The Complainants are Adolf Würth GmbH & Co. KG of Künzelsau, Germany and Würth International AG of Chur, Switzerland (cumulatively referred to as the “Complainant”), represented by HK2 Rechtsanwälte, Germany.
The Respondent is Luis Miguel Sanchez Ramos of Zaragoza, Spain, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Arsys Internet, S.L. dba NICLINE.COM (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2018. On October 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
Pursuant to the Complaint submitted in English and the registrar verification dated November 5, 2018 stating that Spanish is the language of the registration agreement of the disputed domain name, November 8, 2018, the Center sent a request in English and Spanish that the Parties submit their comments on the language of the proceeding. On November 8, 2018, the Complainant submitted its request for English to be the language of the proceeding. On November 11, 2018, the Respondent submitted its request for Spanish to be 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 of the Complaint, and the proceedings commenced on November 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2018. The Respondent submitted an informal email communication on December 3, 2018 but did not submit a formal response. Accordingly, the Center notified the Parties on December 10, 2018 that it would proceed to panel appointment.
The Center appointed Luca Barbero as the sole panelist in this matter on December 20, 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 was founded in 1945 and is a worldwide wholesaler of fasteners, screws and screw accessories, dowels, chemicals, electronic and electromechanical components, furniture and construction fittings, tools, machines, installation material, automotive hardware, inventory management, storage and retrieval systems. It comprises over 400 companies located in more than 80 countries and employs more than 76,000 people worldwide. The Complainant’s revenues in 2018 amounted to EUR 12.7 billion.
The Complainant is also active in the field of cultural and sports promotion. It was sponsor of the German national football team and of clubs of the German Bundesliga. Moreover, during the last years it has sponsored the uniforms of referees and their assistants in La Liga – Spain’s premier football league – and has been an active sponsor in the motorsport scene for 40 years.
The Complainant is the owner of several trademark registrations for WÜRTH, including the following:
- German trademark registration No. 1146751 for WÜRTH (word mark), registered on September 25, 1989, in classes 1, 2, 3, 4, 7, 8, 9, 10, 11, 12, 16, 17, 20, 21 and 25;
- German trademark registration No. 1050158 for WÜRTH (figurative mark), registered on June 27, 1983, in classes 1, 2, 3, 6, 7, 8, 9, 11, 16, 17 and 20;
- International trademark registration No. 567225 for WÜRTH (word mark), registered on June 22, 1990, in classes 1, 2, 3, 4, 6, 7, 8, 9, 11, 12, 16, 17, 18, 20, 21, 22 and 25, designating also Spain;
- International trademark registration No. 481015 for WÜRTH (figurative mark), registered on October 28, 1983, in classes 1, 2, 3, 4, 6, 7, 8, 9, 11, 16, 17 and 20, designating also Spain.
The Complainant is also the owner of numerous domain names corresponding to its trademark WÜRTH, including , registered on January 11, 1996, and , registered on January 23, 1996. In addition, the Complainant’s subsidiary Würth Espana SA is the owner of the domain name , registered on May 27, 1997.
The disputed domain name was registered on February 26, 2001 and has been pointed to a registrar parking page. 5. Parties’ Contentions A. Complainant
The Complainant states that “Würth” is a very rare German last name without any meaning and is not part of the German or Spanish vocabulary. Therefore, WÜRTH is an inherently distinctive mark with a strong reputation.
The Complainant contends that the disputed domain name is identical to its trademark WÜRTH.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name because:
- the Respondent is not commonly known by the name comprised in the disputed domain name;
- the Respondent has not made use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, as the disputed domain name resolves to a parking site with no content except for advertisements for services of the Registrar;
- the Respondent’s use of the disputed domain name does not amount to a noncommercial or fair use;
- the Respondent did not obtain any authorization by the Complainant to use the trademark WÜRTH.
