The Complainant is Deutsche Bahn AG of Berlin, Germany, represented by Harte-Bavendamm, Germany.
The Respondent is Wanxu Dong of Duisburg, Germany, represented by CO.LEGUM, Germany. 2. The Domain Names and Registrar
The disputed domain names and are registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2018 in relation to six domain names including the disputed domain names. On October 2, 2018, the Center transmitted by email to different concerned Registrars a request for registrar verification in connection with all domain names mentioned in the Complaint of September 25, 2018. The same day, the Registrar for the disputed domain names transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the information in the Complaint. The Center sent an email communication to the Parties on October 16, 2018 in relation to the language of the proceedings for the six domain names mentioned in the Complaint of September 25, 2018. By email of October 18, 2018, the Complainant requested for a deadline until October 22, 2018 to take position on the language of the proceedings, and the deadline was granted by the Center. On October 22, 2018, the Complainant informed the Center that upon review of the information provided by the Registrars it would withdraw its Complaint for one domain name (), submit a separate Complaint in German for three domain names (, and ) and amend its Complaint of September 25, 2018 in English regarding the disputed domain names the Respondent being actually different than the one mentioned in its Complaint of September 25, 2018. On October 22, 2018, the Respondent informed the Center that he would defend his rights and interests regarding the disputed domain names and suggested to use German as language of the proceedings. The Complainant filed an amended Complaint on October 26, 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 November 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2018. Following the Respondent’s request, the response due date was extended to November 29, 2018. The Response was filed with the Center on November 29, 2018. The Complainant submitted supplemental filing on December 4, 2018.
The Center appointed Theda König Horowicz, Christian Schalk and Torsten Bettinger as panelists in this matter on January 3, 2019. The Panel finds that it was properly constituted. Each member of 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 leading passenger transportation and logistics company which is headquartered in Berlin. It is a private joint stock company with the Federal Republic of Germany being its single shareholder. The Complainant’s core business is the operation of the German railway network which regularly receives a strong attention in the media. It is also known for operating a freight railway system and for its activities in the general logistics business.
The Complainant belongs to the DB Group which is divided into a large number of companies who are using the “DB” component as an acronym for “Deutsche Bahn”, for example: DB Fernverkehr AG, DB Schenker AG, DB Regio AG and DB Cargo AG.
The Complainant is the owner of numerous registrations for the trademarks “DB” and “Deutsche Bahn” in Germany and worldwide. The Complainant notably evidenced being the owner of the following trademark registrations:
German Trademark No. 1010198 in classes 35, 39 and 43 of April 2, 1979;
German Trademark No. 2068953 in classes 6, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 28, 34, 35, 36, 37, 39, 41, 42, 43 registered on June 23, 1994 with a priority date of March 22, 1994;
German Trademark No. 39807516 in classes 9, 12, 16, 25, 35, 36, 37, 38, 39, 41 and 42 registered on June 5, 1998 with a priority date of February 12, 1998;
European Union Trademark No. 170621 in classes 6, 7, 9, 11, 12,16, 19, 20, 35, 36, 37, 38, 39, 41 and 42 registered on July 12, 2000 with a priority date of April 1, 1996;
European Union Trademark No. 006497747 registered in class 39 registered on October 6, 2008 with a priority date of November 27, 2007;
International Trademark No. 974126 in classes 9, 16, 18, 25, 28, 36, 39, 41 and 43 of May 26, 2008.
These trademarks, in particular the acronym “DB”, have been used for the Complainant’s goods and services since many years ago. The Complainant also widely advertises these trademarks in Germany in order to promote its broad activities, activities which generate substantial revenues for the Complainant and the DB Group.
The Complainant whose trade name registered on January 1, 1994 comprises “Deutsche Bahn” has also shown to be the owner of several domain names consisting of the terms “Deutsche Bahn” and/or “DB” such as:
-
-
-
-
-
-
-
- .
