The Complainant is Deutz AG of Cologne, Germany, represented by Bardehle Pagenberg, Germany.
The Respondent is Xue Thomas, Thomas Xue of Shanghai, China. 2. The Domain Names and Registrars
The disputed domain name is registered with Shanghai Meicheng Technology Information Development Co., Ltd. The disputed domain name is registered with FastDomain, Inc (together the “Registrars”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 30 and February 1, 2018, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant of both disputed domain names and providing the contact details. On February 4, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On February 6, 2018, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 February 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on March 14, 2018. 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 is a German company that manufactures and distributes worldwide diesel engines and engine components for agricultural machinery, marine propulsion, automobiles and construction equipment. The Complainant also provides services related to engines all over the world through a sales and service network made up of subsidiaries and contractual partners, including a large network of authorized distribution points in China. The Complainant owns of multiple trademark registrations, including international trademark registration number 739507 for DEUTZ and device (the “DEUTZ trademark”), registered from March 30, 2000, designating multiple jurisdictions, including China, and specifying goods and services in classes 7, 9, 12, 16, 35, 36, 37, 41 and 42, including “real estate and house management services”. That trademark registration remains current. The Complainant has also registered multiple domain names, including and that it uses in connection with its official website to provide information about itself and its goods and services.
The Respondent is an individual located in Shanghai, China. He is the registrant of both disputed domain names and the contact person at the website to which the disputed domain names resolve. His address as shown on the website is located in a building named the “German Center”.
The disputed domain name was registered on February 26, 2013. The disputed domain name was registered on February 28, 2013. They resolve to a website titled “DEUTZ Immobilien Profis” (translation: DEUTZ Real Estate Professionals) but otherwise in English. The website purports to be for a property service provider company named DEUTZ. The website offers various “services lines” for cleaning, security, technical, food, gardening and customer services. It displays several third-party trademarks, including one belonging to another German engineering company. 5. Parties’ Contentions A. Complainant
The disputed domain names are confusingly similar to the Complainant’s trademark DEUTZ. They combine the DEUTZ mark with the generic element “services”, which will be perceived as being clearly descriptive and non-distinctive.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is using the disputed domain names for promoting certain “property services”, including maintenance, security, cleaning and food service, under the designation “Deutz”. Neither the name of the Respondent, nor any of the companies promoting goods and services under the disputed domain names are in any way related to the term “Deutz”. In addition, no license or authorization of any other kind has been given by the Complainant to the Respondent to use the disputed domain names or the designation “Deutz”.
The disputed domain names were registered and are being used in bad faith. When registering the disputed domain names, the Respondent was clearly aware of the prior rights of the Complainant in the DEUTZ trademarks, which have been registered long before the registration of the disputed domain names and which are protected all over the world. In particular, the Complainant is also the registered owner of trademark rights in the designation DEUTZ – even for “real estate and house management services” – in China, where the Respondent is located, and uses this mark for its engines, spare parts and services related thereto also in China. The Respondent is using the disputed domain names to promote services relating to real estate property and house management services under the DEUTZ trademark, without any rights or legitimate interest in this designation. Such use of a well-known brand for goods and services identical to those for which the Complainant’s marks are registered is making use of the DEUTZ mark to bait users and switch them to competing products and services offered by the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that “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 Registrars confirmed that the Registration Agreement for the disputed domain name is in Chinese while the Registration Agreement for the disputed domain name is in English.
The Complainant requests that the language of the proceeding be English. Its main arguments are that one of the Registration Agreements is in English, that the Complainant is unable to communicate in Chinese and that the website to which the disputed domain names resolve is in English, which demonstrates the Respondent’s ability to communicate in that language,
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English. The Respondent entered into one of the Registration Agreements in English and the website to which the disputed domain names resolve is in English, from which it is reasonable to infer that the Respondent is able to communicate in that language. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Analysis and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the DEUTZ trademark.
Both disputed domain names incorporate all the non-figurative elements of the DEUTZ and device trademark. The figurative elements are omitted for technical reasons.
Both disputed domain names include the additional element “services”, one separated from “deutz” by a hyphen and the other not. As a dictionary word “services” is generally incapable of dispelling confusing similarity between a domain name and a trademark. See Deutz AG v. tianyulong,WIPO Case No. D2014-0430.
The only other element in each disputed domain name is the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix may generally be disregarded in the assessment of confusing similarity between a domain name and a trademark for the purposes of the Policy.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use 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 consumers or to tarnish the trademark or service mark at issue.
With respect to the first circumstance above, the disputed domain names are confusingly similar to the Complainant’s DEUTZ trademark and are used in connection with a website ostensibly offering services in respect of which the Complainant’s trademark is registered, including in China, where the Respondent is located. The Complainant submits that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the disputed domain names or the designation “Deutz”. This circumstance does not create rights or legitimate interests in the disputed domain names for the purposes of the Policy.
With respect to the second circumstance above, the Respondent’s name is shown in the Registrars’ WhoIs databases and the website contact information as “Xue Thomas” or “Thomas Xue”, not “Deutz”. There is no evidence that the Respondent has been commonly known by the disputed domain names.
With respect to the third circumstance above, the disputed domain names resolve to a website ostensibly for a commercial business. That is not a noncommercial or fair use of the disputed domain names.
In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that case because he did not respond to the Complainant’s contentions.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the Respondent has] 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 Complainant’s mark 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 registered the disputed domain names in 2013, many years after the Complainant obtained its registration for the DEUTZ trademark, including in China where the Respondent is located. The Complainant has made extensive use of its DEUTZ trademark, including in China. “Deutz” is not a dictionary word. The disputed domain name incorporates the non-figurative elements of the Complainant’s DEUTZ trademark as its dominant element together with a dictionary word (with or without a hyphen) and a gTLD suffix. The disputed domain names are identical to one of the Complainant’s domain names that redirects to the Complainant’s official website, but for the addition of the plural “s” in “services” and, in one case, the omission of the hyphen. Nothing on the website provides an explanation for the choice of the name “Deutz” although the website title indicates an awareness that it is of German origin. The website also displays a trademark belonging to another German engineering company. The Panel is persuaded, on the balance of probabilities, that the Respondent was aware of the Complainant and its DEUTZ trademark at the time that he registered the disputed domain names and deliberately chose to register it as part of the disputed domain names in bad faith.
The website to which the disputed domain names resolve offers a range of services, including some in respect of which the Complainant has registered its DEUTZ trademark. The disputed domain names give the Internet user the mistaken impression that they are affiliated with, or endorsed by, the Complainant. The use of the name “Deutz” on the website further contributes to the confusion and, while the other website content may give Internet users reason to doubt that the site is affiliated with the Complainant after all, by the time that they see the content they have been diverted to the website. This use of the disputed domain names is intentional and for commercial gain. The Panel is persuaded, on the balance of probabilities, that the disputed domain names operate by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. These facts satisfy the requirements of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 names and be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: March 18, 2018
Full & Egal Universal Law Academy