The Complainant is Thyssenkrupp AG of Essen, Germany, internally represented.
The Respondent is Shen Zhong Chao of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2017. On November 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 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. On November 10, 2017, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on November 13, 2017. The Respondent did not comment on the language of the proceeding by the specified due date.
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 Chinese of the Complaint, and the proceedings commenced on November 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2017.
The Center appointed Jonathan Agmon as the sole panelist in this matter on December 13, 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, Thyssenkrupp AG, is a diversified industrial group with more than 155,000 employees and a revenue of more than EUR 39 billion in 2016. It is one of the world’s largest steel producers. The Complainant maintains international presence in 78 countries. The Complainant manufactures a variety of products, among them steel, metals, submarines, naval surface vessels, and automation solutions.
The Complainant is the result of a merger of two German steel companies: Thyssen AG, founded in 1891, and Krupp, founded in 1811. In 1997, the companies combined their flat steel activities, with a full merger completed in March 1999.
The Complainant obtained trademark protection for the word mark THYSSENKRUPP by means of several international trademark registrations, among them:
(i) International registration No. 1342637 THYSSENKRUPP registered on January 29, 2016 in classes 1, 4, 6, 7, 9, 11, 12, 17, 19, 35, 36, 37, 38, 39, 40, 41 and 42.
(ii) International word mark registration No. 713857 THYSSENKRUPP registered on April 29, 1999 in classes 1, 4, 6, 7, 9, 11, 12, 16, 17, 19, 37 and 39.
(iii) International word mark registration No. 731636 THYSSENKRUPP registered on July 7, 1999 in classes 35, 36, 37, 38, 39, 40, 41 and 42.
(iv) International word mark registration No. 726817 THYSSENKRUPP registered on April 20, 1999 in classes 1, 4, 6, 7, 9, 11, 12, 16, 17, 19, 35, 36, 37, 38, 39, 40, 41 and 42.
(v) International word mark registration No. 1009184 THYSSENKRUPP registered on October 30, 2008 in classes 1, 4, 6, 7, 8, 9, 11, 12, 16, 17, 19, 20, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
The Complainant is also the registrant of numerous domain names containing its trademark and company name “Thyssenkrupp”, including and .
The Complainant is in negotiations for a merger with Tata Steel, an Indian multinational steel-making company headquartered in Mumbai and one of the top steel producing companies globally.
Press reports of a possible merger between the Complainant, ThyssenKrupp, and Tata Steel started in early 2016. The disputed domain name is comprised of the name of the Complainant and the word “tata” which is the first word in the trademark TATA STEEL.
The disputed domain name was registered by the Respondent on October 17, 2017.
The disputed domain name is currently not in use. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s famous and registered mark THYSSENKRUPP because it contains the Complainant’s mark in its entirety.
The Complainant argues that the Respondent started using the disputed domain name long after the Complainant began using its mark and did so due to the international reputation it has acquired in the mark THYSSENKRUPP and press reports of a possible merger between the Complainant and Tata Steel.
The Complainant further argues that the Respondent is not known under the disputed domain name and is not authorized by the Complainant to use the disputed domain name, which is associated with the Complainant. It is further alleged that the Respondent has never used and does not intend to use the mark THYSSENKRUPP in connection with a bona fide offering of goods or services or in any other legitimate commercial or noncommercial way. Therefore, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant further argues that the Respondent used the disputed domain in bad faith. It is further alleged that the Respondent read press reports of a possible merger between the Complainant and Tata Steel, and purchased and used the disputed domain name, in particular, to prevent the Complainant from adopting the mark THYSSENKRUPP and TATA in corresponding domain name.
Finally, the Complainant argues that the Respondent intended to use the strong reputation of the Complainant’s trademark THYSSENKRUPP in order to confuse the public and to cause damage to the Complainant by disrupting its business.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) Unless otherwise agreed by the Parties, or 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 Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese characters;
(ii) The Respondent did not object to the Complainant’s request that English be the language of the proceeding;
(iii) The Respondent was involved in further UDRP proceedings in which English was the language of the proceeding;
(iv) The Complainant would have to incur significant expense in translating the Complaint and attached annexes into the Chinese language; and
(iv) The proceeding would have to be delayed considerably.