These domain names are linked to the Complainant’s official website(s).
The Respondent owns and manages the Company DBO Bahnoperator GmbH which was founded in Germany in 2017.
The disputed domain name was registered on November 2, 2017 and the disputed domain name on April 27, 2018.
According to the evidence submitted by the Complainant, the disputed domain names were linked to websites promoting railway and transport services offered by the Respondent’s Company DBO Bahnoperator GmbH. The use of the disputed domain name remains active as of the date of the decision while the disputed domain name does currently not resolve to an active website.
On March 15, 2018, the Complainant filed before the District Court of Hamburg an application for ad interim measures requesting that DBO Bahnoperator GmbH be enjoined not to use the disputed domain name and the denomination “DBO” in relation to railway transport and/or transport capacity services. By an ad interim decision of March 21, 2018, the District Court of Hamburg prohibited DBO Bahnoperator GmbH to use the disputed domain name in relation to railway transport. This decision was confirmed by a judgment of the same court on July 27, 2018 (case reference: 312 O 100/18, published in GRUR-RS 2018, 25822).
Following a further application for ad interim measures filed by the Complainant, the District Court of Hamburg again prohibited DBO Bahnoperator GmbH by an ad interim decision of September 4, 2018 to make use of different logos containing the terms “dbo bahnoperator” in relation to railway transport (case reference: 416 HKO 108/18).
On September 26, 2018, the Complainant filed a claim before the District Court of Hamburg against DBO Operator GmbH and its managers (including the Respondent) requesting that the Defendants be prohibited to use the disputed domain names and any denomination respectively logos containing “DBO” in relation to the commercialization and/or the offering of railway services. The proceedings are pending. 5. Parties’ Contentions A. Complainant
The Complainant alleges to have trade name and trade mark rights over the terms “DB” and “Deutsche Bahn” and that both terms would enjoy a high reputation in relation to railway transport and other railway services. The Complainant states that it has been using the acronym “DB” as a trademark since 1949 and that the said acronym is also extensively used by several companies belonging to the Deutsche Bahn Group including DB Fernverkehr AG, DB Schenker AG, DB Schenker Logistics AG, DB Regio AG, DB Cargo AG, DB Cargo BTT GmbH and DB Cargo Logistics GmbH. All these companies are active in the railway transport industry.
The Complainant explains that the trademark would be used by all these companies and that the said logo prominently appears on all trains and in all German railway stations as well as on the websites operated by the Deutsche Bahn Group.
In relation to the disputed domain name , the Complainant states that this disputed domain name contains the Complainant’s trade name and the trademark “Deutsche Bahn” entirely. The Complainant is of the opinion that a trade name can be invoked in the frame of UDRP proceedings and that in any event “Deutsche Bahn” is protected as a trademark. This disputed domain name is therefore confusingly similar with the Complainant’s trademark rights. The addition of the descriptive term “operator” in the disputed domain name enhances the risk of confusion with the Complainant’s rights since the public will assume that “Deutsche Bahn Operator” refers to another business unit of the Complainant. In this frame, the Complainant submits a decision from the District Court of Hamburg (Germany) granting a preliminary injunction in relation to a Company “DBO Bahnoperator GmbH” which is operated by the Respondent notably for brokerage services for rail freight transport. The Complainant underlines that its name and trademark has a high level of distinctiveness in Germany.
In relation to the disputed domain name , the Complainant explains that “DB” does not have a meaning in itself in German or in English. It is a well-known acronym for the Complainant as the mark has been used and marketed extensively. Therefore, the Complainant believes that the acronym “DB” has gained a significant level of distinctiveness. For this reason, the public will perceive the additional “o” as the abbreviation for “operator” which is descriptive and assume that the disputed domain name is either operated by the Complainant or linked to the Complainant’s Group.
