The Complainants are Thyssenkrupp AG of Essen, Germany ("The Complainant No. 1"); VDM Metals International GmbH of Werdohl, Germany ("The Complainant No. 2"), represented by Orth Kluth Rechtsanwälte PartG mbB, Germany.
The Respondent is Yasutaka Sakatani of Uji-shi, Japan, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH dba (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on October 10, 2017. In the Complaint, the Complainants submitted a request for consolidation of multiple Complainants in a single complaint and requested that the disputed domain name be transferred to the Complainant No. 1.
On October 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details and stating that the language of the Registration Agreement for the disputed domain name is Japanese. On October 17, 2017, the Center sent an email in English and Japanese regarding the language of the proceeding. The Complainants requested that English be the language of the proceeding on October 20, 2017, to which the Respondent did not respond.
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 in English and Japanese of the Complaint, and the proceedings commenced on October 26, 2017. The notice also indicated the Center's preliminary determination regarding the language to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Japanese;
3) appoint a Panel familiar with both languages mentioned above, if available.
In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2017. On October 27, 2017, the Respondent sent an email in English indicating that it did not own the disputed domain name. On November 15, 2017, the Complainants responded to the Respondent's contentions. The Respondent did not submit any substantive response. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on November 16, 2017.
The Center appointed Haig Oghigian as the sole panelist in this matter on November 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 No. 1 is a diversified industrial group and one of the world's largest steel producers. The Complainant No. 1 has several international trademark registrations of the word mark THYSSENKRUPP, including international registration no. 726817 registered on April 20, 1999.
The Complainant No. 2 is a manufacturer of a comprehensive range of high-performance materials including sheet and plate, wire, rod and bar, pre-material for tube production and offers a wide range of services, including classical hire work. The Complainant No. 2 has several international trademark registrations of word mark VDM and figurative Trademark VDM, including international registration no. 161577 registered on May 19, 1952.
The disputed domain name was registered by the Respondent on May 15, 2016. The resolving website of the disputed domain name displays information about a Japanese escort service recruitment page. 5. Parties' Contentions A. Complainants
Identical or confusingly similar
The Complainants argue that the Complainant No. 1's trademark THYSSENKRUPP is wholly incorporated in the disputed domain name so that the disputed domain name is (partially) identical to the Complainant No. 1's trademark and therefore, at least it is confusingly similar.
The Complainants further argue that the Complainant No. 2's trademark VDM is wholly incorporated in the disputed domain name so that the disputed domain name is (partially) identical to the Complainant No. 2's trademark and therefore, at least it is confusingly similar.
No rights or legitimate interests
The Complainants have conducted a worldwide trademark research searching for the Respondent as trademark owner, but there have been no relevant results. The Respondent's own name does not correspond to the disputed domain name in any way or nor have the Complainants permitted the Respondent to make use of their trademarks in the disputed domain name. Also, the Respondent has not been commonly known by the disputed domain name.
Registered and used in bad faith
First, the Respondent has registered the disputed domain name in order to prevent the trademark owners from reflecting their marks in a domain name. Also, by using the disputed domain name, the Respondent intentionally attempted attract for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainants' marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. Use of a domain name to create such confusion constitutes bad faith. B. Respondent
The Respondent did not reply to the Complainants' contentions. In an email dated October 27, 2017, the Respondent wrote in English "The domain is not the domain I own. Please check the registrar for the correct owner." The Panel notes in this regard that the Respondent's email was sent from the registrant email address in the publicly-available WhoIs records, and confirmed by the Registrar. There is nothing in the case file that suggests that the Respondent has not been properly identified by the Complainants. 6. Discussion and Findings 6.1 Language of Proceedings
The final determination of the language of the proceeding lies with this Panel.
The Complainants requested the language of the proceeding to be English on grounds that Registrar does not offer Registration Agreements in Japanese language, but in English or German language, only, and that the Respondent apparently operates an international domain-trading business which makes it very likely that the Respondent is conversant and proficient in the English language.
The Panel has the discretion under the Rules paragraph 11(a) to determine the appropriate language of the proceeding taking into consideration the particular circumstances of the administrative proceeding. In the absence of a Response and given no objection to the Complainants' request for the language of proceeding as well as to the Center's preliminary language determination (which was sent in Japanese and English), after considering the circumstances of the present case, pursuant to the Rules paragraph 11(a), the Panel decides English to be the language of the proceeding. 6.2 Substantive Decision A. Identical or Confusingly Similar
The disputed domain name is made up of the registered trademarks THYSSENKRUPP and VDM and the generic Top-Level Domain ("gTLD") ".com". The disputed domain name other than the gTLD is identical to the combination of the registered trademarks of the Complainant No. 1 and the Complainant No. 2.
Section 1.12 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") provides:
"Where the complainant's trademark is recognizable within the disputed domain name, the addition of other third-party marks (i.e., ), is insufficient in itself to avoid a finding of confusing similarity to the complainant's mark under the first element.
The complaint may include evidence of the third-party mark holder's consent to file the case, and request that any transfer order be issued in favor of the filing complainant only. Absent such consent (and, where this was considered appropriate, having failed to reach the concerned third party by Procedural Order via the complainant), some panels have ordered transfer of the domain name without prejudice to the concerned third-party's rights. In certain highly exceptional circumstances, panels have ordered the cancellation of the disputed domain name."
The Complainant No. 2 has provided written consent that the disputed domain name may be transferred to the Complainant No. 1.
The Panel finds that the first part of the paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests
The Respondent has not responded to the Complainants to assert any rights or legitimate interests.
Section 2.1 of the WIPO Overview 3.0 provides:
"While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
The Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
As the Respondent has not sought to assert any rights or legitimate interests in the disputed domain name, nor can the Panel ascertain any such rights or legitimate interests from the content of the website under the disputed domain name, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name.
The Panel finds that the second part of the paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Complainants contend that the Respondent has registered the disputed domain name in order to prevent the trademark owners from reflecting their marks in a domain name. Also, by using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainants' marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
The Respondent does not appear to have made any legitimate use of the disputed domain name. It currently resolves to a page containing information about a Japanese escort service recruitment page. There is no apparent legitimate reason for this. Nothing on the page relates to either of the Complainants. The page is effectively a parking page.
Use of a disputed domain name to create such confusion constitutes bad faith.
On this basis, the Panel finds that the disputed domain name was registered and is being used in bad faith.
The Panel finds that the third part of paragraph 4(a) of the Policy is satisfied. 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 No. 1.
Haig Oghigian
Sole Panelist
Date: December 4, 2017
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