The Complainant is Schaeffler Technologies AG & Co. KG., Germany, represented by Bardehle Pagenberg., Germany.
The Respondent is Jun Chen Qu, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2019. On August 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 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 August 8, 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 in English to the Complaint on August 9, 2019.
On August 8, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on August 9, 2019. The Respondent did not comment on the language of the proceeding.
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 August 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2019. The Respondent sent email communications on August 9, 2019. The Response was filed with the Center on August 15, 2019. The Center notified the Parties of commencement of panel appointment process on August 19, 2019.
The Center appointed Sok Ling Moi as the sole panelist in this matter on August 23, 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 part of the Schaeffler Group, a listed German family-owned supplier to the automotive and mechanical engineering industries with a history dating back to 1946. The Schaeffler Group manufactures and sells cage-guided needle roller bearings, diaphragm spring clutches and high-precision steel balls under the respective brands of “INA”, “LUK” and “FAG”.
Today, the Schaeffler Group employs over 80,000 people at 180 locations worldwide, and boasts a turnover revenue of EUR 14.2 billion in 2018. Though headquartered in Germany, the Complainant has a number of local subsidiaries worldwide, including in Asia.
The Complainant has used SCHAEFFLER as its company name and business identifier since 1946. The Complainant is also the proprietor of the following trade mark registrations for SCHAEFFLER:
Jurisdiction
Trade Mark
Registration No.
Registration Date
Class
International designating Australia, China, Republic of Korea, Singapore, United States of America (“USA”), Viet Nam, etc.
SCHAEFFLER
917515
March 20, 2006
7, 8, 9, 11, 12
International designating Australia, China, Republic of Korea, Singapore, USA, Viet Nam, etc.
SCHAEFFLER LUK INA FAG
1195728
September 30, 2013
7, 12, 35
The Complainant also owns a large number of domain names incorporating its trade mark SCHAEFFLER, such as the following:
-
-
The disputed domain names was registered by the Respondent on May 13, 2019. The disputed domain name resolves to a website which purports to offer for sale the Complainant’s INA-branded roller bearings and FAG-branded ball bearings, along with other third party products. 5. Parties’ Contentions A. Complainant
The Complainant claims that the disputed domain name is confusingly similar to its trade mark.
The Complainant contends that the Complainant has neither licensed nor otherwise authorized the Respondent to use its trade mark. The Complainant further contends that the Respondent’s name does not correspond to “schaeffler”, nor does the Respondent have any trade mark rights over the term “schaeffler”. The Complainant contends that as the Respondent is using the domain name to publish to a website purportedly offering for sale the Complainant’s branded products as well as the Complainant’s competitors’ products, such use cannot be bona fide. The Complainant therefore claims that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant contends that the disputed domain name is used to create confusion and mislead Internet users into believing that the Respondent’s website is authorised by the Complainant. The Complainant contends that as the Respondent not only offers for sale the Complainant’s branded products but also the Complainant’s competitors’ products, the Respondent is using the Complainant’s trade mark to bait users and switch them to competing products. The Complainant therefore claims that the Respondent has registered and is using the disputed domain name in bad faith.
For all of the above reasons, the Complainant requests for the transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent contends that “schaeffler” is a personal name and/or a family name and should be freely available for registration by anyone. 6. Discussion and Findings 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.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreements for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain name is registered in Latin characters, rather than Chinese script;
(b) the contents of the website to which the disputed domain name resolves are in English;
(c) the Respondent’s emails to the Center on August 9 and 15, 2019 are in English;
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Respondent has been given the opportunity to present its case in this proceeding to respond to the issue of the language of the proceeding but chose not to do so; and
(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to all Parties and is not prejudicial to any of the Parties in their ability to articulate the arguments for this case. The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
In view of all the above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English. 6.2 Substantive Finding
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in SCHAEFFLER by virtue of its use and registration of the same as a trade mark.
The disputed domain name incorporates the Complainant’s trade mark SCHAEFFLER in its entirety. The addition of the letters “co” does not avoid the confusing similarity between the disputed domain name and the Complainant’s trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark in this case.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of proof to establish that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence in support of its rights or legitimate interests in the disputed domain name. The respondent may establish its rights in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the respondent’s use of, or 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) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd,WIPO Case No. D2013-0974.
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the SCHAEFFLER trade mark or to seek registration of any domain name incorporating the trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or have acquired any trade mark rights in the term “schaeffler”.
According to the evidence submitted by the Complainant, the Respondent was using the disputed domain name to publish a website which purported to sell the Complainant’s INA-branded and FAG-branded products, along with the Complainant’s competitor’s products. This suggests that the Respondent is using the disputed domain name to mislead Internet visitors by creating an affiliation with the Complainant where there is none.
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to come forward with evidence of their rights or legitimate interests in the disputed domain name. Since the Respondent has merely claimed that SCHAEFFLER is a family name which should be free for anyone to use without showing how it enjoys rights to use such a family name, the Panel determines that the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed 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 trade mark 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 disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark 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 name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 Complainant has used SCHAEFFLER as its business identifier and trade mark since 1946. There is no doubt that the Respondent was aware of the Complainant’s trade mark when it registered the disputed domain name given that the Respondent was offering for sale the Complainant’s branded products on its website. The Panel is satisfied that the Respondent’s purpose of registering the disputed domain name was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s branded products to its own website for financial gain.
By representing that the website owner is a company by the name of “FAG Germany Holding”, the Respondent is seeking to pass itself off as part of and/or associated with the Schaeffler Group, where that is not the case. Irrespective of whether the products offered on the Respondent’s website are in fact counterfeit, the offer for sale of the Complainant’s branded products on the Respondent’s website without also displaying a clear disclaimer of a lack of relationship between the Respondent and the Complainant, is indicative of bad faith.
The Panel therefore determines that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel is satisfied that the Respondent is using the disputed domain name in bad faith and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
Such use of the disputed domain name not only misleads the public but also causes disruption to the Complainant’s business. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iii) of the Policy are also applicable to the present case.
In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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.
Sok Ling Moi
Sole Panelist
Date: September 28, 2019
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