The Complainant further explains that the Respondent is the managing director of DBO Bahnoperator GmbH which offers various services in connection with international rail transport and is therefore a direct competitor of the DB Group to which the Complainant belongs. Both parties have no relationship whatsoever and the Complainant never authorized the Respondent to use its well-known “DB” and “Deutsche Bahn” trademarks.
The Complainant reminds that the Respondent is one of its direct competitors and that the Respondent was thus aware of the Complainant and its rights for trademarks which are well-known when he registered the disputed domain names. The Complainants also refers to the fact that the company name DBO Bahnoperator GmbH and the logo
which was initially used by the Respondent’s company on the websites to which the disputed domain names resolved are highly similar to the logo and trademarks on which the Complainant has rights. The Complainant underlines in this context that given the fact that the District Court of Hamburg has prohibited the Respondent to use the logo as shown above, the Respondent had replaced this logo by the following ones:
The Complainant argues that these logos are nevertheless still highly similar to the Complainant’s trademarks. The fact that the Respondent uses these similar trademarks and logos for identical services shows that the Respondent has acquired the disputed domain names in order to attract customers that are actually looking for the services provided by the Complainant. By doing so, the Respondent tries to make commercial gain for himself and disrupt the business of the Complainant. In this regard, the Complainant refers to the ad interim decision rendered by the District Court of Hamburg on March 21, 2018 which prohibits the Respondent to use the disputed domain name “” and the associated logo. This decision was confirmed on July 27, 2018. Following the said decisions, the same services were then offered by the Respondent under the disputed domain name “” with new logos which remain similar. The District Court of Hamburg rendered another ad interim decision on September 4, 2018 in favor of the Complainant. B. Respondent
The Respondent indicates that the opening of the proceeding should be fully or partially rejected since lawsuits have been filed before the German Courts in relation to both disputed domain names. If the decision is nevertheless taken to open the proceedings, the WIPO proceedings should be fully or partially suspended until the lawsuits at ordinary courts have come to a conclusion.
The Respondent mentions that he is a Chinese citizen who had a long-term relationship with Trans Eurasia Logistics GmbH (“TEL”), an affiliate of the Complainant. In order to improve the services he was providing, he founded DBO Bahnoperator GmbH the purpose of which is to manage and operate trains between China and Europe. The Respondent explains in this context that since the Complainant cannot directly prevent the Respondent from conducting its business, the Complainant tries to interdict the use of logos, company name and domain names of the Respondent.
Generally, the Respondent challenges that the names, marks and logos he uses are similar to the marks in which the Complainant has rights.
In relation to the disputed domain name , the Respondent states that “Deutsche Bahn” is purely descriptive and cannot be protected as such by the Complainant as a trademark.
Furthermore, the Respondent believes that a trade name cannot be used as a basis for UDRP litigation. In this context, the Respondent cites also section 318 and 319 of the Report of the Second WIPO Internet Domain Name Process of September 3, 2001 which states that in principle trade names shall not fall under the UDRP so as to allow complaints for the bad faith and misleading registration and use of trade names as domain names. As far as the addition of the term “operator” within the disputed domain name is concerned, the Respondent is convinced that this term has a special meaning in the transport business and therefore, allows a clear distinction with the Complainant’s trademarks. The Respondent also alleges that he and his business are not interested in being associated with the Complainant or its subsidiaries.
In relation to the disputed domain name , the Respondent disputes the fact that the acronym “DB” is well known, notably because many brands use the same acronym in their trademarks and/or domain names. The Respondent further invokes the fact that “DB” is composed of very common letters of the alphabet. He is also of the opinion that there is a significant difference between “DB” and “DBO” from a phonetical point of view and the addition of the term “operator” in the disputed domain name is enough to avoid any risk of confusion.
The Respondent further alleges that he has a legitimate right and interest in relation to both disputed domain names in particular for the following reasons:
- The disputed domain names were registered and in use before the Respondent received notice of the present dispute.
