The Complainant is Deutsche Bahn AG of Berlin, Germany, represented by Harte-Bavendamm, Germany.
The Respondents are Domain Administrator, PrivacyG of Phoenix, Arizona, United States of America (“United States”) / Dennis Cabrera of Marion, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2018. On February 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2018, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on February 8, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 13, 2018.
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 February 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2018.
The Center appointed Andrew Brown QC as the sole panelist in this matter on March 21, 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 A. The Complainant
The Complainant is a private joint-stock company (AG) headquartered in Berlin which describes itself as a passenger and logistic company. Its core business is the operation of the German railway. This is a very substantial operation involving daily transportation of 5.5 million passengers and shipping of 595,000 tons of freight. This occurs on the Complainant’s 40,000 plus trains, and along its 33,000 plus kilometers of railway. The Complainant is also responsible for the Deutsche Bahn bus service, which transports 1,8 million customers per day.
In addition to this core business, the Complainant is also active in what it calls “the general logistic business”. This is most notably done through its subsidiary DB Schenker, which has operated since 1872 and was purchased by the Complainant in 2003. This entity has 94,600 employees worldwide in 2,000 locations around the world. The services provided by DB Schenker include supporting “industry and trade in the global exchange of goods through land transport, worldwide air and ocean freight, contract logistics and supply chain management”.
The Complainant operates a series of trade marks covering the DB Schenker name with respect to these services. It then authorises DB Schenker, its subsidiary, to use these trade marks. The Complainant’s registrations include:
Trade mark
Registration number
Country
Registration Date
Class(es)
DB SCHENKER
983697
International Trade Mark
July 7, 2008
16, 20, 39
DB SCHENKER DELIVERING SOLUTIONS
1039570
International Trade Mark
March 25, 2010
16, 20, 39
DB SCHENKER
6698047
European Union Trade Mark
November 17, 2008
39
The Complainant also owns the following DB Schenker-related domain names:
-
-
-
The Complainant and DB Schenker advertise and sell their logistics and transportation services from these domains. The Complainant says that it has invested significant financial means into the DB Schenker brand. B. The Respondent
The Respondent in this proceeding are “Domain Administrator, PrivacyG” and “Dennis Cabrera”. The Respondents’ addresses are listed as a location in Phoenix, Arizona and Marion, Texas, respectively. The Respondents (hereinafter referred as to “The Respondent”) are not affiliated with the Complainant. No response has been received from the Respondent. C. The Disputed Domain Name
As noted above, the disputed domain name is . It was registered on November 6, 2017 (“the Relevant Date”).
The Complainant has provided evidence of the website that could be accessed from the disputed domain name (“the website”). The website purports to offer the same or similar logistics and transportation services as those sold by the Complainant’s subsidiary, DB Schenker. These services are sold under a logo mark featuring the words “Dbschenker Delivery”. The website featured the following wording on its front page:
“For more than 140 years, DB Schenker has pushed the limits of the logistics and supply chain management industry. We provide thousands of products for customers who are focused on finding the best shipping solution. DB Schenker’s unparalleled network gives us a local, regional and global presence in nearly every business market. For over a century, we’ve provided innovative logistics solutions for all modes of transportation. We invite you to learn more about our business by exploring our latest news.”
The Complainant did not authorise these uses of its trade marks on the website. In fact, evidence provided by the Complainant demonstrates that the above excerpt was copied without permission from the Complainant’s websites. The website features several unauthorised quotes taken from the Complainant’s websites in this way.
The website also includes the trade marks of a number of other transportation companies, such as DHL, TRANSCASH, KIALA, FRANCE EXPRESS and UPS. These entities are said to be “Our Partners”. 5. Parties’ Contentions A. Complainant
The Complainant has submitted that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights under paragraph 4(a)(i) of the policy.
The Complainant relies on its 59 registered trade marks consisting of or containing the term DB SCHENKER to satisfy paragraph 4(a)(i). These marks include those set out above, all of which pre-date registration of the disputed domain name. These marks cover the services offered on the website. The Complainant submits in relation to these marks that “DB Schenker” is not a descriptive term, and instead refers to Mr. Gottfried Schenker, the founder of the DB Schenker business, as explaining how the name and trade mark came about. Because of this, the Complainant submits, the DB SCHENKER marks are inherently distinctive.
The Complainant submits that the use of the term “dbschenker” as part of the disputed domain name is identical or similar to the Complainant’s registered marks for DB SCHENKER, and will give rise to confusion. Further, the Complainant submits that the disputed domain name is also confusingly similar to the Complainant’s DB SCHENKER DELIVERING SOLUTIONS registered trade mark.
In relation to paragraph 4(a)(ii) of the Policy, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It has submitted that none of the circumstances provided for under paragraph 4(c) of the Policy apply to the Respondent in the present case. The Respondent has no relationship with the Complainant, nor has it been authorised to use the Complainant’s registered trade marks. The Complainant submits that its trade marks and business are widely known and had operated long before the Relevant Date.
Finally, the Complainant submits that the disputed domain name was registered and is being used in bad faith, in satisfaction of paragraph 4(a)(iii) of the Policy. It relies on the previous decision in Philip Morris USA Inc. v. Malton International Ltd,WIPO Case No. D2009-1263, where it was held that bad faith is demonstrated:
“(i) if the Complainant’s products are prominently featured on the Respondent’s website, as it indicates prior knowledge of the Respondent with regard to the Complainant’s mark;
(ii) if the Complainant’s mark and copyright protected material from the website operated by the Complainant are reproduced on the Respondent’s website, as it indicates a designation of the Respondent’s website to create “the false impression of an association with the Complainant”;
(iii) if “click-through links” to online retailers selling products of the Complainant or its competitors are provided, as it indicates that the Respondent is deriving financial gain from so doing.”