Upon considering the above, the Panel determines that English be the language of the proceeding. 6.2. Substantive Issues A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the THYSSENKRUPP mark (see Annexes 13-19 in the Complaint).
The disputed domain name integrates the Complainant’s THYSSENKRUPP trademark in its entirety. The disputed domain name and the Complainant’s trademark differ in the additions of a hyphen and the name of the first word of the company - Tata Steel — with which the Complainant was negotiating a merger with — “tata”, and the generic Top-Level Domain (“gTLD”) “.com”.
The additional components of a hyphen and “tata” do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark. Moreover, previous UDRP panels have found that when a complainant’s trademark is recognizable, the addition of another third-party mark is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark. The present case is no exception. See Chevron Corporation v. Young Wook Kim,WIPO Case No. D2001-1142; Yahoo! Inc. v. CPIC NET and Syed Hussain,WIPO Case No. D2001-0195; Bayerische Motoren Werke AG v. Gary Portillo,WIPO Case No. D2012-1937; Guccio Gucci S.p.A. v. Brenda Hawkins,WIPO Case No. D2013-0603.
Finally, the addition of the gTLD “.com” does not serve to avoid confusing similarity as it is without significance in the present case since the use of a gTLD is technically required to operate a domain name (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect of the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or a variation thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services and holds no trademark registration for any THYSSENKRUPP mark.
The Respondent did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The disputed domain name contains the Complainant’s registered trademark THYSSENKRUPP in its entirety. In addition, the disputed domain name contains the name of a third-party company – Tata Steel – in its entirety. Prior UDRP decision have held that the incorporation of a trademark into a domain name by a registrant having no plausible explanation for doing so may be an indication of opportunistic bad faith (see F. Hoffmann-La Roche AG v. C / Mike Kazaros,WIPO Case No. D2010-2212). Therefore, the use of the name “Thyssenkrupp” in the disputed domain name constitutes bad faith.
The Complainant has referenced to a previous UDRP decision, in which it has been determined that the Respondent has registered domain names of trademarks that contain names of companies who are in the midst of a merger negotiation (see Standard Life Employee Services Limited v. Shen Zhong Chao,WIPO Case No. D2017-1114). Prior UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration (Home Interiors & Gifts, Inc. v. Home Interiors,WIPO Case No. D2000-0010; Playboy Enterprises International, Inc. v. Tom Baert,WIPO Case No. D2007-0968; and Eveready Battery Company, Inc. v. Web Master,WIPO Case No. D2006-1483). In the present case, the Panel finds that the Respondent’s conduct constitutes a pattern of bad faith.
The disputed domain name is currently not in use. Prior UDRP panels have long found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see Telstra Corporation Limited v. Nuclear Marshmallows, supra; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574).
The Complainant has submitted evidence, which shows that the registration of the disputed domain name by the Respondent occurred long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the THYSSENKRUPP trademark since April 1999, while the disputed domain name was registered by the Respondent on October 17, 2017. In addition, the disputed domain name was registered by the Respondent after press reports of a possible merger agreement between the Complainant and Tata Steel were published in the press. The timing of the registration of the disputed domain name by the Respondent is suggestive of the Respondent’s bad faith.
Reviewing the totality of the circumstances in this case, including the degree of distinctiveness of the Complainant THYSSENKRUPP trademark, the timing of the registration of the disputed domain name by the Respondent, the Respondent’s pattern of conduct reflected in previous UDRP decisions, and the fact that there is no conceivable good faith use of the disputed domain name by the Respondent, it is suggestive of the Respondent’s bad faith in these particular circumstances.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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.
The transfer of the disputed domain name shall be ordered without prejudice to any rights the third-party company – Tata Steel – may have in the disputed domain name.
Jonathan Agmon
Sole Panelist
Date: December 27, 2017
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