- The Complainant has no exclusive right in the letters “D” and “B” and the Respondent does therefore not need the permission of the Complainant to use “DBO”, a term on which he has legitimate rights, notably based on the name of his company “DBO Bahnoperator GmbH” which was founded in 2017.
- The website of the Respondent has significantly changed.
- The Respondent and his business are commonly known by the disputed domain name in issue.
The Respondent also denies the bad faith allegations made by the Complainant. In particular, the Respondent indicates that the disputed domain names were not registered by the Respondent in order to prevent the Complainant from reflecting their marks in a corresponding domain name. Furthermore, they were not registered by the Respondent in an intentional attempt to attract for commercial gain internet users to the Respondent’s website.
The Respondent points out that the disputed domain name resolves to a neutral screensaver page and will not be used by the Respondent before a final decision is given by the German Courts. As far as the disputed domain name is concerned, the Respondent argues that it corresponds to the trade name of the company of the Respondent which was registered in the Registry of Companies in Germany without restriction. The said trade name and denomination can thus legally be used by the Respondent. The Respondent underlines that no specific logos are currently being used by the Respondent on this website. In any event, the current UDRP proceedings should not apply to judge the content of the website but only the disputed domain names. However, since the parties are waiting for the outcome on this same topic by the ordinary German Courts the Respondent requests that the present UDRP proceedings should therefore be postponed.
Finally, the Respondent asks the Panel to investigate the case in regard of reverse domain name hijacking. From Respondent’s point of view, the Complaint and Amended Complaint was made with the sole purpose to harass the Respondent and to overtake the court proceedings in Germany. 6. Discussion and Findings
a) Procedural issues
(i) Language of the Proceedings
As mentioned in the above Procedural History Section (Point 2.), an initial Complaint was filed in English which included the present disputed domain names as well as four other domain names for which the language of the registration was German.
The Center therefore requested the Parties to take position on the language of the proceedings.
The Respondent suggested that the proceedings be held in German since the Complainant, one of the two Respondents and both law firms representing the Complainant and the Respondents are German.
Based on the information provided by the Registrars to the Center, the Complainant amended its initial complaint in English and limited it to the present disputed domain names for which the registration agreement is in English. The Complainant further filed a new Complaint in German for the domain names , and for which the registration language is German. This Complaint is the object of separate UDRP proceedings (Deutsche Bahn v. Nicolai Noeckler,WIPO Case No. D2018-2468).
Since the registration agreement for the disputed domain names states that (i) the registration language of the disputed domain names in the present proceedings is English, (ii) the Amended Complaint of October 26, 2018 was established in English and (iii) the Respondent filed its Response also in English without reiterating its request for German language, the Panel concludes that the language of the proceedings does no longer seem to be an issue for the Parties.
Therefore, under the circumstances and in accordance with the paragraph 11 of the Rules, the Panel confirms for the good order that the language of the present proceedings is English.
(ii) Supplemental filing
On December 4, 2018, the Complainant filed a supplemental submission and took position on some of the Respondent’s legal arguments.
Paragraph 10 of the Rules vests the panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition. According to paragraph 12 of the Rules, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.
As mentioned in the Third Edition of WIPO Overview of WIPO Panel Views on Selected UDRP Questions (hereinafter, WIPO Overview 3.0.), section 4.5.2, unsolicited supplemental filings are generally discouraged in order to guarantee the speediness of the proceedings. Unsolicited filings should clearly show their relevance to the case and provide explanations on why the party was unable to provide the information in the complaint or the response.
The Panel notes that the supplemental submission filed by the Complainant mainly aims at developing some legal arguments which were already exposed in the Complaint and whose impact is not of the essence. Furthermore, no exceptional circumstances are given by the Complainant which would explain the relevance of its supplemental submission. In addition, the Panel did not request the Parties to submit further statements or documents.
Therefore, the Panel decides not to take this supplemental filing into consideration.
