The Complainant is VDA Verband der Automobilindustrie e.V. of Berlin, Germany, represented by KROHER‑STROBEL Rechts- und Patentanwalte PartmbB, Germany.
The Respondent is Domain Protection Services, Inc. of Colorado, United States of America (“United States”) / Erhan Tuna, Water Treatment of Adana, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2019. On February 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2019, 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 28, 2019, 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 amendment to the Complaint on February 28, 2019.
The Center verified that the Complaint together with the amendment to 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 March 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2019.
The Center appointed Emmanuelle Ragot as the sole panelist in this matter on April 10, 2019. 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 interest group i.e., the German Association of the Automotive Industry or “VDA” (Verband der Automobilindustrie e.V.) representing the German automobile industry for both automobile manufactures and automobile component suppliers.
The VDA represents carmakers but also counts foreign suppliers and foreign-owned carmakers among its members.
The Complainant’s trademark ADBLUE relates to the requirements for reduction of nitrogen oxide emissions.
The Complainant is the holder of numerous trademarks for ADBLUE, registered for goods and services in classes 1, 4, 6, 7, 9, 12, 20, 35, 37 and 42 including the following:
- European Union registration No. 003945938 for ADBLUE (word) in classes 1, 4, 12, 37 and 42 (filed on July 22, 2004 and registered on February 6, 2006);
- European Union registration No. 008526717 for ADBLUE (word) in classes 6, 7, 9, 20, 35 and 42 (filed on September 3, 2009 and registered on March 8, 2010);
- International trademark registration No. 1042880 for ADBLUE (word) in classes 7, 9, 12 and 39 (registered on May 18, 2010);
- International trademark registration No. 811899 for ADBLUE (word) in class 1 (registered on August 8, 2003).
According to the Complainant’s Internet site “ADBLUE is a solution of urea deionized water and is required by many diesel vehicles operating on Europe’s roads (….) essential for the correct operation of an advanced pollution control technology installed in the exhaust system called Selective Catalytic Reduction or SCR. Unlike diesel, AdBlue is a clear, non-toxic liquid that is safe to handle and does not damage the environment. AdBlue is not a fuel or fuel additive”.
The trademark ADBLUE is registered in all relevant car market jurisdictions and is licensed especially to car manufacturers, suppliers, and companies of the chemical and mineral oil industry. The Complainant offers further information on its website under the heading “AdBlue” with an actual list of licensees and its ADBLUE trademark registrations by country.
The disputed domain name was registered on November 8, 2017 and resolves to a website that reproduces the ADBLUE trademark and offers similar goods as that of the Complainant. 5. Parties’ Contentions A. Complainant
In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below:
First of all, the Complainant argues that the disputed domain name is confusingly similar to the trademark ADBLUE, since it reproduces identically the trademark ADBLUE, so that internet users could believe that the disputed domain name has been registered by the Complainant or with its consent.
The Complainant considers that the adjunction of the word “production” is not sufficient to give any distinctive character to the disputed domain name and thus avoid confusing similarity.
The Complainant also recalls the notoriety of its trademarks, which accentuates the likelihood of confusion.
The Complainant is known for offering its emission reducing ADBLUE product for the automobile sector for years. Now, the mere addition of the non-distinctive word “production” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark.
The Complainant argues there is no connection between it and the Respondent and the Respondent has not been authorized to use the Complainant’s trademark in any way. Furthermore, the Respondent’s goods could be readily identified without using the ADBLUE trademark, and by using known industry terms such as “urea solution”. By offering goods under the Complainant’s trademark the Respondent is intentionally attempting to attract, for commercial gain, Internet users its website by creating a likelihood of confusion with the Complainant’s mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name was registered and being used in bad faith. A. Identical or Confusingly Similar
The Complainant holds approximately 40 registrations of the trademark ADBLUE, several of which are registered work marks in the European Union. The trademark is well known (see Verband der Automobilindustrie e.V. v. Andrew Booth, ECUFLASH Ltd.,WIPO Case No. D2017-0117).
The Complainant has further asserted that the dominant and distinctive element in the disputed domain name is the registered trademark ADBLUE, and the addition of the term “production” is not sufficient to distinguish the disputed domain name from the trademark ADBLUE.
The addition of a descriptive word to the Complainant’s trademark does not prevent a finding of confusing similarity.
The Complainant consequently owns trademark rights to the mark ADBLUE, which are prior to the disputed domain name.
In conclusion, the Panel finds that the Complainant has provided evidence to support a finding that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name even if it has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.
The Respondent did not respond to the Complaint. Consequently, it did not provide any evidence or allege any circumstance to establish that it has rights or legitimate interests in the disputed domain name.
The Respondent has not been licensed or authorized to use the ADBLUE trademarks or to register the disputed domain name.
The Respondent did not make a fair or noncommercial use of the disputed domain name. The disputed domain name resolves to a website offering similar goods as that of the Complainant, without disclosing the relationship between the Complainant and the Respondent.
In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, which the Respondent has not rebutted. The condition of paragraph 4(a)(ii) of the policy has therefore been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides that for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith:
“(i) Circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent has registered the domain name 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, internet users to your 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.”
Given the well-known character of the Complainant’s trademarks, the Panel finds that the Respondent could not ignore the Complainant’s trademarks when it registered the disputed domain name.
As acknowledged in section 6B, above, the disputed domain name is being used to offer similar goods under the Complainant’s trademark. Based on the notoriety of the Complainant’s trademark and the Respondent’s use of the ADBLUE trademark throughout the website, it is more than likely that the Respondent had the Complainant in mind when it registered the disputed domain name. Furthermore, by using the ADBLUE trademark without consent the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion between its website and products and the Complainant’s mark. Considering the above circumstances, the Panel considers that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Complainant has satisfied the third element of UDRP. 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 cancelled.
Emmanuelle Ragot
Sole Panelist
Date: April 23, 2019
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