The Complainant submits that the evidence supports a finding that the website was registered in bad faith due to the fact that “the trade mark ‘DB Schenker’ is a highly reputed trade mark due to the extensive, long-standing and highly successful use that has been made of the mark”. In addition, it submits that the subsequent use of the website to offer the same services as those sold by the Complainant under the mark DB SCHENKER demonstrates that the intended to use the disputed domain name in bad faith at the time of registration.
The Complainant relies on the same evidence to support a finding that the website has been used in bad faith. It points to the evidence of copying from the Complainant’s websites. It submits that in doing so, the Respondent sought to create the false impression that it is the Complainant or is associated with the Complainant. It also submits that the Respondent sought to derive financial benefit either from the Complainant’s trade marks or profits directly or indirectly by confusing consumers into dealing with the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) That the disputed domain name is identical or confusingly similar to a trade 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 Panel finds that the Complainant has rights in the DB SCHENKER and DB SCHENKER DELIVERING SOLUTIONS trade marks by virtue of its trade mark registrations set out above, registered in the United States, the European Union, among others.
The Panel finds that the disputed domain name is confusingly similar to both the DB SCHENKER and DB SCHENKER DELIVERING SOLUTIONS trade marks. It incorporates the DB SCHENKER trade mark in its entirety, and is only differentiated from the DB SCHENKER DELIVERING SOLUTIONS mark from the omission of “solutions” and the use of the word “delivery” rather than “delivering”. These differences are insufficient to differentiate the disputed domain name from the Complainant’s trade marks. Consumers who are attempting to access the Complainant’s subsidiary’s websites directly or as a result of search engine searches and who are shown the disputed domain name are likely to be confused into believing that the disputed domain name is the Complainant’s subsidiary’s website or is associated with it.
The Panel therefore finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) That before notice of the dispute, the Respondent used or made 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) That the Respondent has been commonly known by the disputed domain name, even if it had acquired no trade mark or service mark rights; or
(iii) That the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or tarnish the trade mark or service mark at issue.
As already noted above, no response or evidence has been provided by the Respondent. However, the overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
There is no evidence of the Respondent using or making demonstrable preparations to use the disputed domain name or a name corresponding to that name in connection with a bona fide offering of goods or services. Nor is there any evidence of the Respondent being commonly known by the disputed domain name.
Instead, the Complainant has provided evidence of the Respondent using the disputed domain name with intent for commercial gain to misleadingly divert customers from the Complainant’s subsidiary to the Respondent. The website contains clickable links offering delivery services, packaging and tracking, ship charter services and critical freight/air freight services. These offerings conflict with those genuinely offered by the Complainant’s subsidiary under the DB SCHENKER mark. In the absence of authorisation from the Complainant to so use the DB SCHENKER marks, the only inference is that the disputed domain name was intended to be used to mislead customers into believing they were dealing with the Complainant.
Accordingly, and in the absence of any response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trade mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) That the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) That the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) That 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 Panel finds that the Respondent has registered the disputed domain name in bad faith as provided for under paragraph 4(b)(iv) of the Policy for the following reasons:
(i) As noted above, the mark DB SCHENKER is a distinctive term that refers to the founder of the DB SCHENKER business. It has no generic or descriptive meaning. The evidence shows that the DB SCHENKER marks have been used by the Complainant’s subsidiary in connection with its transportation services since 1872. In the absence of any evidence showing prior bona fide use by the Respondent of the DB SCHENKER mark (or indeed any response from the Respondent) the Panel infers that the Respondent intended to adopt a confusingly similar domain name to the DB SCHENKER marks at the time of registration.
(ii) The fact that the Respondent chose the disputed domain name for a website that offers services that are the same as those offered by the Complainant’s subsidiary demonstrates that the Respondent was aware of the DB SCHENKER marks and services offered under those marks at the time of registration of the disputed domain name.
(iii) The website that is displayed after an Internet user enters the disputed domain name includes material that is identical to that found on the Complainant’s subsidiary’s websites. This shows that the Respondent intended to target and confuse consumers looking for the Complainant’s subsidiary’s DB SCHENKER services when the disputed domain name was registered.
The Panel also finds that the Respondent has used the disputed domain name in bad faith as provided for under paragraph 4(b)(iv) of the Policy for the following reasons:
(i) As already noted above, the website utilises the Complainant’s trade marks in the course of offering services which are identical to those offered by the Complainant’s subsidiary. Taken in combination with the disputed domain name , the Panel finds that the use of these related links was a strategy to lure consumers who were looking for the Complainant’s subsidiary into dealing with the Respondent.
(ii) This impression is reinforced by infringing use by the Respondent of copyright material taken verbatim from the Complainant’s subsidiary’s websites. Customers who had browsed through both sites would consider them to be owned by the same entity or related due to this repeated use. This amounts to an intentional attempt to create confusion or the false impression of an association with the Complainant.
The Panel finds that the above likelihood of confusion was created for the purposes of commercial gain, as the website links to a United States phone number and an email address. These provide the tools for the Respondent to secure business from consumers who are under the false impression that they are dealing with the Complainant. The Panel finds this supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant. 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.
Andrew Brown Q.C.
Sole Panelist
Date: April 9, 2018
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