(iii) Pending Proceedings before German Courts
The Respondent requests that the opening of the present proceedings shall be fully or partially rejected due to pending proceedings started by the Complainant before the ordinary German courts on the same subject matter. If the proceedings are nevertheless opened, the Respondent requests that the present proceedings shall be fully or partially suspended until the outcome of the pending proceedings before the ordinary Courts in Germany.
UDRP paragraph 4(k) indicates that UDRP does not bar either party from seeking judicial relief. Paragraph 18(a) of the Rules gives the panel discretion to suspend, terminate, or continue a UDRP proceeding where the disputed domain name is also the subject of other pending legal proceedings.
As expressed in the WIPO Overview 3.0, section 4.14, the suspension of a UDRP case is rarely granted because of the potential indeterminate delay.
As far as the pending court proceedings before the District Court of Hamburg in Germany are concerned, the Panel notes that these started in September 2018 and that it is unlikely for a final decision to be entered into before a couple of years which means that the delay of suspension will be indeterminate and potentially long.
Furthermore, there are no exceptional circumstances which would justify the termination of the proceedings.
In addition, the Complainant has opted to seek remedy under the UDRP as an alternative dispute resolution mechanism and the Respondent has also participated in the present proceedings and made its submissions by filing a timely Response (Etechaces Marketing and Consulting Private Limited v. Bhargav Chokshi / IR Financial Services Pvt. Ltd.,WIPO Case No. D2015-0563; Tiara Hotels & Resorts LLC v. John Pepin,WIPO Case No. D2009-0041).
For the reasons mentioned above, the Panel finds that nothing in the present case justifies either to suspend or to terminate the present proceedings, being underlined that national courts are not bound by UDRP panel decisions.
b) Substantive issues
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
a.
The Complainant has shown to have rights over several trademarks containing the acronym “DB” such as
These trademarks are registered notably in Germany and in the European Union. The Complainant has evidenced that they have been extensively used since decades ago in relation to railway services and that they can therefore qualify as well-known trademarks.
According to the WIPO Overview 3.0, the test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark(s) and the disputed domain name. Typically such test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademarks to assess whether the trademarks are recognizable within the disputed domain name. In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity.
The disputed domain name is composed of the following three elements: the acronym “DBO”, the word “bahn” (which means “train” in German) and the word “operator” which is descriptive.
In accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark does not prevent a finding of confusing similarity (see Bureau Veritas v. Tariq Zargar, Insights marketing & communication,WIPO Case No. D2018-1451; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004‑0565; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0624; Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004-0550; Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002; Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,WIPO Case No. D2000-1807; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000-0819).
In this case, the word “operator” in the disputed domain name is descriptive and should not be taken into consideration in the comparison between the Complainant’s rights and the disputed domain name.
In accordance with the above-mentioned principles which need to be applied when making the confusing similarity test, a comparison must actually be made in the present case between “DBO Bahn”, on the one hand and “DB Bahn”, on the other hand. Both these signs are obviously similar since they only differ by the single letter “O” in “DBO”.
Furthermore, the Complainant’s trademark DB BAHN reproduced above is entirely featured in the disputed domain name.
As it has been decided by previous UDRP panels, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or at least confusingly similar to a registered trademark (see, for instance, Yahoo! Inc. v. Blue Q Ltd., Romain Barissat,WIPO Case No. D2011-0702; Casa Editorial El Tiempo, S.A. v. Montanya Ltd,WIPO Case No. D2009-0103; T, S.A. de C.V. v. Francisco Gómez Ceballos,WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA,WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047).
Moreover, it is well-established that a gTLD such as “.com” is generally disregarded when determining if there is identity or confusing similarity. Where a domain name incorporates a complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy (see S Retail Limited v. Nicole Missell and Dreamless Brand,WIPO Case No. D2015-1946 and Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105).
Under the circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s marks.
b.
