The Complainant is DEKRA e.V of Stuttgart, Germany, represented by Uexküll & Stolberg, Germany.
The Respondent is Stefanie Smiel of Dillon, Colorado, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2018. On July 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 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 July 11, 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 July 13, 2018. On July 16, 2018, the Center sent an email communication to the Complainant regarding a Complaint deficiency. On July 18, 2018, the Complainant filed an amended Complaint.
The Center verified that the Complaint together with 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 July 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2018.
The Center appointed Charles Gielen as the sole panelist in this matter on August 17, 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 owns worldwide numerous trademark registrations for DEKRA, such as European Union Trade Mark No. 002386597 registered on September 2, 2003 for goods and services in classes 9, 35, 36, 38 and 42 as well as International Registration No. 782309 registered on January 31, 2002 for goods and services in the same classes and valid in a number of countries, such as in the United States of America.
The disputed domain name was created on June 18, 2018 and resolves to a website with pay-per-click links showing, among others, the names “DEKRA MPU” as well as “DEKRA TüV”. 5. Parties’ Contentions A. Complainant
The Complainant contends that it is one of the world’s leading expert organizations and the world’s largest vehicle testing provider. Its main tasks include the periodic inspection of motor vehicles (general inspection including emissions testing), expert appraisals, safety inspections and the inspection of technical systems. It currently maintains a presence in 50 countries in Western and Eastern Europe as well as in the United States of America, Brazil, North and South Africa, Israel, Japan and China. The Complainant operates the business units, called Automotive, Industrial and Personnel providing professional and innovative services in the fields of vehicle inspections, expert appraisals, international claims management, consulting, industrial testing, product testing, certification, environmental protection, qualification, temporary work as well as
out- and new placement.
The company DEKRA SE conducts its operative business as a fully owned subsidiary of the Complainant and among the main tasks are inter alia general inspections and emission controls for motor vehicles, security checks and the check of technical plants. Further services are damage investigations, expert opinions regarding accident analysis and technical appraisals, industrial expert appraisal services, material testing and expert opinions regarding real estate and construction. In Germany, this company maintains 480 own branches and is conducting regular inspections of motor vehicles in more than 38,000 work stations. It employs around 30,000 people. This company and its respective subsidiaries are using and have been using the trademarks of the Complainant with the consent of the latter. The trademark and tradename DEKRA enjoys an extremely high brand awareness in Europe.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark, since the disputed domain name reproduces the trademark DEKRA in its entirety followed by the descriptive term “group.”
Furthermore, the Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name, because the Respondent is not known by the disputed domain name, has not been authorized by the Complainant to use the trademark DEKRA in any way, has no connection or affiliation with the Complainant and has never made any bona fide use of the disputed domain name. The Complainant points out that the disputed domain name was only created on June 18, 2018 which is also the date when use of the disputed domain name could have started at the earliest. As the Complainant has immediately sent a notice to the Respondent of the dispute after creation of the disputed domain name, it is impossible and can be excluded that the Respondent could have acquired any rights or legitimate interests within this extremely short period between commencing use and receiving notice of the Complaint. The Complainant argues that Internet users shall believe that, by using the tradename DEKRA of the Complainant on its website, the Respondent’s activities are offered, authorized, licensed or sponsored by the Complainant. However, as there is no business relationship between the Complainant and the Respondent, use of the disputed domain name by the Respondent is neither noncommercial, nor fair, but only with intent for commercial gain to mislead and divert consumers and to tarnish the trademark at issue.
Finally, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. Among others, the following reasons are given. First of all the registration is in bad faith, since at the time of registration of the disputed domain the trademark DEKRA has been well-known in Europe and worldwide for a long time. The recent registration of the disputed domain name in the form of the well-known trademark of the Complainant clearly interferes with the Complainant’s business. Furthermore, the Complainant argues that, by using the disputed domain name, the Respondent intentionally attempts to attract for commercial gain, Internet users to his website, by creating a likelihood of confusion with the
well-known trademark and tradename of the Complainant as to the source, sponsorship, affiliation, or endorsement of the Respondent’s business. Finally, the Complainant points at an email send by the Respondent to one of the employees of the Complainant which was identified as a fraud attempt. It shows that the disputed domain name is also misused as part of an email address. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy. A. Identical or Confusingly Similar
The Complainant proves that it has rights in the trademark DEKRA based on different trademark registrations. The term “dekra” in the disputed domain name is identical to this trademark. The fact that the disputed domain name contains the term “group” does not alter the conclusion that the disputed domain name is confusingly similar to the trademark DEKRA. The main reason is that the term “group” is generic. Furthermore, in the disputed domain name the emphasis therefore lies on the first word, which is “dekra” and which is identical to the trademark of the Complainant. The added suffix “.com” does not change the finding that the disputed domain name is confusingly similar, since the suffix “.com” is understood to be a technical requirement. In making the comparison between the trademark and the disputed domain name, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name is confusingly similar to the trademark.
Therefore, the requirement under paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The first reason is that the Complainant’s trademark is not a term one would choose as a domain name without having specific reasons to choose such a term and this word certainly is not a descriptive term serving to indicate specific characteristics of any goods or services. Furthermore, the disputed domain name was registered long after the Complainant started to use the trademark DEKRA. The Panel is convinced that the term “dekra” in the disputed domain name has no other meaning except to refer to the Complainant and its trademarks, which is proven by the fact that the website at the disputed domain name also mentions a couple of times the tradename DEKRA of the Complainant. Furthermore, the Respondent is not known by the disputed domain name, has not been authorized by the Complainant to use the trademark DEKRA in any way, has no connection or affiliation with the Complainant and has never made any bona fide use of the disputed domain name. Finally, the Respondent has not come forward claiming any rights or legitimate interests and the Panel does not find so in the present record.
In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith.
The main reasons for this conclusion are as follows. The trademark DEKRA enjoys fame in particular in Europe and consists of a coined term. The intention of the Respondent is to mislead Internet users in believing that the disputed domain name is in one way or the other connected to the Complainant and its business. The Respondent is undoubtedly trying to attract, for commercial gain, Internet users and consumers by creating a likelihood of confusion with the Complainant’s trademark. This intention follows from the fact that the Respondent is using the disputed domain name for a website which refers to the trademark and tradename DEKRA of the Complainant without the Respondent being connected or affiliated in any way whatsoever with the Complainant. The Panel is of the opinion that registration and use of a domain name in connection with such activities constitutes bad faith under the Policy. The intention of the Respondent clearly is to capitalize on the reputation of the Complainant’s trademark. This intention also follows from the fact that the Respondent used the disputed domain name to send an email to an employee of the Complainant which was identified as fraud by the Complainant. The Panel is of the opinion that registration and use of a domain name in connection with such activities constitutes bad faith under the Policy.
The Panel therefore considers the requirement of paragraph 4(a)(iii) of the Policy to be met. 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.
Charles Gielen
Sole Panelist
Date: August 24, 2018
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