The Complainant also submits that the Respondent registered and is using the disputed domain name in bad faith for the following reasons:
- the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant or a competitor for valuable consideration in excess of the out-of-pocket costs directly related to the disputed domain name, as the Respondent requested an offer between EUR 8,000 and 10,000 for the disputed domain name to an agent of the Complainant;
- the Respondent had actual knowledge of the Complainant’s trademark when it acquired the disputed domain name, as WÜRTH does not correspond to any word in the Spanish or German language and is very uncommon to register for a Spanish person due to the inclusion of the “umlaut” (the accent consisting of two points over a letter). Moreover, the Complainant operates in the Respondent’s country through its subsidiary and the website at the domain name since 1997;
- the Respondent registered also other domain names encompassing third parties’ trademarks or company names with special letters, thus demonstrating its intention to speculate on trademark owners who are interested in the respective Internationalized Domain Name (IDN) and are willing to pay money for them;
- the disputed domain name has not been used for 17 years in connection with an active website and is currently pointed to a mere parking page;
- there is no conceivable legitimate interest for the use of the disputed domain name by the Respondent and the disputed domain name is so obviously connected to the Complainant that its very use by someone with no connection with the Complainant suggests opportunistic bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent 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 respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. 6.1. Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, “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”.
In the case at hand, the language of the Registration Agreement of the disputed domain name is Spanish. The Complaint was filed in English. Upon completing the Registrar’s verifications, the Center sent an email communication to the parties about the language of the proceeding requesting them to comment on the issue.
The Complainant submitted a request for English to be the language of the proceeding based on the following grounds:
- the Complainant is not familiar with Spanish;
- to proceed in Spanish, the Complainant would have to avail of specialized translation services at a disproportionately high cost which would impose a burden on the Complainant, who would be disadvantaged by being forced to translate its submissions;
- the Respondent has demonstrated that it is capable of speaking and understanding English since prior correspondence between an agent of the Complainant and the Respondent was held in such language.
The Respondent sent an email communication to the Center in which it stated that it does not understand English and requesting that Spanish be the language of the proceeding.
However, the correspondence exchanged between the agent of the Complainant and the Respondent prior to the filing of the Complaint clearly shows that the Respondent was indeed able to understand the communications in English that it received as well as to reply to them using the same language.
In view of the circumstances of the case, the Panel finds that English is the appropriate language of this proceeding and will thus proceed to render the Decision in English. 6.2. Substantive Issues A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of national and international trademark registrations for WÜRTH.
As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The Panel finds that the disputed domain name is identical to the Complainant’s word mark WÜRTH, as it reproduces the mark in its entirety with the mere addition of the generic Top-Level Domain (“gTLD”) “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.
According to the records, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name. Moreover, there is no evidence that the Respondent might be commonly known by the disputed domain name.
As highlighted above, the disputed domain name has been pointed to a mere parking page of the concerned Registrar. The Panel finds that the Respondent’s use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name without intention to misleadingly divert the consumers or to tarnish the Complainant’s trademark.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
The Panel finds that, in light of i) the prior registration and use of the Complainant’s trademark WÜRTH in connection with the Complainant’s products, ii) the well-known character of the trademark and iii) the identity of the disputed domain name with the Complainant’s trademark, the Respondent very likely registered the disputed domain name having the Complainant’s trademark in mind.
Moreover, in view of the notoriety of the Complainant’s trademark (the Panel also notes that the Complainant has a subsidiary in Spain which is the owner of the domain name registered on May 27, 1997), the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its very selection by the Respondent, which has no connection with the Complainant, suggests the disputed domain name was registered with a deliberate intent to create an impression of an association with the Complainant.
As to the use of the disputed domain name, the Panel notes that it does not resolve to a dedicated website, but to a parking page promoting the Registrar’s services.
Prior UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (passive holding) does not prevent a finding of bad faith under certain circumstances, as decided, i.a., in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In the case at hand, in view of i) the distinctiveness and reputation of the Complainant’s trademark WÜRTH; ii) the Respondent’s registration of a domain name identical to the Complainant’s prior trademark; iii) the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name; iv) the Respondent’s failure to respond to the Complaint; v) the implausibility of any good faith use to which the disputed domain name may be put; and vi) the Respondent’s request for a consideration well in excess of the out-of-pocket costs directly related to the domain name to the Complainant’s agent, the Panel finds that the current passive holding of the disputed domain name by the Respondent does not prevent a finding of bad faith registration and use.
Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant Adolf Würth GmbH & Co. KG.
Luca Barbero
Sole Panelist
Date: January 3, 2019
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