The parties have exchanged dissenting views as to whether a trade name, such as Deutsche Bahn AG, the trade name of the Complainant, can be invoked as ground for a UDRP proceeding. This question can be left open since the Complainant has proven to have trademark rights over the said name.
Indeed the Complainant has shown to have rights in trademarks containing “Deutsche Bahn”, in particular notably in Germany and in the European Union. It is undisputed that these marks have been registered and also extensively used since decades ago in relation to railway services.
In this frame, the Panel notes that the acronym “DB” which is subject of several trademark registrations and which can be considered as well known corresponds in the public’s mind in Germany to “Deutsche Bahn”.
The disputed domain name contains the registered trademark “Deutsche Bahn DB” in its entirety without the suffix “DB”. As stated inWIPO Case No. D2007-1490, Deutsche Bahn AG v. Giocchino Zerbo, omitting the suffix “DB” does not render the disputed domain name significantly different from the Complainant’s DEUTSCHE BAHN DB trademark.
Furthermore, the descriptive term “operator” does not make a distinction as already developed above in relation to . It is the same with the gTLD “.net” which is generally disregarded when determining if there is identity or confusing similarity.
The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interest in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of proof shifts to the Respondent to rebut it.
a.
According to the case file brought before the Panel the Respondent has collaborated with one of the Complainant’s affiliates in the past. However, the Complainant has alleged that it never authorized the Respondent to use its well-known acronym “DB” or any derivative thereof in relation with railway and transport services of any kind and nothing in the case file proves the contrary. The Complainant thus made a prima facie under paragraph 4 (c) of the Policy.
The Respondent invokes several arguments in order to show that he would have legitimate interest in the disputed domain name. He states in particular that his use of the term “DBO” is prior to the litigation with the Complainant and that the trade name of his company founded in 2017 in Germany, “DBO Bahnoperator GmbH”, was not objected by the local Registrar of Companies.
The question therefore arises as to whether the Respondent has a right in the company name DBO Bahnoperator and whether it has been used lawfully pursuant to section 5 (2) Germany Trademark Act, German Law being here applicable. According to the jurisdiction of the German Supreme Court (“Bundesgerichtshof”) the acquisition of a right in a company name indeed requires that the company name has been used in a “lawful” manner (“befugter Gebrauch”).
Contrary to the allegations of the Respondent, the registration of a company in the Commercial Register does not automatically mean that the use of such name is lawful in the sense that it does not infringe third parties’ trademark rights. The registration of a company in the commercial register has only an indicative effect but not any constitutive effect. In particular, it is not the task of the Commercial Register to check if a trade name infringes the intellectual property rights of others.
There is no doubt for the Panel that the term “DBO Bahnoperator GmbH” has been used by the Respondent in the context of commercial activities. The Complainant has argued that the company “DBO Bahnoperator GmbH” is a direct competitor providing freight business and this allegation is confirmed by the content of the website linked to the disputed domain name which clearly is of commercial nature.
However, based notably on the case file and in the light of the ad interim decisions rendered by the District Court of Hamburg in relation to the disputed domain name , the denomination “DBO” and the logos/terms “dbo bahnoperator”, the Panel tends to consider that the use of “DBO Bahnoperator GmbH” is not lawful.
Given the past business relationship between the parties, it cannot be disputed that the Respondent was aware of the fact that the Complainant offers various services in the field of railway logistics through certain affiliates whose trade names contain the acronym “DB”, like, for instance, “DB Fernverkehr AG”, “DB Schenker AG”, “DB Regio AG” and “DB Cargo AG”. Also, the Respondent must have known that the Complainant has acquired a high degree of notoriety in Germany and also in other countries for its railway services in which context it widely uses the acronym “DB” either alone or in connection with other terms.
Furthermore, the Respondent has not given explanations as to how and/or why he has chosen the letters “DBO” which are similar to “DB” to identify his business, i.e. if the said letters are an abbreviation or have a meaning which would legitimate his choice and use of the company name DBO Operator GmbH in relation to railway services.
