingdom. 2. The Domain Name and Registrar
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 18, 2017. On January 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 23, 2017, the Registrar transmitted by email to the Center its verification response 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 January 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2017.
The Center appointed Anders Janson as the sole panelist in this matter on February 28, 2017. 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 asserted, and provided evidence in support of, the following facts, which the Panel finds established.
The Complainant, VDA, was founded as VDMI in 1901 in Germany, with offices in Berlin, Brussels, Moscow and Beijing. The purpose of VDMI was to promote road transport, defend against “burdensome measures by the authorities” (taxation, liability obligations), customs protection and to monitor motor shows. In 1923, the VDMI was renamed the Reichsverband der Automobilindustrie (RDA) and the name Verband der Automobilindustrie (VDA) was given to this umbrella organization of the German automotive in 1946.
The Complainant has a global reach with over 600 members who manufacture cars, trailers and buses as well as parts and accessories for the same.
The Complainant owns the trademark ADBLUE in over 40 jurisdictions around the world. The trademark is licensed particularly to car manufacturers, suppliers, and companies of the chemical and mineral oil industry.
In the EU, the Complainant holds the European Union trademark registration ADBLUE (word mark), with the registration number 3945938 (word mark) in classes 1, 4, 12, 37 and 42. The trademark was registered on February 6, 2006, and is used in relation to a urea solution.
The Panel finds that the Complainant is the owner of the trademark ADBLUE, as registered in EU and approximately 40 other jurisdictions worldwide. The Panel further finds that the trademark is well-known.
The Respondent is a limited liability company with its stated address in Doncaster, United Kingdom.
The Complainant has, on January 14, 2016, filed a Complaint against the Respondent in relation to the same Disputed Domain Name, . A decision was made in the Complainant’s favor, when the panel ordered the Disputed Domain Name to be cancelled. See Verband der Automobilindustrie e.V. v. Andrew Booth, ECUFLASH Ltd,WIPO Case No. D2016-0078.
After cancellation of the Disputed Domain Name and its release for registration on the open market, the Respondent re-registered the Disputed Domain Name, on October 22, 2016.
The Disputed Domain Name hosts a website offering products and services in competition with the Complainant, and offering services for the “removal of AdBlue System from light & heavy commercial vehicles”. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
- The Disputed Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- The Disputed Domain Name has been registered and is being used in bad faith; and
- The Disputed Domain Name should be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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. A. Identical or Confusingly Similar
The Disputed Domain Name is . The Complainant is the holder of approximately 40 registrations of the trademark ADBLUE, one of which is a registered word mark in the EU. The trademark is well known.
The generic term for the Complainant’s AdBlue product would be “urea solution” or “Diesel Exhaust Fluid” (“DEF”). The Complainant has demonstrated that a number of companies manufacture DEF and sell the same under their own different brand names.
The Complainant has further asserted that the dominant and distinctive element in the case of the Disputed Domain Name is the registered trademark ADBLUE. The remainder of the Disputed Domain Name is the word “problems” which is generic and does not convey any distinctiveness to the Disputed Domain Name. The addition of a non-distinctive word to the Complainant’s trademark does not prevent a finding of confusing similarity.
In conclusion, the Panels finds that the Complainant has provided evidence to support a finding that the Disputed Domain Name is confusingly similar to the Complainant’s trademark.
The Panel holds that the Complainant has the first element established of the Policy, paragraph 4(a). B. Rights or Legitimate Interests
It has been established in prior decisions under the Policy that it is sufficient that the Complainant makes a prima facie showing that the Respondent has no rights or legitimate interests in 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 as well as crushers and agricultural tractor units”.
The Complainant has asserted that the Respondent is not an authorized user and/or official licensee of the ADBLUE mark. Further, the decision in Verband der Automobilindustrie e.V. v. Andrew Booth, ECUFLASH Ltd, supra, concerning the same Parties and the Disputed Domain Name was in favor of the Complainant. The Disputed Domain Name was then used in the same manner as in the current case.
The Panel finds that the Complainant has established that the Respondent has not been authorized by the Complainant to use its registered trademark ADBLUE. Further, the Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The services provided by the Respondent may be marketed without the use of the Complainant’s registered trademark. Moreover, considering the previous case, it is evident that that Respondent is attempting to profit from the Complainant’s trademark.
The Panel holds that the Complainant has established the second element of the Policy, paragraph 4(a). C. Registered and Used in Bad Faith
The Complainant has asserted that the Respondent knew that the Complainant owns the registered trademark ADBLUE when registering the Disputed Domain Name. The Respondent was the previou registrant of the Disputed Domain Name, which was cancelled after the decision in Verband der Automobilindustrie e.V. v. Andrew Booth, ECUFLASH Ltd, supra. It has been established that the Respondent thereafter has re-registered the Disputed Domain Name and therefore he had knowledge of the Complainant’s right in the ADBLUE trademark. The Respondent is using it in connection with a website offering products and services competing with the Complainant which is evidence of bad faith use.
The Panel holds that the Disputed Domain Name has been registered and is being used in bad faith, and that the Complainant has established the third element of the Policy, paragraph 4(a). 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.
Anders Janson
Sole Panelist
Date: March 14, 2017
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