The Panel also notes that the letters “DBO” appear at the beginning of the company name and are followed by a descriptive term. The general public will therefore keep in mind and refer to the sole letters “DBO” thus enhancing the risk of confusion with the Complainant’s well-known DB trademarks. This finding also applies to third parties active in the field of transport logistic business where the Complainant and the Respondent are direct competitors even if the number of third companies active in such field is limited as stated by the Respondent. Given the likelihood of confusion between the acronyms “DB” and “DBO” and the fact that the Complainant and the Respondent are active in the same field of business, there is a high risk that professionals do indeed believe that “DB” and “DBO” are somehow related companies either contractually, economically and/or from an organizational point of view. This risk seems particularly high in relation to third party companies or individuals newly seeking assistance for railway logistic services between Germany and China.
The Panel is therefore convinced that the Respondent had the Complainant’s trade name and trademarks in mind when he registered his own company and the disputed domain name. The way the Respondent used his trade name and logo (which differs only by one letter) for the same services and initially also with the same corporate colors than the Complainant makes it clear that he wanted to create the impression of an association between the parties, although such association does not exist. Such behavior obviously had the goal to potentially mislead consumers and cannot constitute a bona fide offering of goods and services. This finding is supported by other Panel decisions under the UDRP where the Panel found for a bona fide offering of goods and services only where the Respondent was active in a different field of business or was even not aware of the Complainant which is not the case here (see, for instance, Etro S.p.A. v. Hernan Villalobos,WIPO Case No. D2014-0264; Asbach GmbH v. Econsult Ltd., d.b.a. Asbach Communities and Whois-Privacy Services,WIPO Case No. D2012-1225; Philip Morris USA Inc. v. Borut Bezjak, A Domains Limited,WIPO Case No. D2015-1128).
Finally, the company name DBO Operator GmbH was registered quite recently in 2017. The allegation of the Respondent that he and his company DBO Operator GmbH would be known by the disputed domain name has not been evidenced and can therefore not be retained by the Panel.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a) (ii) of the Policy as far as the disputed domain name is concerned.
b.
The Complainant has made a prima facie case against the Respondent under this ground in relation to the disputed domain name . In particular, it is obvious that the Complainant has a longstanding presence in Germany under the name “Deutsche Bahn” and nothing in the case file shows that the Respondent would have been authorized by the latter to use the disputed domain name. The fact that the Respondent would have registered and would have been using the disputed domain name before receiving notice of the present dispute is not relevant. Furthermore, nothing in the file shows that the Respondent and his business would be known by the disputed domain name.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy for as well. C. Registered and Used in Bad Faith
The third criterion which the Complainant must evidence is that a disputed domain names was registered and subsequently used in bad faith.
The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of a domain name:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the Complainant who is owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out of pocket costs directly related to the domain names; or
(ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
a.
The Respondent was aware of the Complainant and its well-known DB trademark when he registered the disputed domain name. Indeed, the Respondent was in a business relationship with the Complainant for some time before registering the disputed domain name. Furthermore, the Respondent started his own business already during his collaboration with the Complainant in the same field of commerce, i.e. logistic services to be carried out via railway. Consequently, the Respondent was well aware of the Complainant’s rights in its trademarks “DB” , and and “DB Bahn” and “Deutsche Bahn DB”
The Respondent nevertheless took the risk of registering the disputed domain names in full knowledge of the Complainant prior and longstanding intellectual property rights. Therefore, the Panel is convinced that the Respondent registered the disputed domain name in bad faith.
The Panel further notes that the Respondent used the disputed domain name in a manner that could only create confusion as to his relationship with the Complainant.
Indeed, the disputed domain name was since the origin and is still directed to a website where railway services, which are identical as the one offered by the Complainant, are offered.
In this frame, the Panel notably notes that initially, the following logo was featured on this website in a prominent manner which reproduces the same corporate colors red and white of the Complainant’s DB trademark and a similar character font:
After the District Court of Hamburg prohibited the Respondent to use the logo as shown above, the Respondent used a new logo as depicted hereunder:
Again this logo uses a similar corporate identity as the one developed over many years by the Complainant and the same red and white colors. This logo has been discontinued in the meantime as well.
Today none of these logos are used, but the website to which the disputed domain name resolves still offers services in the field of railway logistics. In particular, this website expressly refers to the “one belt one road” initiative which notably promotes container, charter and carriage services by rail between Europe and China. These services are with no doubt related to the services also offered by the Complainant which enjoys a very high reputation in this field.
Such use of the disputed domain name misleads internet users as to the relationship of the parties who may believe that both companies belong to the same group of companies and that the booking of the services offered with the Respondent, will benefit the Complainant while this is not the case. The business of the Complainant may thus be unduly shifted to the Respondent and disrupt respectively affect the Complainant’s business.
For all this, the Panel believes that the Respondent registered the disputed domain name in bad faith and is using it in bad faith.
b.
As already outlined above concerning the disputed domain name , the Respondent was well aware of the Complainant and his trademark rights also when he registered the disputed domain name .
According to the evidence submitted by the Complainant, the disputed domain name used to resolve to a website promoting railway and transport services offered by the Respondent’s Company DBO Bahnoperator GmbH. Moreover, the website also displayed the logo “DBO” with the same corporate colors red and white of the Complainant’s DB trademark and a similar character font. Taking into account the confusing similarity of the disputed domain name with the Complainant’s trademark, the Respondent’s knowledge of the Complainant and its business when registering the disputed domain name, the lack of rights or legitimate interests of the Respondent in relation to the disputed domain name, the Panel believes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark.
The fact that the disputed domain name currently does not resolve to an active website does not prevent the Panel from finding use of the disputed domain name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3. It is common practice that according to Paragraph 4(a)(iii) of the Policy, there has to be registration and use of the disputed domain name in bad faith. However, the criteria of use in bad faith of the disputed domain name can be fulfilled not only if the disputed domain name is actively used in the Internet (for instance linked to an active website) but also in cases of its passive holding if such behavior could correspond to active use taking into account of the circumstances of the individual case.
In this case, the Complainant’s trademarks are well-known in Germany and enjoy a very high reputation. Given the Complainant’s rights in his trademarks, any legal or licit use of the disputed domain name by the Respondent in the field of railway services cannot be imagined. Furthermore, the behavior of the Respondent leaves less room for doubt that he intended to profit from the reputation of the Complainant in order to establish his own business in exactly the same field as the Complainant.
Hence, the criteria of registration and use of the disputed domain name in bad faith in accordance with paragraph 4(a) (iii) of the Policy is fulfilled.
D. Reverse Domain Name Hijacking
The Respondent suggests to the Panel to investigate the case in regard to reverse domain name hijacking.
Paragraph 15(e) of the Rules provides that, “if after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Reverse Domain Name Hijacking is furthermore defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.
The Panel notes that the Complainant took several measures in order to enforce its trade name respectively trade mark rights over “Deutsche Bahn” and “DB” before the German Courts. In particular, the Complainant obtained favorable ad interim measures against the Respondent’s company DBO Bahnoperator GmbH in relation to the disputed domain names and filed a claim which is still under examination and which also relates to the company name DBO Bahnoperator GmbH.
Nothing in the case file indicates that the Complainant would attempt to deprive the Respondent in an unfair manner of the disputed registered domain names or be harassing the Respondent.
The Panel thus estimates that the conditions for reverse domain name hijacking are not fulfilled. 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.
Theda König Horowicz
Presiding Panelist
Christian Schalk
Panelist
Torsten Bettinger
Panelist
Date: February 22, 2019
Full & Egal Universal Law Academy